Demystifying the Patent Process, Tips from Riot event!

Do you think you have something patentable, but aren’t sure? Wonder if you should consider seeking patent protection for your invention? Don't have a clue where to start? Today we joined the organization RIoT at HQ Raleigh for an informative "Patents 101" session to demystify the patent process led by John Sotomayor, Patent Attorney and Co-Founder of SotoIP (www.sotoip.com). Important things covered that you need to be mindful of per important nuances in the patent process are:

• When to know that you have something patentable
• The practicalities and definitions of patent types
• The importance of formulating a patent strategy and why
• The process nuts and bolts of the U.S. Patent and Trademark Office. Timing expectations after a patent is filed, and follow-on action items to monitor
• Your IP future: building a patent portfolio and why

Here are 12 top tips shared at session from John that can hopefully help support your patent filing considerations:

1. Step 1 patent eligibility! Is what you are offering viable and open to be patented? Do deep searches.  Your product is potentially patentable if it offers process that is unique and novel, introduces new machinery, new manufactured items, compositions of matter like drugs or plastics, and is new and non obvious.
2. If what you have has been previously patented anywhere in the world or already publicly available then it will block your ability to receive patent in the USA.
3. Public disclosure means it has been offered for sale or placed in public use. If you introduce a product publicly and looking to file for a patent, you have 12 month window to make a decision to file for patent or you lose right. (United States Safe Harbour)
4. Types of Patents(Design: 14 years protection to cover look and feel of object, Utility is two flavors as provisional or non-provisional and last 20 years. A provisional utility patent does not have claims, but allows you to register as patent pending status for 12 months to support your business and keep your filing protection date. You can then convert to non-provisional patent that has claims, complete specs, and reviewed by patent examiners if you submit within 12 months of your provisional.  FYI, another patent category is known as "Plant" per facility innovation but these are very rare.  
5. Software patents are tricky. If you have middleware that does not make anything tangibly different in the world that results in real change that manifests in people's use then it's not patent eligible. However, if you have software like a usable app has results in real world change and effects people's lives tangibly then its patent eligible, but it can take 3 years to get patent so if your software is time sensitive like consumer apps recommend you keep all "Trade Secret". However, if your software is big broad in scope that matches patent eligible requirements and has long term play critical to your business long term strategy, then worth filing.
6. Patent searchers are key to your discovery, but it's not the "be all end all" as some other inventors may have patents filing or filed in non-disclosed confidential status. Even with the best searches in the world you can only get to about 95% certainly.   
7. Make sure you broaden your patent claims and specs to document what you're doing today, but also document works in process and list these features in claims and details in specs for what you have coming in future to further protect your overall patent claim.
8. Is it patentable? Answer these 3 questions. Is it useful, novel, and non-obvious. Can someone use it to make a new difference in their life?  Is it novel with uniqueness that no one has thought of and not currently available? It is non-obvious meaning something that a normal trade person could not have thought of and done easily in the field of this business. Is it difficult to do? Lastly, if it has a cool "wow" factor that makes experts in your trade think it's novel and non-obvious then, you are on to something!
9. All patents are open to search so do your initial deep search through trade organizations and check out the google patent search system to vet your idea patent feasibility. On your own you can get 75% of the facts on patent scenario. Professional organizations like LegalZoom can get you to 95%. Specific patent IP law firms can get you to the closing deal.
10. To strengthen your company IP consider tieing patents together through smart parent and child patent filing to broaden your scope and build your patent portfolio to maximize your IP.
11. Always think 12-18 months out from current technology and make sure you add these details into your description to document your future plans and aims. Your description is set in stone so be comprehensive on this. Your claims can change and your specifications support your claims so document these wisely. The claims are what is enforced by law so be crystal clear here and cover your bases.
12. "Office action" is a communication from patent office. Prepare to receive an office action sending back initial filing with objections. You can then update your filing with refined claims and add new specs to further substantiate your claims in addition to clarifying features to build your case. You will start broad on your filing, but get more specific as you work with patent office. On average you should expect 3 office actions on your filing to get to patentability. It's a negotiation!

Thank you to RIoT, John from  SotoIP, and HQ Raleigh for hosting a great and informative event!

About RIoT: RIoT represents a network of technologists, engineers, business leaders, academics, policy makers, and entrepreneurs, all of whom have a stake in the Internet of Things industry. Companies ranging from startups to international heavyweights meet frequently to exchange ideas, to learn new technologies, and to create new opportunities. The Internet of Things is here, and it’s growing. Our mission is to create a community that captures IoT opportunities locally, nationally, and globally.

About SotoIP: Based in Research Triangle Park (RTP), NC, SotoIP specializes in serving startup and emerging growth companies in developing their IP strategy, patent prosecution, and patent portfolio growth and management.