About inventions, patents and mobius rake
Inventors and entrepreneurs, as a rule, are quite knowledgeable about the importance of protecting intellectual property in an innovative startup project. Few would argue with the need for early patenting of inventions and utility models on which the products or services of such a start-up project are based. However, the path of maximum savings in patenting, which some startups choose at the seed stage, a startup or even early growth, inevitably leads to disappointing results at later stages.
It is clear that the inventor wants to save his own money or the first venture capital investments that have been hard-won and direct them to improve the product, and not on the “pieces of paper”. The services of patent specialists are expensive and, relying on the traditionally Russian “maybe”, “probably” and “somehow”, our inventor decides that he himself will cope well with patenting his inventions. What do you think will cope? Of course, cope! Obtaining a patent for an invention in Russia is easy, and a utility model is easier than ever. However, let's look ahead and see how our inventor is doing in a couple of years.
Hard work without weekends and vacations has borne fruit, there is a great team, products are already being manufactured in small batches and have a steady demand in the market, and even a patent has been received ... It’s time to attract serious investments and go into the expansion stage. And here our inventor is sent to the direct investment fund, proudly carrying on his outstretched hands a business plan of conquering the world market and his still warm patent. But for some reason the clerk in the fund, indifferently twisting the patent in his hands and looking through other papers, looks somewhere through our inventor and reports in a colorless voice that the business model is, of course, good, and the products are not bad, but the fund does not consider it appropriate to invest in this project.
The inventor slams the door and goes to another foundation. They are definitely not sitting there like that [censored] and will certainly appreciate his child. However, the story is repeated in another fund. And in the third. And in the fifth ... The inventor is in shock. He is on the verge of a nervous breakdown. He does not understand anything until someone condescends and explains the poor thing that his patent is cheaper than the paper on which he printed: the formula does not protect anything and it is easy to bypass this patent, it is even easier to cancel, the international application is not filed and the deadline for filing skipped ... And without a reliable cover in the line of intellectual property, no investor, whether a fund or a bank, will give money. So, dear!
')
Let's go back to the early stage of a startup, when it’s time to start patenting inventions, given the length of the process - about two to three years in Russia and from three to five years in Europe and the USA. The drawing up of the first application should be preceded by a pre-project survey — an inventory of potentially patentable intellectual results, identifying the technical result associated with them and the distinctive features that ensure the achievement of this technical result. This is usually followed by a preliminary patent search and analysis for the patentability of existing and prospective technical solutions and the risks of infringing patent rights. Then comes the drafting of one or more patent applications, additional patent search, clarification of the application based on the results of additional patent search, its verification and approval by the concerned development departments of technical solutions, verification by experts on international patenting, final approval and only then filing the application in the first country of patenting . Then there will be a translation of the application into the international phase, and the translation of the international application into the national phase in selected countries of foreign patenting, and correspondence with patent offices, and also synchronization of the scope of legal protection in different countries, and also overcoming objections from third parties, and more ... In general long way to the golden cellars.
It is clear that the complexity of the process of preparing a patent application is significant and its cost is high. In the United States, the compilation of a good application that claims a place in the core of the patent portfolio costs from 30,000 to 50,000 dollars. In Russia, prices are still lower, but also not small - from 100,000 to 300,000 rubles. Savings are possible, but fraught. However, against the background of the cost of foreign patenting (about $ 200,000 - $ 300,000 for 30 countries in the first ten years for each patent application), the cost of preparing the original application no longer looks shocking. Moreover, it becomes clear that at the preparatory stage it is better not to save, so as not to jeopardize subsequent investments.
To specialists. Specialists can be found among patent attorneys, among patent specialists and among patent examiners. Look for patent specialists with an engineering background in your technical field. If you manage to get a strong patent specialist in the state, consider that you are very lucky, because they are few. Patent attorneys and experts usually work under a contract. It is cheaper than taking them to the state, but it should be understood that they do not serve you alone. In addition, patent attorneys serve foreign applicants, and on the international market prices are higher and priority on foreign orders will naturally be higher. Avoid fixed price contractors. As a rule, serious specialists work on an hourly basis. You can also contact the patent office or agency. The advantage of this solution is higher reliability, since several specialists work in such a company and there is someone to replace the retired fighter. The downside is in higher overheads, as well as in the presence of the image component of the price, which in well-known companies can be quite significant. In addition, be prepared that they will charge you at the rate of a patent attorney, and the work will most likely be done by an assistant who has a completely different qualification. Finally, assign an intellectual property manager to your company. There is enough managerial work for him, for managing the patenting of inventions is far from the only thing he will have to do: there are still trademarks, industrial designs, computer programs and databases, IC topologies, copyright objects, design and technological documentation, know-how, domain names that also need attention.
So that the protection of your intellectual property is adequate to its value and potential threats. And so that the “patent rakes” do not become for you endless “Moebius rakes”.
Is saving bad?
It is clear that the inventor wants to save his own money or the first venture capital investments that have been hard-won and direct them to improve the product, and not on the “pieces of paper”. The services of patent specialists are expensive and, relying on the traditionally Russian “maybe”, “probably” and “somehow”, our inventor decides that he himself will cope well with patenting his inventions. What do you think will cope? Of course, cope! Obtaining a patent for an invention in Russia is easy, and a utility model is easier than ever. However, let's look ahead and see how our inventor is doing in a couple of years.
Is success inevitable?
Hard work without weekends and vacations has borne fruit, there is a great team, products are already being manufactured in small batches and have a steady demand in the market, and even a patent has been received ... It’s time to attract serious investments and go into the expansion stage. And here our inventor is sent to the direct investment fund, proudly carrying on his outstretched hands a business plan of conquering the world market and his still warm patent. But for some reason the clerk in the fund, indifferently twisting the patent in his hands and looking through other papers, looks somewhere through our inventor and reports in a colorless voice that the business model is, of course, good, and the products are not bad, but the fund does not consider it appropriate to invest in this project.
What a confusion ...
The inventor slams the door and goes to another foundation. They are definitely not sitting there like that [censored] and will certainly appreciate his child. However, the story is repeated in another fund. And in the third. And in the fifth ... The inventor is in shock. He is on the verge of a nervous breakdown. He does not understand anything until someone condescends and explains the poor thing that his patent is cheaper than the paper on which he printed: the formula does not protect anything and it is easy to bypass this patent, it is even easier to cancel, the international application is not filed and the deadline for filing skipped ... And without a reliable cover in the line of intellectual property, no investor, whether a fund or a bank, will give money. So, dear!
')
So how should it be?
Let's go back to the early stage of a startup, when it’s time to start patenting inventions, given the length of the process - about two to three years in Russia and from three to five years in Europe and the USA. The drawing up of the first application should be preceded by a pre-project survey — an inventory of potentially patentable intellectual results, identifying the technical result associated with them and the distinctive features that ensure the achievement of this technical result. This is usually followed by a preliminary patent search and analysis for the patentability of existing and prospective technical solutions and the risks of infringing patent rights. Then comes the drafting of one or more patent applications, additional patent search, clarification of the application based on the results of additional patent search, its verification and approval by the concerned development departments of technical solutions, verification by experts on international patenting, final approval and only then filing the application in the first country of patenting . Then there will be a translation of the application into the international phase, and the translation of the international application into the national phase in selected countries of foreign patenting, and correspondence with patent offices, and also synchronization of the scope of legal protection in different countries, and also overcoming objections from third parties, and more ... In general long way to the golden cellars.
How much is a fish?
It is clear that the complexity of the process of preparing a patent application is significant and its cost is high. In the United States, the compilation of a good application that claims a place in the core of the patent portfolio costs from 30,000 to 50,000 dollars. In Russia, prices are still lower, but also not small - from 100,000 to 300,000 rubles. Savings are possible, but fraught. However, against the background of the cost of foreign patenting (about $ 200,000 - $ 300,000 for 30 countries in the first ten years for each patent application), the cost of preparing the original application no longer looks shocking. Moreover, it becomes clear that at the preparatory stage it is better not to save, so as not to jeopardize subsequent investments.
To whom to go?
To specialists. Specialists can be found among patent attorneys, among patent specialists and among patent examiners. Look for patent specialists with an engineering background in your technical field. If you manage to get a strong patent specialist in the state, consider that you are very lucky, because they are few. Patent attorneys and experts usually work under a contract. It is cheaper than taking them to the state, but it should be understood that they do not serve you alone. In addition, patent attorneys serve foreign applicants, and on the international market prices are higher and priority on foreign orders will naturally be higher. Avoid fixed price contractors. As a rule, serious specialists work on an hourly basis. You can also contact the patent office or agency. The advantage of this solution is higher reliability, since several specialists work in such a company and there is someone to replace the retired fighter. The downside is in higher overheads, as well as in the presence of the image component of the price, which in well-known companies can be quite significant. In addition, be prepared that they will charge you at the rate of a patent attorney, and the work will most likely be done by an assistant who has a completely different qualification. Finally, assign an intellectual property manager to your company. There is enough managerial work for him, for managing the patenting of inventions is far from the only thing he will have to do: there are still trademarks, industrial designs, computer programs and databases, IC topologies, copyright objects, design and technological documentation, know-how, domain names that also need attention.
What to wish for?
So that the protection of your intellectual property is adequate to its value and potential threats. And so that the “patent rakes” do not become for you endless “Moebius rakes”.
Source: https://habr.com/ru/post/288386/
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