China is making some moves

The fees, the agreements, the restrictions… You can understand when Chinese officials say that the country is retooling to become a country of technological innovation and less of a manufacturer. This positions China to move away from paying to use technology developed in other countries.

What many may not understand is how China is promoting innovation.

China's Investment Into Innovation

One of the largest markets available to multi-national corporations is that of gov’t procurement or products purchased by the gov’t of a country.

In the US, around $500billion is spent by the gov’t in procuring goods and services from foreign and domestic suppliers. Estimates say China spends in the neighborhood of $200billion and that number is growing rapidly.

It is not hard to figure out why many companies are interested in participating in such a large expenditure. They want to get in on a piece of that $200billion.

Advantage

In order to spur domestic innovation, China has implemented several policies that give a distinct advantage to domestic Chinese companies. Some may say that the “distinct advantage” afforded by the local Chinese policies actually translates more accurately into an exclusive opportunity to be considered for Chinese gov’t procurement funds (part of the $200billion).

One of the more controversial of these policies “favors” products that are tied to technology created or held by Chinese entities. This has caused quite a bit of turbulence in the global marketplace.

The result of these policies is that little to none of the ~$200billion is headed for your company… unless you get accredited by the Chinese gov’t.

Accreditation

In order to achieve the accredited status, one must apply to the Chinese gov’t. The catch? Only an entity having Chinese legal status may apply.

If your product is the subject of a patent or trademark, that patent or trademark must be owned by a legal Chinese entity. So… if you want to get a piece of the Chinese procurement market, be ready to serve up your intellectual property as well.

There are definite up-sides to being able to participate in the Chinese market but the costs to transfer your patents to a Chinese entity and rely on them in order to get a bite at the $200billion apple might be a bit steep.

What To Do Next?

We recommend discussing the matter with an experienced patent attorney.

You can schedule a free strategy session with one of the attorneys at Miller IP Law to discuss you options.

Miller IP Law is a firm that focuses on small businesses, startups, and entrepreneurs/solopreneurs. We’re easy to use. We offer affordable pricing that’s transparent and flat-rate. We focus on the little guys who actually need our help. If you’d like an attorney on your team, simply schedule a Zoom call, and we’ll take care of the rest.

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2. How Long Does It Take To Get A Trademark?

3. Why Are Patents Important?

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Start-Ups & Patents

Starting a new company is an exciting and demanding venture. The excitement comes in engaging in something new with the potential for great success.

The demand on time and finances can, at times, overwhelm the excitement and stifle the drive that is needed to get a start-up off the ground.

Start-ups & Technology

In many instances, a start-up is built around a new technology or solution to a problem out there.

Protecting that tech or solution so that the start-up can have a fighting chance at competing out in the market should be high on the list of priorities.

The financial investment needed to provide immediate and full protection may be outside the budget of a fledgling start-up.

What Types Of Patents Are There
(And Which One Is Best For Start-Ups)?

One great option for a new company or venture is that of filing a Provisional patent application. Provisional applications are not well-known but offer distinct advantages to many who may be jumping into the startup waters.

This special type of filing provides a one-year reservation on a date which may be used for a full protection non-provisional patent.

The filing is simple; hand-sketches and descriptions, photos and notes all may be filed without too many formal requirements.

In some cases, the situation merits filing a provisional application prepared by a patent attorney to reduce the cost and time requirement in filing a non-provisional later on and to avoid potential issues that a do-it-yourself provisional may introduce.

While provisional filings are a very useful tool in many instances, filing a provisional patent application may not be the perfect fit in every situation.

There are several factors that one should consider before making the decision:

• Budget – initial costs within the first 12 months vs. total costs over the life of the patent
• Market Readiness – unknown market vs. known market ready for your invention
• Speed – R&D vs. first to market
• Infringement – possibility of infringers sooner vs. later
• Licensing – commercialization by inventor vs. licensor

How Do I Get Started?

If a provisional patent application is something you think might add value to your startup, the attorneys at Miller IP Law can help walk you through the pros and cons of provisional filing and put a strategy in place by scheduling one of their Free Strategy Sessions.

In a strategy session, we briefly discuss your business and what patent options would be best for you.

There is zero commitment.

We are just interested in educating you one what would be best, what options are available, and why we may or may not be the best people to help you with it.

Schedule Your Free Strategy Session

Miller IP Law is a firm that focuses on small businesses, startups, and entrepreneurs/solopreneurs. We’re easy to use. We offer affordable pricing that’s transparent and flat-rate. We focus on the little guys who actually need our help. If you’d like an attorney on your team, simply schedule a Zoom call, and we’ll take care of the rest.

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2. How Long Does It Take To Get A Trademark?

3. Why Are Patents Important?

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Evidence of Use for Trademark Application

As part of a trademark application, we must show evidence that the above mark is being used in commerce or indicate in the application that the mark is not currently in use but that you intend to use the mark within up to 2 years. If you are currently using the mark in commerce please provide us with one or more examples of that use, similar to those shown below.

How do I Submit Evidence To My Attorney?

If you need to submit more evidence, feel free to email us at devin@milleripl.com with all of the graphics you would like to submit (JPEGs and PNGs work best).

As part of a trademark application, we must show evidence that the above mark is being used in commerce or indicate in the application that the mark is not currently in use but that you intend to use the mark within up to 2 years. If you are currently using the mark in commerce please provide us with one or more examples of that use, similar to those shown below.

What Counts as Evidence?

The Goods Themselves

You could submit a photo of the mark on the good itself.

Labels or Tags Attached to the Goods

You could submit a photo of a label or tag with the mark attached to the good.

Packaging for the Goods

You could submit a photo of packaging with the mark for the good.

Sales Display Signs/Placards where the Goods are Sold

You could submit a photo of product display.

WEB PAGES Selling the Goods

You could submit a photo/screenshot of a web page showing the mark where your goods are sold.

Software as Goods

You could submit a photo/screenshot of a software launch screen with the mark in an introductory message box, or a screenshot of a web page with enough information to download the software and the trademark appearing in the title bar.

Specimens for Services

You could submit a photo/screenshot of a newspaper of online advertisement for the services.

Miller IP Law is a firm that focuses on small businesses, startups, and entrepreneurs/solopreneurs. We’re easy to use. We offer affordable pricing that’s transparent and flat-rate. We focus on the little guys who actually need our help. If you’d like an attorney on your team, simply schedule a Zoom call, and we’ll take care of the rest.

Top Blog Articles

1. Cheapest Way To Get A Patent

2. How Long Does It Take To Get A Trademark?

3. Why Are Patents Important?

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Apple’s first patent for the iPhone, submitted in 2007, had humble beginnings. It was listed simply as an "ornamental design of an electronic device, as shown and described." Little did we know that by 2011, Apple would sell over 18 million units worldwide, rendering this invention one of the most ubiquitous devices of our generation. With technology developing at a rapid rate these days, it’s anyone’s guess what the next great invention will be. Whether you’re still testing out ideas or at the prototype stage of making your vision a reality, it’s important to recognize the value of your work product. Taking the time to prepare an invention disclosure form will allow you to record evidence that this unique invention is yours (or your company’s) and get you started on the patenting process. Here at Miller IP Law, we’re dedicated to empowering our clients with knowledge and protecting their interests with innovative strategies. In today’s post, we’ll provide you with a primer on how to get started on invention disclosure forms.

What is an Invention Disclosure Record?

An invention disclosure record (IDR) is a form that documents important facts and technical information relating to the invention, the inventors involved, and the earliest invention date. This form also acts as a business record for your company so that you have documentation showing your rights to the invention. The IDR will also include any sponsorship information for your invention. An IDR can be filled out and completed by any of the inventors and should be factually accurate. If there are multiple inventors, each inventor should receive a copy of the IDR for his/her records. Wondering whether you even need an IDR or patent for your invention? Let’s examine what makes an invention patentable. First, you should know there are three kinds of patents: utility, design, and plant. A utility patent protects inventions that fall under the following categories: process, machine, article of manufacture, composition of matter, and improvement of any of the above. The invention must be new, nonobvious, and useful. A design patent protects the ornamental design of a manufactured item (this is the nature of the patent that Apple submitted in 2007. A plant patent protects asexually reproduced plant varieties by design and plant patents. Here’s what cannot be patented: Laws of nature Physical phenomena Abstract ideas Literary, dramatic, musical, and artistic works (these can be copyright protected, though, which is a different application). Related: Is Software Protected By Copyrights or Patents?

Why Do You Need to Submit an IDR?

Submitting an IDR is a great idea for various reasons, most of which will help you streamline invention procedures at your company, save time, and protect your professional interests. Let’s look at some of these reasons in detail.

Expedite Your Patent Process

Preparing an IDR will help speed up your patent process. Because invention dates are important when it comes to locking down a patent for your invention (the U.S. is a first-to-file nation, which means generally whoever files first gets the patent), you want to do whatever you can to expedite the process. By already having an IDR prepared, you have proof of your invention date. In a situation where some other inventor may have invented something similar, you have the advantage of a formal business record noting when you came up with your invention.

Make Your Patent Process More Efficient

Because you’ve already included a lot of pertinent information and facts related to your invention in the IDR, you’ll have everything at your disposal when it comes time to file a patent application with the USPTO (or other patent organization). If the IDR is accurately and thoroughly filled out, you’ll have an easier time completing the application for patenting your invention.

Improve the Quality of Your Application

Ideally, you’d complete the IDR soon after completing work on the invention when the facts are fresh in your mind. Thus, all the important technical details of the invention are already incorporated into the IDR and when it comes time to fill out the patent application, you won’t have to go back and try to remember all the work you’ve done. As a result, your patent application will be detailed and of a higher quality than those prepared without the help of an IDR.

Protect your intellectual property and commercial interests

Establishing the invention date on your IDR will protect your company’s commercial interests should you decide to file a patent application. Both you and the USPTO (or other governing organization) will know that you were the first to invent and when your product goes to market, the credit (and hopefully, profits) will be attributed to your company.

Market Your Invention to Investors

An IDR can be useful in describing your inventions to possible investors. Be sure to get them to fill out a Nondisclosure Form first. Related: What Do Investors Look For In Patents?

What Information Should an IDR Include?

An IDR consists of nine essential elements that must be included in order to be valid. They include a title of invention, inventor’s name and contact information, significant dates, description of invention, prior art, public disclosures of the invention and commercial activity, funding sources, witnesses, and signatures. Read on to see what each element means and how to complete your IDR.

Title of Invention

Don’t feel pressured to come up with an original title for your invention. A simple descriptive title will do. The title for Samsung Electronics Co., Ltd.’s 2003 patent was a succinct one: “cellular phone.” Just be sure that the title describes the invention and that it differentiates itself from any other IDRs your company is preparing so that they don’t get mixed up.

Inventor’s Name and Contact Info

Include a list of every inventor or individual who was substantially involved in the creation of your invention. Be sure to list their full names, complete contact information, and employee identification information, if any. Keep in mind that the question of formal inventorship is a legal issue that will be determined when it comes time to submit your patent application. An experienced patent attorney can help you figure out who to include in the IDR and whether they’ll constitute formal inventors for purposes of submitting a patent.

Significant Dates

Some important dates you may want to include in your IDR are: When the idea for the invention first came about If any new inventors or contributors joined the team during the invention process, list the dates they joined the team Dates of sketches that show the development of the invention Dates you created a working model of the invention Date you first put the invention into practice Dates you began, updated, and completed the IDR

Description of Invention

This portion of the IDR will take the most time and thought. Don’t be discouraged if this part takes you several weeks to complete as it is the most important component of the form. Taking the time to fill out this portion accurately will help you later on because this section is similar to the section where you’ll describe the invention for a patent application. Here are some guidelines to help you get started with a description: State the challenge that your invention aims to solve Describe the physical structure and features of your invention Explain how your invention works Write a summary of the invention that shows how your invention is different from others. This brings up a question of prior art, which means you need to show how your invention isn’t just a copy of something that was already available to the public (read more about this in the next section). Be sure to provide a detailed explanation as to how your invention is distinguishable from prior art that is most like your invention. In what ways is your invention more advanced and technologically sound? What parts of your invention are unique? Include any alternative approaches to solving the same problem and why they do or don’t work. If you’ve used any terms that readers may be unfamiliar with, be sure to explain what those terms mean Include test data and relevant findings relating to your invention Add clearly labeled graphs, diagrams, and drawings you’ve used in the invention process Conclude with any significant findings and results you derived from testing out the product and why your invention is a helpful contribution to the industry Related: Is Your Invention Worth Patenting?

Prior Art

Prior art is one of the most common reasons patent applications are rejected. What is prior art exactly? It’s defined by a federal statute: 35 U.S. Code §102, which states that prior art is anything already “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” In short, prior art can include any product, use, publication, demonstration, knowledge, idea, presentation, or even previously filed patent application that was publicly disclosed or somehow made available to the public. Geography doesn’t matter when it comes to prior art. Even if someone in another remote country presented an idea for your invention before you filed your application, it constitutes prior art and would render your invention not “novel” under the federal statute. This brings focus back to the importance of timing when it comes to your IDR and patent application. Your IDR will show when you started work on your invention and can be used as evidence in the event a discussion of prior art arises with regard to your patent application.

Public Disclosures of the Invention and Commercial Activity

You must also disclose whether you’ve made any information relating to your invention publicly available and whether you’ve sold the invention to another company. Even if you only offered the invention for sale without actually selling it, this must be disclosed as well because it constitutes commercial activity. Including this information is important for your IDR and patent application because you have one year from the date of public disclosure and/or commercial activity to file a valid patent application. If you wait longer than a year, your invention is no longer eligible to be patented. It’s important to keep in mind that this one year grace period is only for patents in the U.S. Some foreign patent organizations may not offer a year period, so be sure to check the relevant statutes if you’re looking to apply for a patent in another country.

Funding Sources

Hopefully, you or your company has kept track of any external sources of funding for your invention, if any. You must disclose any funding sources in your IDR, including government funding sources. This is important to determining invention ownership with regard to your patent application later on.

Witnesses

An IDR requires the signature of one witness who was not an inventor or researcher and not involved in the creation or funding of the invention. Essentially, there should be no direct affiliation between the invention and the party witnessing and signing the IDR. The only other requirement is that the witness be able to understand the technical portions of the IDR.

Signatures

At least one of the inventors should sign the IDR. It’s advisable to get all the inventors to sign off on the IDR as soon as possible to make sure your documentation is complete. Related: How Long Does It Take and How Much Does It Cost To Get a Patent?

How Can Miller IP Law Help?

As you can see from our discussion above, completing an invention disclosure form takes a lot of time and thought but is worth it to document and record your unique invention. It pays to patent your work and establish your invention date so that you can protect your interests while sharing your contribution with the world. Understandably, you may have questions after reading today’s blog and we’re here to help. Give us a call at Miller IP to set up a strategy session. We have a genuine interest in educating our clients and helping them learn more about their intellectual property rights. Take a look at what we can do for you here.

Miller IP Law is a firm that focuses on small businesses, startups, and entrepreneurs/solopreneurs. We’re easy to use. We offer affordable pricing that’s transparent and flat-rate. We focus on the little guys who actually need our help. If you’d like an attorney on your team, simply schedule a Zoom call, and we’ll take care of the rest.

Top Blog Articles

1. Cheapest Way To Get A Patent

2. How Long Does It Take To Get A Trademark?

3. Why Are Patents Important?

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An ongoing eight-year legal battle between UC Berkeley (UCB) and the Broad Institute illustrates the importance of a patent when it comes to protecting your intellectual property rights. In 2013, UCB published a paper on revolutionary gene-editing techniques that scientists could recreate in a test tube. Only months after, the Broad Institute published research showing these gene-editing processes would be useful in cells. 

Both entities filed applications to patent this gene-editing technology, called CRISPR/Cas9, but the Broad paid an extra fee to have its application reviewed sooner. Because UCB neglected to do the same, the Broad was granted patent rights to CRISPR by the U.S. Patent and Trademark Office (USPTO). UCB argued that the Broad’s findings were obvious in light of UCB’s paper, which was published first, and a long war over claims to CRISPR ensued.

Stories like this show us how a patent challenge can easily arise, even with large organizations that have considerable experience in the field of genetic research. How can your company protect its intellectual interests with a patent? At Miller IP Law, we’re devoted to educating and empowering our clients with valuable knowledge and legal resources. Keep reading to learn how patents work and how they can help protect your business’ assets.

Related: Is Your Invention Worth Patenting?

Here is How Patents Work

What exactly is a patent, and how does it work? A patent is an exclusive property right to an invention. Whether a company can claim those rights is determined by a governing organization, like the USPTO. Generally, those rights are only valid in the country or region in which the patent was filed.

This right protects the interests of the company for 20 years (design rights can also be patented.  In the U.S., a design patent lasts for 14 years). The 20-year protection period starts at the time the inventor files the patent application. The U.S. is a first-to-file nation, which means whoever files the patent first receives the intellectual property rights over others who have filed applications for the same invention.

An invention is defined by the World Intellectual Property Organization (WIPO) as a product or process in any field of technology. This can range from products as simple as a can-opener to a chip device that enables Bluetooth communication. A governing organization that grants patent rights will examine the patent application carefully to make sure the invention is novel, non-obvious, capable of industrial application (not just a theory), and sufficiently disclosed in a complete patent application.

Related: What is Not Patentable?

Where Do You File for a Patent?

A patent is granted by a regional or national patent office that handles patents for a country or group of countries. Here’s a list of regional patent offices that are currently in operation:

• African Intellectual Property Organization (OAPI)
• African Regional Intellectual Property Organization (ARIPO)
• Eurasian Patent Organization (EAPO)
• European Patent Office (EPO)
• Patent Office of the Cooperation Council for the Arab States of the Gulf (GCC Patent Office)

The five largest patent offices in the world are the USPTO, the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Patent Office (KPO), and the National Intellectual Property Administration (NIPA) of China. Together, this group of large offices is often referred to as IP5 and grants an average of 1 million patents per year. However, there are also patent offices across the world outside of the IP5. Check out WIPO’s directory of intellectual property offices to learn more.

What if You Can’t Pay Filing Fees?

Depending on the type of invention, applying for a patent can become costly if the product or process is a complicated one. Check out the USPTO’s fee schedule for filing patents to get an idea of how much it would cost to file a patent for your invention.  As you can see, the USPTO charges different fees depending on the type of patent you’re applying for and the size of your business. Fortunately, USPTO fees are lower for small businesses and micro-entities. 

However, the costs can add up when you factor in fees for conducting a patent search, examination fees, re-filing fees, extension fees, and maintenance fees. There are even additional fees if you’re submitting a technology application, and you submit over 100 pages. There may be more fees on top of that if your application includes a certain amount of drawings. What’s a small business to do if these costs are more than your company can handle?

Assuming your business doesn’t have the money upfront but can pay the fees over time, a good option is the provisional patent process. This process allows you to file a description of your product with the USPTO to obtain an early filing date and file the patent within 12 months so that you have a reasonable amount of time to pay for all the necessary application fees during the year.

Related: How To Do An Initial Patent Search Myself

How Long Does it Take to Receive a Patent?

Because most patent offices often have a substantial backlog of applications to review, the entire process can take several years for a first-time patent application. Once your application is complete and has been submitted to the patent office, the office may contact you with questions or for more information (this is called an “office action”), to which you must reply within a specified time. There are times where the office may have to contact you several times, which can extend the application process even more.

Keeping in mind how long a patent application process can take, companies should factor this lengthy procedure into their business plans and timeline, especially if receiving a patent is key to the company’s future growth. 

Here is Why You Should Patent Your Inventions 

Even though applying for a patent may cost you some money and take a while to come to fruition, there are many advantages to having a patent for your invention. Depending on your company’s goals and priorities, the benefits of owning a patent may far outweigh the time and efforts spent to complete a patent application. Let’s look at some of these benefits in closer detail.

Exclusive Rights

Having exclusive rights means your company can profit from the hard work that went into creating your invention. The patent protects your company’s right to exploit the invention however you see fit without having to worry about other companies profiting from your ideas. Having this protection for 20 years is surely advantageous to any company hoping to establish itself in today’s highly competitive market.

Related: How To Enforce a Patent as a Startup or Small Business

Strong Market Position

A patent affords a company strong market position as compared to other companies in the same industry. The 20-year patent disallows others from receiving a commercial profit from your ideas, which dramatically reduces the amount of competition for your product. As a result, your company becomes the go-to brand for your invention and establishes itself as the front-runner in your chosen field.

Higher Returns on Investments

After spending time and resources on developing your invention, you can receive a high return on your investments by gaining the commercial advantages of having a patent. The profits to be gained on an invention with very little competition in the market for 20 years can bolster your company’s resources and allow you to fund future innovations as well.

Opportunity to Sell the Invention

For businesses that don’t want to take the time to commercially exploit the invention, selling the rights to the invention may be another profitable option. You’ve done the work and acquired the patent; now you can profit by selling the fruits of your effort to receive more income to keep your business running. The fact that your company owns the exclusive rights and already has a patent for the product will be a high sell point that can reap substantial rewards.

Positive Image for Enterprise

Being able to prove you invented the product or process means you have a better chance of securing potential investors and other funding resources for your company. Shareholders, investors, and potential business partners will view your patent portfolio as something that increases your value and thus gives you more bargaining power as a company. For example, another business may see your patented invention as relevant to their ventures, and you may enter into a cross-licensing agreement to exchange exclusive rights to your work. 

Finally, owning a patent for its invention establishes your company as an innovator in the industry. A company that is the first to invent something useful will be seen as having considerable expertise, specialized knowledge, and impressive technological capabilities. In an economy where brand loyalty, reliability, and reputation are paramount, owning a patent allows your company to build its market value and secure a coveted and respected position in the market.

Related: What Do Investors Look For in Patents?

How Can You Get Started On Applying for a Patent?

If you’re a small business or startup with innovative ideas, it may be time to start thinking about whether a patent is right for you. Depending on your goals and priorities, the benefits that come with a patent can help you greatly in the long run. Applying for a patent can be a lengthy process, but you may decide the benefits substantially outweigh the time and costs involved. 

Take some time to research whether a patent is appropriate for your product or process. At Miller IP, we hope to provide you with the tools you need to protect your intellectual property interests. Schedule a strategy session with us today to learn more about applying for a patent for your invention.

Related: Top Questions To Ask When Hiring a Patent Attorney

Miller IP Law is a firm that focuses on small businesses, startups, and entrepreneurs/solopreneurs. We’re easy to use. We offer affordable pricing that’s transparent and flat-rate. We focus on the little guys who actually need our help. If you’d like an attorney on your team, simply schedule a Zoom call, and we’ll take care of the rest.

Top Blog Articles

1. Cheapest Way To Get A Patent

2. How Long Does It Take To Get A Trademark?

3. Why Are Patents Important?

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Meet Sara

Sara is an Intellectual Property Paralegal with over ten years of experience. Sara assists Miller IP Law attorneys with coordinating and filing patent and trademark documents with the USPTO and managing dockets. She also helps clients stay informed about their intellectual property rights.

Sara has a B.A. in from Lewis & Clark College in Portland, Oregon and a Paralegal Studies Certificate from Anne Arundel Community College in Maryland. Sara is also a U.S. Air Force veteran, and returned to Portland, Oregon in 2010, where she lives with her husband and two children.

About Miller IP Law

Miller IP Law is a law firm that focuses on helping startups and small businesses with patents and trademarks.

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What Makes Miller IP Law Different?

Miller IP Law is a firm that focuses on small businesses, startups, and entrepreneurs/solopreneurs. We’re easy to use. We offer affordable pricing that’s transparent and flat-rate. We focus on the little guys who actually need our help. If you’d like an attorney on your team, simply schedule a Zoom call, and we’ll take care of the rest.

Top Blog Articles

1. Cheapest Way To Get A Patent

2. How Long Does It Take To Get A Trademark?

3. Why Are Patents Important?

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