Legal, Tax, and Accounting October 13, 2020

Patent Strategy for Startups



First and foremost - happy to answer any general patent questions folks may have!

Some background about myself - I'm a patent lawyer and I am working on a course for founders and inventors that want to write their own patents. As part of validating whether there are folks that want to write their own patents, I've also prepared a ~15m free patent strategy course for any founder building their own startup to explain the value of patents.

I'd love to hear any questions or feedback on the course!

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    I see that if I twist and turn about 10% of actual patent during implementation ( in software product ) then I don't infringe the patent.

    So any one can do it. They can just change few implement flow and done. You get same outcome.

    With that said , I have a question and need honest reply

    Do patents really be effective in Software industry ?

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      Hi sachingk,

      If you take the course, I share exactly how you can have software patents be effective for you. In essence, the traditional way of using patents, e.g., prevent copycats, is not very effective in most industries. You've mentioned one reason, but that's not to say it's not possible to get a patent with broad claims so that you cannot design around like you describe above. It simply is more rare.

      By far, the most common way to use patents effectively is to tell a story to investors and build up the value of your company if you sell. In rare circumstances (<1% of the time), you'll be able to get a broad patent that actually can be used to prevent competitors. Given the expected outcomes, it generally makes sense to have 1-3 patents if you're building a company in a big market.

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        Got your point. Patents will be specific to one thing. May be like an Algorithm or some AI implementation.

        My intention to run business is to have a complete control of my time and have less or no stress in my life.

        With that goal, I am a solo enterpruner who runs software product company more as a life style business.

        Hence, I don't want to get into investors. Yet again find a routine job for myself.

        I explained you all the above just to say your course isn't relevant for me.

  2. 1

    Man, this is great timing - I will buy your course. I'm co-inventor on a couple of patents from my past corporate life, but never had to write the legalese or do prior art check myself.
    It seems not to be part of the course, but could you share some brief information about extra steps needed to also file in the EU? What is the sequencing? How much of the work can be re-used? Is it even worth it? (specifically thinking about SW patent on the technology for an app I'm making.)


    1. 1

      Hi Marc,

      Thanks for letting me know your interest! I'm finalizing videos on a bunch of topics and will release all the lessons next month. Did you finish taking the patent strategy course? I'd love to know what you thought or if there are other questions you wish I addressed.

      Re EU, the first question to ask is if you just want protection in one EU country or both in the US and the EU. If the former, you can file directly with the patent office of that particular country with the techniques in the course, but there are certain practices involving copying claim language into your description that you need to do for the EU but do not need to do in US cases, which I will go over in the course. This is due to the EU's stricter requirement of written description.

      If you'd like protection in both the US and EU, it becomes much more complex, and I would recommend hiring a lawyer to handle the procedural aspects (you can still write the patent yourself if you want and work with a lawyer to file.). That's because there are many more deadlines and procedural nuances in different countries that most folks aren't willing to learn.

      If you're US-based, a common practice is to first file the US patent application. Within 1 year, you'll need to file the PCT application claiming priority to the US patent application. Then, eventually you'll need to "enter" into the EU countries you want to have protection in. Again, there are tons of procedural things here that I think would be best for a lawyer to handle. Substantively, the EU patent can be quite similar to the US, although some countries require certain translations.

      IMO, the safest thing to do, if you don't want to have a lawyer write the initial patent, is to write and file the patent yourself, then within 1 year if your app is doing well and growing, go to a law firm and ask them to file it internationally.

      If there's any EU country to file in, it's Germany b/c their courts are much more patent-friendly. They give injunctions (prevent competitors from using your patented idea) more easily than other countries.

      I'd say for the average inventor, the majority of the time it's not worth it to file in the EU. However, if within one year your app is doing well, then you should consider hiring a lawyer to get international protection.

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    The course looks interesting. My girlfriend works as a junior lawyer in a Patent and Trademark law firm(India) and it's always interesting to hear the stories. Lots of founders could benefit from your expertise.

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