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The Benefits of a Provisional Patent Application for Your Hardware Startup
It is important to note that a “provisional application for patent has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding nonprovisional application for patent (nonprovisional application) during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application.” Once you file a provisional application the countdown clock starts ticking and your next move must be decided within the 12 month period.
As with any patent application, your application needs to be as complete as possible to be truly beneficial—this means that you must describe and document all variations, alternatives and permutations to your invention in detail. The best way of obtaining this critical information is by turning your idea into a functional prototype. A prototype will allow you to hold the invention in your hands, and make any necessary modifications to your final design. 3D CAD renderings and simulations will also help define the limits of your invention.
Below we discuss the two main benefits of a provisional patent application for your hardware startup:
Your Invention is Legally Protected
In the early-stage of product development inventors understand the importance of confidentiality and protecting their idea. While a confidentiality agreement will suffice when talking about your idea with engineering firms and licensing firms, investors can be slightly weary of signing one—and this can make things very difficult if you are seeking outside funding.
“Investors get proposals from many people and if they sign a confidentiality agreement with you, and another who has a similar idea, that could lead to liability on their part where there was no liability present absent them signing an agreement. (IP Watchdog)” Thus, if you want to show someone your invention without any legal protection, the pros and cons must be heavily weighed. If you have a provisional patent application pending though, you have defined your invention and it has a legal filing date, which makes discussing the invention with outside parties much less risky.
The “Patent Pending” Terms Can Be Used
“Patent Pending” is a term that is not only legally beneficial, but it gives your invention and your startup credibility. You are creating “perceived ownership” while defining the details of your idea. An idea that has been turned into a tangible invention (i.e. with a functional prototype) is more valuable when discussing potential licensing agreements and funding with outside investors.
The earlier you file a provisional patent application, the quicker you limit your exposure and prevent others from cutting off your rights (i.e. by filing for a similar invention before you do). The “Patent Pending” term shows that you have established priority for the idea/invention.
Developing a product should be viewed as a marathon and not a sprint. Taking your time early in the product development process to protect your invention will be immensely beneficial for your hardware startup later on.
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3D Innovations is a Product Development Company – from the 3D Design to a fully functional 3D Prototype & Product.
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When is the Best Time to Consult a Product Development Firm?
Partnering with a product development firm early in the product development cycle can expedite your time-to-market; however, there are at least three other times in which this partnership is invaluable to your startup.
Technical Expertise
Often times startups are in need of a technical expert to get their idea off the ground. Whether you are a software or hardware startup, the right expertise is necessary and often the difference between success and failure.
An expert with experience in the industry you are trying to navigate will be able to provide you with instrumental insight and get your startup headed in the right direction from the start. As Steve Jobs once stated, “It doesn’t make sense to hire smart people and then tell them what to do; we hire smart people so they can tell us what to do.” While a technical expert won’t tell you what to do, their insight will help you make better informed decisions.
Manufacturing Phase
Manufacturing a product is an expensive undertaking, and becomes even more expensive with each misstep. You need to be sure that your design meets manufacturing requirements and is cost efficient from the very beginning. When working with a product development firm, you can prepare early for this step with a product design centered around Design for Manufacturability.
Design for Manufacturability (DFM) is the process of being proactive during the product design phase by considering the manufacturing stage of product development at the start of the design cycle. Early consideration of the manufacturing phase shortens product development time, minimizes development costs and ensures a smooth transition into production.
At the heart of Design for Manufacturability is a group of design guidelines structured to help the designer reduce costs and manufacturing difficulty. The following is a brief list of these guidelines:
Patent Preparation
The patent process is extremely regimented and your design documentation must adhere to strict guidelines. A product development firm can make certain that you have the necessary line drawings for the patent filing process. Often times product development professionals work directly with patent attorneys to ensure a streamlined and timely filing for your invention.
With the right partnerships in place, your startup can quickly realize its full potential and get your product into the hands of customers.
Have further questions about product development? Send them our way at info@3d-innovations.com
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3D Innovations is a Product Development Company – from the 3D Design to a fully functional 3D Prototype & Product.
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How to Prepare for Your First Patent Attorney Meeting
Below are a few tips on how to prepare for your initial meeting with a patent attorney. Keep in mind that the first meeting can be free—being adequately prepared means that you will be able to glean as much knowledge as possible from this meeting.
Prepare a brief description of your invention.
The key to this description is to be concise. What does your invention do? What are the main functionalities of your invention? This written summary if often called an “invention disclosure statement”, however it doesn’t need to be formal and can be written in any form. Keep it to a page or less in length, and even a paragraph or two will be sufficient.
Write your description so that someone unfamiliar with the product can get an idea of what it does and the technology behind it. Patent attorneys deal with a variety of technology, but don’t always have an extensive technical background, so you want to be able to bring them up to speed quickly on your specific invention.
Bring drawings or a prototype.
Seeing your invention is a quick and efficient way of describing your product to the patent attorney. A prototype allows the patent attorney to assess the product and understand the exact intricacies behind your invention. Depending on the exact nature of your product, a functional prototype might be just what you need for the meeting. However, line drawings or sketches of your product will also work for your initial meeting. These drawings don’t have to be formal, but they should be thorough.
Conduct your own patent search.
This can sound slightly counter-intuitive since you are meeting with a patent attorney, however you should to conduct your own patent search beforehand. Search patent databases such as www.google.com/patents or www.uspto.gov using keywords from your “invention disclosure statement”.
Print the patent search results.
From your patent research, print and bring the patents that are most similar to your idea. You can either print out the patent references or compose a list of them, so that they can be easily retrieved. This will provide a research starting point for the attorney as they conduct a more formal patent search.
We also suggest organizing the above information into a single file folder and include a business card. This way the attorney will have all of your invention information and contact information in one place.
Adequate preparation for this meeting ensures that you will get the most out of your initial meeting and hopefully gain a better understanding as to whether this route makes the most sense for your invention and stage of business.
Have additional questions about patents, prototypes or line drawings? Please send us an e-mail, info@3d-innovations.com
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3D Innovations is a Product Development Company – from the 3D Design to a fully functional 3D Prototype & Product.
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The Complex Relationship of Innovation and Commercialization
Innovation and commercialization are similar yet vastly different. You can have an abundance of ideas, but having the structured process in place to bring them to fruition is key. The path to commercialization is littered with potholes and roadblocks, but you don’t have to navigate them alone.
Often the process of moving a product idea out of the “idea” stage is challenging, so many inventors tend to discard the idea and move on. However, with the right resources and structure in place, you can get your idea off the ground and headed towards commercialization.
Below are a few items to consider when developing the support structure for your business.
Often times inventors and entrepreneurs are viewed as people who lock themselves away to develop an idea, but the truth of the matter is, it takes help from a wide range of people to get an idea on the road to commercialization. Don’t be afraid to reach out and ask for help. If you need a certain skill set that you don’t possess, find someone who does—asking for help might just be the thing that sets your idea on the path to success.
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3D Innovations is a Product Development Company – from the 3D Design to a fully functional 3D Prototype & Product.
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Q&A with Rob Saito of Herbavore
We recently had the chance to talk with Rob Saito, Founder of Herbavore, along with Collin Kobayashi, 3D Innovations President and Chief 3D Officer, about the product development process and what it takes to design, protect and commercialize a product.
Like most great startups, Herbavore grew out of a need—in this case, the need for better and less cumbersome gardening tools. Specifically, tools that would be comfortable for different hand sizes and that could accommodate both left and right-handed individuals. Herbavore’s patent pending tools aim to reshape the garden tool industry.
How did you initially approach the product design process?
(RS): Herbavore’s first prototype (homemade) was a great starting point in the design process. It was used as a baseline. This rough prototype was used as a building block for further iterations.
Prior to working with 3D Innovations we didn’t know about the manufacturing aspect of designing. We thought our designs were “ready to go”, but after consulting with Collin, we realized the designs needed to be modified further to meet manufacturing requirements, especially related to injection molding. While working with 3D Innovations we learned more in-depth about the manufacturing process such as over-molding, which types of molds to use for cost effectiveness, and material capabilities.
(CK): Using Design for Manufacturing (DFM) early in the process creates a much more streamlined design and eliminates the need to rework or change the design to conform to the manufacturing method being planned. It also allows the client to understand the limits of what can be designed versus what features are critical to the function of the parts. Discussing these options and designing for DFM early in the process allows all team members to be aware of what is necessary to accomplish a functional and manufacturable design.
The patent filing process can be challenging, how have you prepared for this step?
(RS): The initial drawings for our first two provisional patents were made using AutoCAD software. Our team’s strengths are not in mechanical engineering, so we did the best we could. However, we felt these initial drawings did not do our invention justice. We are currently in the process of filing a non-provisional patent, and the line drawings that 3D Innovations has made are top notch. They not only accurately depict our invention in a professional manner, but also will make obtaining a patent easier as these professionally made drawings are sure to impress the patent examiner.
(CK): Most patent applications contain “line drawings” that depict the claims of the patent. Using professional drawings as opposed to ones that are hand drawn or created using other methods may cause issues when the application is reviewed by the patent office because particular features may not be present or not depicted correctly. Using drawings from the actual designs provide many benefits which include creating section views to show internal features, having all views created to the same scale, and having drawing views automatically update when changes to the design are made. Great control of the output of drawings can be managed when the patent drawings are created professionally.
How have you familiarized yourself with the entire patent process?
(RS): I learned a lot of things about the patent process consulting with IP attorneys, reading, and conducting a patent search of over 300 patents.
(CK): The patent application is very involved and requires a tremendous amount of research of prior art and adjusting the claims of the invention so that the design is unique.
Launching a startup is a team process, how has your team assisted in the development of Herbavore’s product design?
(RS): Input was received from team members throughout the design process. Based on our team members’ experiences and feedback coupled with customer discovery, decisions were then made. Collaboration between team members greatly aided this process.
(CK): It is critical to have all team members be active in the design process. Having everyone on board and in agreement with the design direction will make for a more efficient design process and reduces the amount of rework and wait time, getting to the prototype and manufacturing stages faster. Collaboration among all team members is paramount to ensure the product gets to market in the shortest amount of time possible.
What is one piece of advice you would give entrepreneurs just starting the product development process?
(RS): One piece of advice I would give to entrepreneurs just starting the product development process would be, “to enjoy it with others.” From the beginning to the end. The importance of achieving an end goal or final product is very important, but more importantly is all the knowledge and networks that were created along the way. Product development, especially hardware, can have a long pipeline, so if you aren’t passionate about what you are doing it will take a toll. Yes, it is a lot of work and at times can be a headache, but so personally fulfilling at the same time. You are creating something never seen before or a better mousetrap that will improve people’s lives. Enjoy the product development process with your team, customers, and investors.
(CK): Start by making sure team members have capabilities required for the company to succeed. Fill in gaps by seeking external expertise when needed. Develop partnerships with companies that can add value to your company and/or internal skill sets.
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3D Innovations is a Product Development Company – from the 3D Design to a fully functional 3D Prototype & Product.
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Hardware Startups: Can I Patent My Invention?
Have additional questions regarding the patent process? We highly recommend a visit to the USPTO website. We are also able to help answer any questions you may have, please e-mail them to info@3d-innovations.com
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3D Innovations is a Product Development Company – from the 3D Design to a fully functional 3D Prototype & Product.
Startup Connector is a Manufacturing Accelerator helping companies commercialize—turning ideas into products.
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Intellectual Property: Should You Consider A Licensing Business Model?
What is a licensing agreement?
With a licensing agreement, an inventor (the licensor) develops an invention and then protects that invention through a patent, copyright, trademark, or trade secret, and thus creates intellectual property (IP). The inventor—the owner of the intellectual property—then licenses the invention to a second party (the licensee) whose responsibility is to commercialize the invention. As compensation for allowing another party to use its intellectual property, the licensor will receive a royalty.
Licensing agreements are becoming more common than in the past and are open to more inventors. This has also increased the number of inventors approaching manufacturers and, thus, increased competition.
What are the benefits of a licensing agreement?
Below is a list of some of the main benefits of licensing your invention/IP.
How do I evaluate a potential licensee?
When evaluating a potential licensee, you should focus on its ability to effectively commercialize your invention/IP. Often times that means considering companies that have a proven track record of marketing and selling products based on inventions similar to yours. Depending on the invention, the best way to commercialize it could also be to license it to a startup, a manufacturer, or a bunch of companies in separate territories.
Suggestions for securing a licensing agreement:
Have additional questions about licensing agreements? We would be happy to help answer them, please e-mail info@3d-innovations.com
Articles Referenced:
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3D Innovations is a Product Development Company – from the 3D Design to a fully functional 3D Prototype & Product.
Startup Connector is a Manufacturing Accelerator helping companies commercialize—turning ideas into products.
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Connect with us on Twitter, Facebook & LinkedIn today
Top Intellectual Property Questions From Startups
Intellectual property (IP) is not exactly “fun or exciting” — however, it is the most important aspect of your startup and needs to be protected. Securing and protecting the intellectual property rights to your invention is key to successful commercialization.
Below we answer some of the common IP questions we hear from entrepreneurs.
When should I start thinking about protecting my startup’s IP?
What type of IP protection is necessary for my business?
Patents, copyrights and trademarks are all forms of intellectual property. While all three types of IP are indeed essential for success, hardware-focused startups rely heavily on patents.
What exactly is a patent? A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office (USPTO). U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. There are three types of patents: utility, design and plant patents.
Why should I even consider IP protection for my startup?
If you plan on moving towards commercialization with your product, you are going to want to have control over your startup’s IP. Patents can bolster competitive advantage and assist in the streamlining of the entire commercialization process. If your startup is planning on seeking outside funding from VCs, having all of the founders on the same page regarding IP protection is imperative.
While patents do not guarantee success, they do allow you to secure all rights and claims to your invention. Without patent protection, some inventions cannot be commercialized because both the inventor and investors understand that the product can easily be duplicated, leaving them with no recourse if their product is copied.
How do I file a patent for my invention?
There are a few necessary steps to take before you actually file a patent. First, a patent search will need to be conducted to make sure that the invention does not already exist. The USPTO makes it possible to conduct a preliminary patent search on your own; however, it is highly recommended that you consult with a licensed patent search firm to assist with the bulk of the research. These firms have vast experience researching and are extremely knowledgeable in the classification systems.
If you plan on filing a utility patent, you will next need to decide whether to file a provisional or non-provisional utility patent. In simple terms, a provisional application is a quick and inexpensive way to begin protecting an invention while you continue its development, conduct market testing and obtain funding. A provisional patent gives you exactly one year to file a non-provisional utility patent application and move forward in the patent process.
When it comes time to begin your patent search and subsequent patent filing, we highly recommend that you consult with a licensed patent attorney to review your patent options and decide what will be the most-beneficial for your specific invention.
Have additional questions regarding intellectual property? Send them our way at info@3d-innovations.com
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3D Innovations is a Product Development Company – from the 3D Design to a fully functional 3D Prototype & Product.
Startup Connector is a Manufacturing Accelerator helping companies commercialize—turning ideas into products.
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When It Comes To Your Startup’s IP—Timing Is Everything
It is always best to set up rigorous intellectual property (IP) practices from Day One, but more often than not it gets pushed to the side for ‘later’. If you take a step back though and put this into perspective, ask yourself one question, What is my startup’s most valuable asset? It is not the workspace or funding, but the intellectual property—the disruptive idea, brilliant invention or genius breakthrough. The IP is the heart and soul of the business. This integral piece of your startup needs to be protected by patents, copyrights and/or trademarks as well as through a few internal measures. Without a proper IP strategy, you are leaving the door open for major complications down the road.
We highly suggest that you take the time early-on to consult with a licensed IP attorney to assist in the development of a strong IP strategy for your startup.
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3D Innovations is a Product Development Company – from the 3D Design to a fully functional 3D Prototype & Product.
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Navigating IP on the Path to Commercialization
Recently, patents, and the entire patent system, have been synonymous with reform. However, the truth remains that patents are a critical factor for sustainable success. Whether you are at the helm of a startup that plans on crowdfunding a product or a SME working on a new and innovative technology, securing and protecting your intellectual property (IP) rights to that invention is key to successful commercialization.
Patents, copyrights and trademarks are all forms of intellectual property. For the purpose of this piece, patents — particularly design and utility patents — will be the focus of the conversation. While all three types of IP are indeed essential for success, hardware-focused products rely heavily on patents. Before we delve into commercialization let’s quickly review what exactly a patent is.
Patent. A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office (USPTO). U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. There are three types of patents: utility, design and plant patents.
Researching Patent Options
There is nothing more time consuming and resource draining than filing a patent only to later realize that there is already a patent for a similar invention. To avoid this scenario completely, conducting a patent search is in order. Patents hinge on the fact that they are one-of-a-kind; therefore, taking the time to research current patents and confirm that an invention does not already exist, should be the very first step. The USPTO makes it possible to conduct a preliminary patent search on your own; however, it is highly recommended that you consult with a licensed patent search firm to assist with the bulk of the research. These firms have vast experience researching and are extremely knowledgeable in the classification systems.
Once the research portion has been conducted, the next common early-stage question that resonates in the mind of entrepreneurs is, Do I need to patent my design? Having a patent for your product design allows you to claim all rights to the product. Often a design patent is overlooked and underutilized since this type of patent focuses more on the exterior design, features and overall aesthetics of the product and less on functionality.
Design patents extend to what is exactly shown in the drawings, nothing more. Having high-quality professional line drawings by a CAD designer is extremely advantageous. With a design patent, you are able to use the coveted phrases, patent pending and patent issued on all marketing material, and have confidence that your invention is protected for the next fourteen years. A design patent coupled with a utility patent provides overlapping protection for both the inner workings and exterior design of your product, and is a powerful tool in your IP arsenal.
In contrast to design patents, utility patents focus solely on the inner workings of your invention, its unique functions and overall usefulness. An invention is deemed useful if it provides an identifiable benefit and is capable of use. People often refer to utility patents as “patents for invention”. According to the United States Patent and Trademark Office, ninety-percent of the patent documents issued by the USPTO in recent years have been utility patents. With a utility patent your invention will be protected for the next twenty years.
Design and utility patents each have a distinct form of protection and are often used congruently. It is best to consult with a licensed patent attorney to review the options and see what type of protection will be the most beneficial and cost-effective.
Filing for Provisional v. Non-Provisional Utility Patents
So, you have done your research and are confident that your new product has not been previously patented, now is the time to decide if you need to file for a provisional or non-provisional utility patent.
In simple terms, a provisional application is a quick and inexpensive way to begin protecting an invention while you continue its development, conduct market testing and obtain funding. A provisional patent gives you exactly one year to file a non-provisional utility patent application and move forward in the patent process. If you do not file within the one year time period, you have in essence “abandoned” the utility patent application and no longer have claim to the invention. Filing a non-provisional patent application establishes a firm filing date and starts the official examination process with the USPTO.
It is important to understand that although you file a patent application, there is no guarantee it will be issued. Examiners will review your application and look for prior patents that may conflict with what you are claiming. However, once you are granted a patent, you then have all rights to the invention and can enforce any infringement upon it.
Moving Towards Commercialization
While patents cannot provide a guarantee that your product will be successful, patents do allow you to secure all rights and claims to your invention and provide comprehensive IP protection. Patents can bolster competitive advantage and assist in the streamlining of the entire commercialization process. Without patent protection, some inventions cannot be commercialized at all because both the inventor and investors understand that the product can easily be duplicated, leaving them with no recourse if their product is copied. Taking the time to develop a high quality patent means much more in the marketplace and can ultimately determine the success or failure of a product.
*This post was written by 3D Innovations and published on the PD&D website. Here is the link to view our article there.
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