The Lean Startup movement, which defines the path that an entrepreneur should take in building a business in the 21st Century evangelizes Company development as (i) take your idea, (ii) build a minimum viable product (MVP), (iii) undertake continuous customer validation and feedback, (iv) launch a beta with a series of rapid follow-on releases, and (v) and don’t worry about the filing for intellectual property or patents until your 100% sure that your product resonates with consumers.
Although we have largely embraced the above Lean Startup movement and advice, we nonetheless chose to file for a Patent “early” rather than late in the process and chose to file the more comprehensive and expensive “Non-Provisional Patent” versus the much easier and less expensive “Provisional Patent”.
Why File a Patent Now?
The answer largely depends upon how unique, valuable, and important one believes their intellectual property is (i.e. benefits vs. costs of filing), whether the “systems and methods” that underlie the patent are likely to change over time (e.g. for evolving products, controlling IP becomes an expensive and continuous game of musical chairs), and whether you have the time, money and effort to commit to IP development versus the advice of The Lean Startup movement which is to spend 100% of your time getting close to your prospective target audience, building a business around the unmet needs of the customer, and refining an IP strategy over time.
In the case of Immersonal, we looked at technology development including the Internet, eCommerce and Social Media and it seemed to us that a patent war is going on amongst the big players (e.g. Google, Microsoft, Apple, Facebook). Google spending $12.5 billion buying a patent portfolio from Motorola and Facebook in an IP slugfest with Yahoo are just the most recent examples. It’s amazing to think that Google would spend $12.5 billion for only a portion of their IP portfolio when Alcoa (a Dow Jones Industrial component) has a $9.7 billion market capitalization.
As such, our view was that having IP early is potentially a big advantage, gaining the right to build a defendable product or service, scratching the itch of venture capital firms that want to know what the Company’s sustainable competitive advantages are and barriers to entry are versus its competitors, and to the extent we are successful and want an exit strategy to a player that understands and values IP then all the better.
Finally, filing the patent and feeling like we own an asset helps me sleep at night!
Why File a Non-Provisional Patent?
The soup dejour for a startup is to file a “Provisional” rather than “Non-Provisional” patent application. The Provisional provides the advantages of:
- Simplified filing with a lower initial investment with 12 months to assess the invention’s commercial potential before committing to higher cost of filing and prosecuting a non-provisional application for patent.
- Establishes official United States patent application filing date for the invention.
- Permits authorized use of “Patent Pending” notice for 12 months in connection with the description of the invention.
- Begins the Paris Convention priority year.
- Enables immediate commercial promotion of invention with greater security against having the invention stolen.
- Permits applicant(s) to obtain USPTO certified copies.
- Provides for submission of additional inventor names by petition if omission occurred without deceptive intent (deletions are also possible by petition).
Given the benefits of the above, why did we file a Non-Provisional patent?
The answer is that we felt the best way to put a marker down on our rights to IP was to file the much more comprehensive Non-Provisional Patent with the benefit of top tier advice (we hired Pillsbury), to bite the bullet on time and cost (3 -4 months @ $17k), and be able to tell potential venture capital investors and/or partners that we felt so strongly enough regarding our IP that we did a full patent filing rather than effectively filing for a placeholder (aka: a Provisional Patent) that requires a Non-Provisional Patent to be filed within the next 12 months anyway.
So the punchline is that we bit the bullet and filed a Non-Provisional Patent covering 53 pages, 11 drawings, and 38 claims and spent either a modest amount of money to own a very valuable IP asset or spent a lot of money on paper to fuel a wood burning fireplace.
If you are interested in more information, you can listen to the podcast “The Minefield of Patents and IP”.