Uncategorized – IMMUNIS IP https://immunisip.com Patents Illustration Sat, 23 Sep 2023 13:40:55 +0000 en-US hourly 1 https://wordpress.org/?v=7.1.4 https://immunisip.com/wp-content/uploads/2023/09/cropped-favicon-1-32x32.png Uncategorized – IMMUNIS IP https://immunisip.com 32 32 CRISPR: Gold Mine https://immunisip.com/public-cat/uncategorized-cat/crispr-gold-mine/ https://immunisip.com/public-cat/uncategorized-cat/crispr-gold-mine/#respond Tue, 12 Feb 2019 07:58:15 +0000 https://immunis.digitalgyb.com/?p=1105

CRISPR: Gold Mine

The gene editing tool CRISPR-Cas9 has revolutionized research in biology. With several parties fighting for the rights to the technology’s intellectual property, how difficult is it for third parties to access this coveted technology?

The CRISPR patent dispute is quite unique. While universities usually work together to disseminate innovation and knowledge, in the CRISPR case they are fighting for a gold mine.

Usually, VCs and tech transfer offices require a clear and strong intellectual property position in a market before making any commitment to invest in a life sciences company. This has not been the case in the CRISPR field. The leading companies in the space, CRISPR Therapeutics, Editas Medicine, and Intellia Therapeutics, have a combined market capitalization of €4.4B ($5B) and their overall funding exceeds €353M ($400M) despite the ongoing patent conflict for the rights to the gene editing tool.

The business of technology transfer is rarely highly lucrative. On average, US and European universities get, respectively, 3% and 1.1% of their research budget from licensing royalties. In the case of CRISPR, there are clearly too many gold diggers for a single gold mine and it is still not clear how the law case will impact all of them at a worldwide level.

CRISPR patent dispute company funding

CRISPR patent dispute company funding

Existing patents related to CRISPR are broad, covering a variety of different types of gene edit in all sorts of target genes, but none of them give an exclusive right to its owner to exploit and commercialize the technology.

“Gene-editing technology is like an onion: the layers can be peeled back one by one,” says Christi Guerrini, Baylor College of Medicine.

Clearing a way through the CRISPR patent jungle is a difficult task. More than 1,700 patents have been filed by hundreds of different institutions, companies, and researchers. Around 100 new patent families on CRISPR are published each month.

Most patent filers did not wait for a court ruling on the CRISPR case to move forward. They wasted no time capitalizing on the huge market for this game-changing technology by licensing it to other businesses. Geography has also played a role in making the situation more complex. For example, in the well known UC Berkeley versus the Broad Institute patent case, courts in the US favored the Broad Institute whereas European courts did not.

CRISPR patent holders

The right to use CRISPR has been divided into three main fields of use. The first is for noncommercial research. The second for the development of tool kits, reagents, and equipment related to CRISPR-based gene editing. The third is for the development, sale, and use of therapeutics using CRISPR.

The main CRISPR patent owners have granted exclusive rights to “surrogate” companies. This gave exclusive control of the patents to private spin-offs that can seek investment to develop applications of CRISPR. In this highly competitive field, it is more efficient to grant rights in bulk to a single company and let them negotiate individual licenses with third parties.

For the development of human therapeutics, those companies are CRISPR Therapeutics, Intellia Therapeutics and Editas Medicine. For all other fields, the companies are ERS Genomics and Caribou Biosciences

The Broad Institute, Harvard, and MIT have called this an ‘inclusive innovation’ model. They licensed their patents to Editas Medicine, which has a right to exclusively use CRISPR technology on targets of its choosing for the development of genomic medicines. Other companies may apply to license some of its intellectual property to target genes of interest not being pursued by Editas.

For example, Editas has signed a deal with Juno Therapeutics worth up to $737M to develop three new treatments that combine Editas’ gene editing technology with Juno’s approach to fighting cancer using CAR-T cells. Editas also granted a license to Allergan for $90M limited to applications in eye disease. Editas also issued a bunch of non-exclusive licenses for R&D applications and tool development that include a flat fee and royalties on the revenue.

CRISPR patent licensing

 

In turn, Charpentier’s patents have been licensed to CRISPR Therapeutics for medical use and to ERS Genomics for all other applications. CRISPR Therapeutics has given Vertex Pharmaceuticals exclusive rights to up to six new treatments. The company has also created a joint venture with Bayer in a €275M deal.

As a direct impact of this surrogate model, there is an important risk that it will limit the dissemination and exploitation of the technology. Hopefully, the stakeholders will commit to the dissemination of these technologies, as Emmanuelle Charpentier has been advocating.

As more and more patents are granted, individual patent claims will become narrower and might have less value, which would make them harder to enforce. In this context, it is difficult to evaluate the weight of each patent for each technology and application. This situation may prompt some to rely on trade secrets to protect their assets rather than on patent protection.

Courtesy: https://labiotech.eu/features/crispr-patent-dispute-licensing/

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Apple granted a patent on “Design of Steve Jobs Theater” https://immunisip.com/public-cat/uncategorized-cat/apple-granted-a-patent-on-design-of-steve-jobs-theater/ https://immunisip.com/public-cat/uncategorized-cat/apple-granted-a-patent-on-design-of-steve-jobs-theater/#respond Wed, 29 Aug 2018 08:29:57 +0000 https://immunis.digitalgyb.com/?p=1154

Apple granted a patent on “Design of Steve Jobs Theater”

Patent Number: D827,154

Apple granted a patent on a design of Steve Jobs Theater, where the iPhone X was first introduced.

The underground auditorium can hold 1,000 attendees, and it’s equipped with hidden walls, a state-of-the-art projection system, and some very fancy chairs, all under a carbon fiber roof. The entire campus reportedly cost $5 billion to build.

But Apple is merely staking a claim on how the above-ground portion looks – it’s a circular building with clear glass walls, and in person, it’s reportedly stunning.

Apple filed for the patent in 2016, and lists four inventors, two in Hong Kong and two in San Francisco. It’s called “Building.”

Apple has increasingly tied the glass design and aesthetic of its stores and other real estate to its brand worldwide.

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Apple patent hints wireless charging between iPhones and MacBooks https://immunisip.com/public-cat/uncategorized-cat/apple-patent-hints-wireless-charging-between-iphones-and-macbooks/ https://immunisip.com/public-cat/uncategorized-cat/apple-patent-hints-wireless-charging-between-iphones-and-macbooks/#respond Fri, 27 Jul 2018 10:09:30 +0000 https://immunis.digitalgyb.com/?p=1234

Apple patent hints wireless charging between iPhones and MacBooks

A patent filed at the US Patent and Trademark Office (USPTO) by Apple has devised a way to charge future devices wirelessly between each there. Spotted by AppleInsider, the patent involves a wireless charging coil that will be able to pass current bi-directionally which will eventually be put to use to transfer power from a MacBook/iPad to an iPhone or vice versa.

The patent reveals that the wireless charging feature on these future devices will indeed be possible through “inductive charging between electronic devices”. Apple also detailed what the setup would look like showing schematics of the upcoming technology where an iPhone is kept on top of an iPad. In another sketch, a MacBook is seen housing several induction-charging hotspots within its cabinet. This mean, future Apple devices might all be flaunting wireless charging coils, something which is found only the latest generation of iPhones.

A use-case scenario as such would benefit a user rather than charge a dead iPhone from the scratch, using the idea of stacking devices together to charge through. The schematics don’t explain whether the current would pass if the devices to be charged are placed below the source device.

The patent score brownie points for Apple because charging all your portable devices by plugging in a single MacBook would be a pretty neat picture. The MacBook will then be stacked with other devices to selectively charge your iPhones and iPad. The setup will also work in cases where there’s a single power outlet or if you’re the kind of the person who keeps all their devices in a single frame.

It needs to be noted that while such a technology will benefit the whole ecosystem of Apple products, it’ll be a while for Apple to gets a functional bunch of units to make use of the same since none of their products except for their latest iPhones come with wireless charging coils. Apple will also have to work on a way to make inductive current possible through their MacBooks since all their computing devices are made of metal and metal wouldn’t allow room for wireless charging. It also remains to be seen, if Apple does finally get it to work, would it allow Android smartphone users to take advantage of wireless charging. We’ll wait till we get any closer.

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AstraZeneca Sued Dr. Reddys on Brilinta Patents https://immunisip.com/public-cat/uncategorized-cat/astrazeneca-sued-dr-reddys-on-brilinta-patents/ https://immunisip.com/public-cat/uncategorized-cat/astrazeneca-sued-dr-reddys-on-brilinta-patents/#respond Wed, 25 Jul 2018 10:30:49 +0000 https://immunis.digitalgyb.com/?p=1262

AstraZeneca Sued Dr. Reddys on Brilinta Patents

AstraZeneca has filed a lawsuit in the Delhi High Court against Indian drug maker Dr Reddy’s Laboratories to block it from launching generic versions of Brilinta, its blockbuster medicine for heart ailments.

The UK biopharmaceutical company claims potential launch of copies infringes its existing patent on the drug. Court asked Dr Reddy’s on Tuesday to file a reply to the lawsuit and will hear its arguments on July 31, said lawyers aware of developments. Until then, Dr Reddy’s cannot launch its generic version of the drug, they told ET.

Copies of the drug can be manufactured only after all the patents covering it expire, AstraZeneca’s counsel argued in court on Tuesday.

Brilinta, used to reduce chances of heart attacks or strokes by preventing blood clots in vessels, achieved blockbuster status in 2017 when it raked in over $1billion in global sales for AstraZeneca. Dr Reddy’s generic version was to be marketed as Ticaflo, according to people aware of the development. Dr Reddy’s has not been seen as an aggressivechallenger of drug patents in India

One of AstraZeneca’s key patents for Brilinta expired in India earlier this month, triggering launch opportunities for local drug makers, said people familiar with the development. However, AstraZeneca argued that one patent is still valid and effectively bars commercial launches of copies.

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Trend Of IP In India – Year 2017 https://immunisip.com/public-cat/uncategorized-cat/trend-of-ip-in-india-year-2017/ https://immunisip.com/public-cat/uncategorized-cat/trend-of-ip-in-india-year-2017/#respond Tue, 24 Jul 2018 10:36:23 +0000 https://immunis.digitalgyb.com/?p=1268

Trend Of IP In India – Year 2017

The IP transactions in India are at its peak. Numerous worldwide patent filings are recorded in the past 2017 year.

From pharma giants to the largest automobile companies, information technology to the electronic companies, all have established IP portfolio worldwide. From the recent survey it can be seen that the foreign companies have huge footprint in the Indian IP landscape.

The top applicants for patents filings in India are QUALCOMM, General motors, Phillips, LG, Samsung etc. With an increase demand in research and development globally, the foreign companies turned themselves towards need of IP protection. This trend of IP protection is not only adopted by the foreign companies but many Indian Startup and Technology Incubators have sown interest in Patent protection. Patent filings by the Indian applicants in every year are growing with a rate of about 11.6%, where as foreign applicant filing growing at a rate of about 31.7% since 2016.

The patent filed by the Indian firms lag behind substantially as compared to foreign counterparts. We believe that the trend in patent filing by the Indian companies is not a good signal to advance our Indian economy, however with over a span of time ratio of Indian filing will compete with the foreign filings. In India, Council of Scientific and Industrial Research has topped the list of holders of Indian patents.

Key Applicants - INDIA 2017

The statistical data published by WIPO disclose that the number of patent applications filed in India has witnessed a steady growth and has plateaued in the recent past. Pharmaceutical patents are ranked second with respect to the volume of applications but are still a fraction of pharmaceutical patents filed worldwide. A study of the patenting trends is important to evaluate the current process in the Industry. In terms of pharmaceuticals, it is important as the industry is focused on manufacturing life-saving drugs which are often patent protected, providing the innovator an opportunity to commercially exploit their research products without any competitor product during the life-time of the patent. The Indian companies though, are leaders in the generic drug industry, wherein they enter the market after the life time of a patent, but it still provides them an opportunity to exploit the market by adding certain unique features to the drug product and exercise monopoly over that particular feature. An economical process for making a new drug formulation, change in dosage regimen and new form of drug delivery are all examples of patents that bestows commercial advantage to a patent holder ever after the expiry of the innovator patent.

Indian Patent Office act as International Searching Authority (ISA)

When an international patent application is made through Patent Cooperation Treaty (PCT), International searches are carried out by an International Searching Authority or International Preliminary Examination Authority as the case may be, by either a National Office or an intergovernmental organization designated by the PCT for this purpose. The search includes establishing of documentary search reports on prior arts with respect to inventions which are the subject of applications and other related functions. The International Searching Authority makes a list of prior art documents which they consider destroys the patentability of the invention claimed in the PCT International application. At present, there are 22 International Searching Authorities designated by the PCT which carries out searches for PCT International application. An agreement between the Indian Patent Office and the International Bureau of the World Intellectual Property Organization in relation to functioning of the Indian Patent Office as an International Searching Authority and an International Preliminary Examination Authority came into force on October 15, 2013. Therefore, the Indian Patent Office acts as a receiving office of PCT International applications.

Indian Patent Office growing fast as an International Searching Authority

In 2017, Indian Patent Office has occupied a place in the top 10 International Searching Authorities among the 22 International Searching Authorities in terms of receiving request for International searches for PCT International applications. In a short period of four years the Indian Patent Office as an International Searching Authority has received 3150 request for International searches and it has examined 2904 out of them. These requests have been from all over the world and not only Indian applicants as it is not mandatory for Indian applicants to select Indian Patent Office as their Searching Authority. This is a great achievement by the Indian Patent Office in a very short period of time.

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Philips wins patent battle in Delhi HC https://immunisip.com/public-cat/uncategorized-cat/philips-wins-patent-battle-in-delhi-hc/ https://immunisip.com/public-cat/uncategorized-cat/philips-wins-patent-battle-in-delhi-hc/#respond Thu, 19 Jul 2018 10:46:03 +0000 https://immunis.digitalgyb.com/?p=1275

Philips wins patent battle in Delhi HC

Dutch electronic major Philips has won a major legal battle here with the Delhi High Court ruling that it has a patent right over a channel decoding technology used for DVD video playback function in a DVD player which was infringed upon by two domestic manufacturers.

The high court decreed the two lawsuits filed by Koninklijke Philips Electronics NV against the Delhi-based firms which claimed that they were engaged in manufacture, assembly and sale of DVD video players under various brands.

Philips, which was represented by advocate Pravin Anand, claimed that it was the registered proprietor of IN-184753 which concerns ‘channel modulation’ which involves a coding step that is performed directly before the storage of the data. This coding ensures that the data to be stored on the disc has a particularly suitable structure for storage.

Justice Mukta Gupta said that Rajesh Bansal and K K Bansal, owners of Manglam Technology and Bhagirathi Electronics respectively, have been infringing upon the Philips suit patent which was an essential standard patent in respect of DVD video player.

Standard essential patents are technologies which are considered standards to be uniformly accepted and implemented across various countries in order to ensure uniformity.

The high court, however, said that no injunction can be granted to the company for the reason that its suit patent expired on February 12, 2015.

“The two suits are decreed in favour of the plaintiff (Philip) and against the defendants holding that the said defendants have been infringing the suit patent IN-184753 which is an essential standard patent in respect of DVD video player, however, no injunction can be granted to the plaintiff for the reason the plaintiff’s suit patent expired on February 12, 2015.

“The plaintiff is also found entitled to a decree for recovery from Rajesh Bansal and K K Bansal of royalty payable at FRAND rates, that is, USD 3.175 up to May 7, 2010 and thereafter USD 1.90 up to February 15, 2015 from the date of institution of the suits with interest at the rate of 10 per cent per annum from the end of the month for which royalty is due till the date of payment per video player manufactured/ sold. A decree of punitive damages to the tune of Rs 5 lakh is also passed in favour of plaintiff and against Rajesh Bansal,” the judge said.

FRAND is a legal term that stands for “Fair, Reasonable, and Non-Discriminatory” and is typically used to describe patent licensing terms.

The court also ordered inquiry into the number of video player manufactured or sold by Rajesh Bansal and K K Bansal respectively and appointed ADJ (Retd) S M Chopra as the local commissioner to report on the issue.

“The plaintiff shall be entitled to recover the amount so found due and less the amount deposited in this court with interest accrued thereon, on filing the report with the execution petition. The objection if any, to the report of the local commissioner be also filed in execution. The fee of the local commissioner is fixed at Rs 1 lakh to be borne by the plaintiff,” the bench said after accepting the argument of Anand and advocate Vaishali Mittal.

Philips Electronics had filed two suits which concerned with Indian Patent No. 184753 on Channel (De)coding technology used for DVD Video Playback function in a DVD video player.

The company had sought permanent injunction and directions to the local manufacturers to provide “complete details, delivery, rendition of accounts, damages, etc”.

The manufacturers, however, had said that the major components of the DVD players were procured by the defendants from authorised licensees like Sony, MediaTek, Sanyo, ST Micro etc from China after due payment of all the taxes and custom duties.

The local manufacturers claimed that they were not indulging in infringement of the Philips patent as they purchased the products from the duly authorised licensees of the company.

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IBM looks to sue Groupon for $167m over alleged patent infringement https://immunisip.com/public-cat/uncategorized-cat/ibm-looks-to-sue-groupon-for-167m-over-alleged-patent-infringement/ https://immunisip.com/public-cat/uncategorized-cat/ibm-looks-to-sue-groupon-for-167m-over-alleged-patent-infringement/#respond Tue, 17 Jul 2018 10:54:52 +0000 https://immunis.digitalgyb.com/?p=1281

IBM looks to sue Groupon for $167m over alleged patent infringement

IBM is suing coupons site Groupon for $167m over allegations the company used patented technology without permission.

IT giant IBM argues that Groupon infringed its patent by using e-commerce technology which it had licensed to other companies including Amazon, Facebook and Google parent firm Alphabet for between $20m and $50m each.

Lawyer John Desmarais, representing IBM, told a federal court In Delaware: “Most big companies have taken licenses to these patents. Groupon has not. The new kid on the block refuses to take responsibility for using these inventions.”

However, Groupon say IBM is wrongly interpreting the scope of its patents and claiming ownership over basic technology which is vital for the Internet to function.

The trial is expected to last two weeks as IBM executives go into detail about the company’s licensing agreements with the likes of Amazon and Google.

IBM sued Groupon back in 2016 over the company infringing four patents.

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Walmart gains patent to eavesdrop on shoppers and employees in stores https://immunisip.com/public-cat/uncategorized-cat/walmart-gains-patent-to-eavesdrop-on-shoppers-and-employees-in-stores/ https://immunisip.com/public-cat/uncategorized-cat/walmart-gains-patent-to-eavesdrop-on-shoppers-and-employees-in-stores/#respond Mon, 16 Jul 2018 10:59:39 +0000 https://immunis.digitalgyb.com/?p=1287

Walmart gains patent to eavesdrop on shoppers and employees in stores

The system would pick up scanner beeps, rustling bags and conversations.

Walmart this week was awarded a US patent for a new listening system for its stores that could raise serious privacy concerns from its shoppers and workers.

According to the filing, the system would capture a variety of sounds in the store to figure out employees’ performance and effectiveness at checkout.

For instance, the system can be used to capture beeps produced by a scanner and the rustling of bags at checkout to find out the number of items in a transaction or even the number of bags used.

More alarmingly, the patent mentions that the system could be used to listen to guests’ conversations to determine the lengths of checkout lines.

“Additionally, the sound sensors can capture audio of conversations between guests and an employee stationed at the terminal,” the patent states. “The system can process the audio of the conversation to determine whether the employee stationed at the terminal is greeting guests.”

The new concept hasn’t been implemented in Walmart stores and Walmart didn’t say whether it ever will be.

The patent comes at a time of heightened concern about user privacy and data, following Facebook’s Cambridge Analytica scandal. Shoppers worried about being recorded in stores may opt to avoid those locations or perhaps shop online instead.

The patent also points to efforts by retailers, including Walmart, to upgrade their technology to keep up with Amazon, the leader in e-commerce. Walmart is already developing a handful of new technologies for its stores, including shelf-scanning robots.

“This patent is a concept that would help us gather metrics and improve the checkout process by listening to sounds produced by the bags, carts and cash registers and not intended for any other use,” the company said in a statement. “We file patents frequently but that doesn’t mean the patents will actually be implemented. We’re always thinking about new concepts and ways that will help us further enhance how we serve customers.”

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Patent challenge to hepatitis-C medicines https://immunisip.com/public-cat/uncategorized-cat/patent-challenge-to-hepatitis-c-medicines/ https://immunisip.com/public-cat/uncategorized-cat/patent-challenge-to-hepatitis-c-medicines/#respond Thu, 12 Jul 2018 11:09:32 +0000 https://immunis.digitalgyb.com/?p=1299

Patent challenge to hepatitis-C medicines

Patients’ rights advocates in India on Tuesday filed two oppositions in the Indian patent office, challenging patent claims by the US pharmaceutical company Gilead Sciences for its medicines sofosbuvir and velpatasvir, used to treat hepatitis-C infections.

The oppositions filed by the Delhi Network of Positive People (DNP+) challenge Gilead’s patent applications for the tablet formulations of the fixed dose combination of sofosbuvir and velpatasvir and a new form of velpatasvir.

The opposition is based on provisions in India’s patent laws that can deny or restrict patents on products that lack novelty, inventive steps and enhanced therapeutic efficacy, the DNP+ claimed in a media release.

The DNP+ said Gilead had launched sofosbuvir/velpatasvir in the US in 2016 at over $74,000 for a 12-week regimen. Velpatasvir is a key medicine used in combination with sofosbuvir in the oral treatment of all six major genotypes of the hepatitis-C virus, it said.

“Access to affordable generic sources of this medicine and its combination with sofosbuvir are critical for all countries with a high burden of people living with hepatitis-C,” the network said.

India’s generic drug-makers can manufacture the medicines if the patents are denied.

The international humanitarian agency Medicins Sans Frontieres (MSF) has welcomed the patent oppositions filed by DNP+, saying India plays a critical role in supplying developing countries with affordable, quality life-saving generic medicines.

“Through these patent oppositions, DNP+ aims to prevent unmerited patent applications from being granted and encourage open competition on the combination of sofosbuvir and velpatasvir after the basic compound patents have expired or are revoked in countries, excluded from Gilead’s licence agreements,” the MSF said.

Spokespersons from Gilead Sciences were not immediately available for comment on the oppositions filed by the DNP+.

Licensing pacts between Gilead and Indian generic companies enable access to lower-cost generic drugs from India to least developed countries and an increasing number of middle-income countries.

However, since South America, Russia and eastern European countries are not included in most of these pacts, their governments continue to face barriers in the import of raw materials and formulations of generic drugs, the MSF said.

In the coming decade, as the primary patents on the two drugs begin to expire in different countries, particularly in high- and middle-income countries not covered by licensing pacts, Indian companies may choose to terminate their geographically restricted pacts early and supply generics to those markets.

However, the MSF said, the secondary patent claims filed by Gilead, if granted in India, will prove to be a critical barrier to supplying affordable drugs to a number of those countries.

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What Every Startup Should Know Before Filing A Patent https://immunisip.com/public-cat/uncategorized-cat/what-every-startup-should-know-before-filing-a-patent/ https://immunisip.com/public-cat/uncategorized-cat/what-every-startup-should-know-before-filing-a-patent/#respond Thu, 12 Jul 2018 11:06:01 +0000 https://immunis.digitalgyb.com/?p=1293

What Every Startup Should Know Before Filing A Patent

Anyone who has led a technology company or been in the startup scene will tell you that most startups share a number of challenges. Key among them is the need to prove to investors and potential customers that what the company offers is unique and that barriers to entry exist that preclude anyone else from encroaching on their idea or market. As a co-founder and CTO, I have been involved in numerous pitches and discussions, both with investors and with customers, where we have had to demonstrate how our technology, approach and business model are unique. Based on this experience, I have come to appreciate the value of a patent.

If you go the patent route, it’s important to do it properly from the outset. Filing a poor patent, even a provisional one (more on this later), can end up costing so much that sometimes it’s worse than filing no patent at all.

Jumping in

If you’ve invented a solution to a problem that differentiates you from the competition or provides a competitive advantage, seriously consider filing a patent application before making your solution available to the public. In many countries, public disclosure prior to filing a patent application can make it more difficult to obtain or enforce a patent.

There are three main types of patent applications: the provisional, the Patent Cooperation Treaty (PCT) and filing a full patent application directly in the country of your choice (usually the U.S., but often in Europe or China). Filing any of these applications allows you to mark your product as patent pending. A provisional application never gets examined and never matures into a patent, but it acts as a placeholder and gives you a one-year grace period to file a PCT or a full patent application that will date back to when you filed the provisional.

Provisional applications are generally recommended for technology that is still under development and technology that a company wants to test commercially before investing significant resources in obtaining patent protection. Most startups file a provisional application first. It testifies to the fact that your company filed the specific patent for a certain technology, which is critical in light of the U.S. patent system switching from a first-to-invent to a first-inventor-to-file system in 2013. While the requirements for filing a provisional patent are less stringent than those for a full patent, it’s best to file as robust an application as possible. If you do decide to file a provisional application, do it as early as possible so you avoid being locked out by someone else who files first.

Again, this very much depends on the stage of your company, your goals and how developed your technology is. At my company, we realized that we could skip the provisional step because we knew the exact details of our algorithm. We were ready for the full patent and decided to file it in the U.S. even though we founded the company in Israel. We chose the U.S. specifically, as each country has its own unique filing system, and this was where our market was concentrated initially. It also gave us time to roll out our patents to other countries while we focused on the U.S. market.

Do Your Due Diligence

If you have an idea, search the patent database to make sure it’s original. A key step in filing patents is searching for “prior art” or “any evidence that your invention is already known,” noting that: “prior art does not need to exist physically or be commercially available.” It can be so broad as to mean that someone else has described, shown or built something that contains technology similar to your own.

I recommend doing this search yourself, or at least starting it (professional companies, including law firms, offer this as a service). There are compelling business reasons for this: it gives you a great feel for what else is out there, the state of the market, cutting-edge technology and potential competitors. A great place to start is Google Patents, but just remember that provisional applications won’t show up until they are filed as full patent applications and then published, which usually takes about 18 months from the day the provisional was filed. Just because you can’t find it doesn’t mean it doesn’t exist, unfortunately.

To Self-File Or Not To Self-File?

As mentioned before, the resources required to file a patent (time, cash, energy) are significant. You will be tempted to file your application yourself or with nonprofessional help, particularly if it is a provisional application.

While this is technically possible, I would generally recommend against it. Every situation is unique and a lot depends on what you want to achieve with your patent, but overall I don’t think most companies have the bandwidth to dedicate the time and expertise needed to produce a thorough patent that will provide benefit in the long-run. A solid patent has to be defensible. It needs to be well written from the outset. Don’t skimp on time or money to ensure a good, strong patent.

Pivots Happen

In a fast-moving business environment, with major pivots and new features implemented on a regular basis, try to ensure that your patent filing is kept up to date to take these new developments into account and to keep yourself protected.

Patents take time. On average, it takes more than two years for a patent to be granted by the U.S. Patent Office. A lot can happen from when you first file to when you receive your patent, so it’s important not to think that because you’ve filed, you’re covered. Any weaknesses or gaps will be exploited if the defensibility of your patent ever goes to court.

Get in early, choose the best kind of patent for your needs, do your research, keep the patent updated and don’t skimp on time or money. A good patent is worth it.

This post does not constitute legal advice and consulting a lawyer is recommended.

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