To Patent or Not to Patent? - (Entrepreneur Series)


Wow, after ~4 years, we finally got our social media research software invention patented. Was it worth it? Well it depends...but I'll sum it up as best I can in 5 points to serve as one more case study for your consideration. Yes, every situation is unique, and our journey is particular to pursuing a software patent as a boutique business. I wish I had some of this information early on our process, but here it is now. And by all means, be sure to get expert advice.





First off, what exactly did we patent? In a nutshell, we took a social media interface, such as Microsoft's Yammer, and transformed it into a research tool for online focus groups. It expands the social media capabilities to have multiple interfaces and real-time translations of over 100 languages (as compared to ~25 originally). We have been using it for years now, even though it did not get its official patent until 2021. It's applicable to other social media interfaces beyond Yammer - but I think you get the gist of it.

You can read more about how we use it for research here:

https://www.incitefusion.com/online-research-social-media

https://www.incitefusion.com/single-post/2018/02/22/use-social-media-to-collaborate-get-feedback-from-customers-from-anywhere



#5 - Is my idea worth patenting?

I'm not saying this just because I'm a researcher, but do some preliminary research. It can be low-cost, free research to determine its uniqueness and "value". Do a Google search, leverage the Google patent database at google.com/patents, and goto the USPTO website and search for other patents that maybe similar https://www.uspto.gov/patents/search. It will save you a lot of time and resources. There are many reasons to consider whether to patent your idea - the most obvious is to protect others from using your intellectual property without your permission. Another compelling reason is to protect your business tools and business methods that gives your company a proprietary market advantage. Amazon.com has a patent on a “one-click” system for processing customer orders - which it has successfully enforced against Barnes and Noble (Discovering New Value in Intellectual Property, HBR). The reasons we pursued our patent was because #1) it aligns with, and proves our unique value proposition of innovation in the research space, #2) it serves as a beachhead into growth areas of our business, and #3) if we ever needed to raise capital investment for Incite Fusion - it paints an asset picture for the financial community.


"Patents can help companies communicate their asset picture and earnings potential to investors and the financial community." - HBR

My awareness into the world of patents started with NOEW Entrepreneur Week. It was at a patent workshop that I discovered that our research innovations on social media was actually patentable.


#4 - How much is it going to cost and how long will it take?

It depends on which path you undertake in the patent journey. Initially, we hired a professional patent agent to conduct a thorough search of our invention to uncover any prior art patents or pending applications that you are not likely to find on your own. Our professional patent search took about one hour. The professional patent agent can also help you draft your patent disclosure, once you determine to proceed with your patent application. Patent agents are not patent attorneys, so they can not legally advise you about your patent application. But patent agents are more cost efficient than going directly to a patent attorney. Naturally, you do get what you pay for... as we worked with a patent agent that leveraged a computer assisted patent disclosure application to draft an overly complex disclosure that ended up being rejected by our first US patent office examiner. Usually a professional patent agent works with a patent attorney that they will later recommend when you decide file your patent application. Due to some filing glitches, we had two patent application filings on parallel tracks.

From a cost perspective, it's very likely going to take more time and resources than what you had originally intended. Think home renovation as an analogy... if you can get it done on-time with less money, congratulations!!! Always hope for the best, but realistically, plan for complexity, delays, challenges, and 3-5x your initial capital investment. These ballpark figures from ipwatchdog seem in-line with what we experienced overall for our software patent. I originally planned for 1-1.5 years, it turned out to be closer to 4 years. In retrospect, I'm grateful I didn't abandon the journey when it met with challenges, but each juncture does require a more careful evaluation of the pros and cons.


#3 - Can I share my idea with anyone to get feedback on it?

Tread very carefully here... because once you speak openly or publicly about your idea to anyone, you have started the one-year clock on "public disclosure" in the U.S. Which means, in the U.S., you have a one-year grace period from that public disclosure to file your patent. At the beginning, I did share my idea with trustworthy sources who could give me honest feedback. Be sure to include NDAs that have detailed wording on the ownership of the ideas that come out of the information sessions. These NDAs are standard whenever we engage participant feedback in market research and usability studies. I collected insights on the invention's appeal, uniqueness, utility and scalability. With my patent attorney's knowledge, I also presented the innovation at a research conference in NYC, knowing I would file the patent within a one year period from my "public disclosure" date.

Was the idea worth presenting at a conference? For me, yes, as I was approached by a major software company who invited me to present our capabilities and software innovations at their company headquarters.

#2 - How do I find the right patent attorney?

If you can, get a recommendation from a trusted source who has worked with that patent attorney personally. In my case, the patent agent provided the referral to our patent attorney. A great, experienced patent attorney should give you the pros and cons at every major juncture in the patent process. So make sure you pick one that has extensive experience and knowledge in your patent area of focus. They will be able to share their success/fail rates, their personal experiences with different USPTO reviewers in your patent area of focus, and provide reasonable estimates on budget and timeline. We were very fortunate to have Gustavo as our patent attorney, who not only is a software engineer, but a savvy software patent attorney: Gustavo Marin at Marin Patents.


#1 - Should I patent my idea in more than one country?

Depends on your invention and your resources. Where would most of your customers and competitors be based for this invention? We started with only the US - as I was new to the process and was unclear as to whether it was worthwhile to enforce and pursue in other countries. Though most of our customers are global companies, it made sense for us to tackle our patent first in the U.S. market, as many of our customers are headquartered in the U.S. At a later date, we may pursue an EU patent. Where would your intellectual property be most respected and enforced? How practical is it to enforce your patent in foreign countries if there was an intellectual property infringement? Answers to these questions helped us decide against pursuing a patent in another country at this time, but things may change in the incoming future.. one never knows.


If you have any questions about our patent or our patent experience, please do reach out to me.


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References

Patent US-10992488-B2: https://portal.unifiedpatents.com/patents/patent/US-10992488-B2

https://patents.google.com/patent/US10992488B2/en

https://hbr.org/2000/01/discovering-new-value-in-intellectual-property https://www.nutter.com/ip-law-bulletin/Tips-to-Help-Keep-Your-Disclosure-from-Becoming-Prior-Art-Pt1 https://www.ipwatchdog.com/2015/04/04/the-cost-of-obtaining-a-patent-in-the-us/id=56485/

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