Filing a patent application as a startup can seem daunting and infeasible because the cost associated with obtaining a patent is so high. For most startups money is tight, and spending money on something as intangible as patent protection seems like a low priority. However, the benefits of having patent protection on an innovative device or method that the startup has created can be immense. For instance, patent protection can be absolutely critical for securing your startup’s competitive advantage in the market. Not only that, but having a patent application on file at the United States Patent and Trademark Office (USPTO) can make the startup attractive to potential investors.
The best advice for startups that have a novel invention to bring to the market is for the startup to figure out how to obtain the patent you need for your startup’s technology. There are ways to reduce the cost associated with filing for a patent application, and an experienced New York patent lawyer will be able to help you and your startup make the most of your startup’s intellectual property budget.
A lot of startups have the misconception that filing a patent application is prohibitively expensive. But this is incorrect. Startups may qualify for special status with the USPTO that can get them a reduced rate for patent application filing fees. Startups that are eligible could be classified as having:
If you think that your startup is eligible for either small or micro entity status, you should work with an experienced attorney to complete your patent filing. There are certain filing requirements that need to be met in order to obtain the status designation. Additionally, it is important to know that the US patent system is a first to file system, which means that the first inventor to file a patent application will get the patent if one is issued. So time is of the essence and your startup needs to get moving on filing your patent application in order to protect and preserve your IP rights.
While there is no legal requirement that you have to have a lawyer in order to file a patent application with the federal government, but there are a lot of specific legal requirements that must be satisfied in order to file a patent application. Many startups would rather have a patent lawyer file their patent application in order to focus more time and energy on building up the startup. The professionals at Revision Legal can help you seek the patent protection your startup needs. Contact us today using the form on this page or call us at 855-473-8474.
Many startup founders have heard of the provisional patent application—a lower-cost, lower-formality filing that establishes a priority date without the full examination process. But a provisional is only the beginning of a sensible patent strategy, and understanding what comes next is essential to making sound investment decisions about your IP portfolio.
A provisional patent application under 35 U.S.C. § 111(b) establishes a priority date and allows the applicant to use the designation “patent pending” for 12 months. It is never examined by the USPTO and expires automatically after 12 months unless a non-provisional application is filed claiming its benefit. The provisional buys time—time to refine the invention, attract investors, and test the market before committing to the full cost of a non-provisional application.
The non-provisional application under 35 U.S.C. § 111(a) is the “real” patent application. It is examined by a patent examiner, may be rejected one or more times before being allowed, and ultimately results in either an issued patent or abandonment. The claims in the non-provisional application—the numbered paragraphs at the end of the patent that define the legal scope of protection—must be carefully drafted to capture the full scope of the inventor’s contribution while distinguishing the invention from the prior art. This is where most of the attorney work and most of the legal strategy occurs.
Patent claims define the metes and bounds of patent protection. A broad claim that captures the core innovation gives you the strongest protection but is most vulnerable to rejection based on prior art. A narrow claim is easier to get allowed but provides less meaningful protection. Skilled patent prosecution involves drafting a claim set with multiple levels of scope—broad independent claims and progressively narrower dependent claims—so that even if the broadest claims are rejected or invalidated, narrower fallback claims survive.
One common startup mistake is filing a patent application focused on a specific embodiment of the invention—the first working prototype—rather than the underlying inventive concept. A competitor who makes a slightly different version of the same product may design around narrowly drafted claims entirely. Your patent attorney’s job is to draft claims broad enough to cover the full range of commercially significant variations of your invention.
The United States adopted the first-inventor-to-file system under the America Invents Act of 2011. This means that if two inventors independently create the same invention, the one who files first gets the patent—not the one who invented first. There is one important exception: a disclosure by the inventor within one year before filing does not constitute prior art against the inventor’s own application under 35 U.S.C. § 102(b)(1)(A). But this grace period does not apply to third-party disclosures—if someone else publishes your invention before you file, you may be barred from obtaining a patent.
This has critical implications for startup founders. Do not present your invention at conferences, publish academic papers, or post about it on social media before filing at least a provisional application. Once you publicly disclose your invention, the clock starts running on the one-year grace period—and you lose foreign patent rights entirely, because most other countries have no grace period and require absolute novelty.
If your market extends beyond the United States, you need to consider international patent protection. The Patent Cooperation Treaty (PCT) provides a streamlined mechanism for filing patent applications in up to 153 member countries through a single international application. A PCT application extends the period during which you must decide which specific countries to pursue—typically to 30 months from the priority date—while preserving your rights in all member countries.
PCT filing fees are substantial, and national phase entry fees add up quickly when pursuing protection in multiple countries. A focused international strategy typically identifies the five to ten most commercially important markets—based on where the invention will be manufactured, sold, and most likely counterfeited—rather than pursuing protection worldwide. Your patent attorney can help develop a cost-effective international strategy based on your business plan.
A single patent is rarely sufficient to protect a market position. Sophisticated companies build patent portfolios that cover: the core invention, key improvements and variations, manufacturing processes, software components, and related applications. This creates a “patent thicket” around a technology space that makes it difficult for competitors to design around any individual patent.
For startups, building this portfolio incrementally makes sense. File a provisional early to establish your priority date. File a non-provisional within 12 months. As your technology evolves, file continuation applications to capture improvements. The portfolio grows with the company—and so does its value to investors and acquirers. Contact the patent attorneys at Revision Legal to develop a patent strategy for your startup. Reach out today.
Chinese manufacturers can copy your products and undercut your brand in global markets. Here’s how to protect your intellectual property when manufacturing in China.
Read more about Protect Your IP from Chinese Manufacturers
Architects face unique intellectual property challenges around building designs, drawings, and client work. Here are three practical IP tips every architecture firm should know.
Read more about 3 IP Tips for Architects
Utility, design, and plant patents protect different types of inventions. Here’s a plain-English overview of the different types of patents and what each one protects.
Read more about Patents 101: The Different Types of Patents