Seeking protection: global intellectual property protection for startups--a mixture of filing approaches.

Author:Frodsham, Michael J.

Accessing the patent system in the United States, much less international markets, intimidates even the most seasoned companies, and especially startups with a limited IP budget. One reason is that patent prosecution costs--the costs incurred to get a filed case ready for issuance--are unpredictable and can range anywhere from one to two times the cost of the initial filing. Thus, a client spending $6,000-$8,000 (approximate national average) on a patent application might expect to pay the same if not double that in prosecution fees over a three to four year period until registration. This metric tends to hold for each additional country the client selects for protection. As such, the cumulative costs of international protection can be particularly daunting, especially where a product has not yet had its true value tested. (In reality, a product's true value is often not well understood until at least a year or two after filing).

One way to significantly reduce the costs and gain useful protection in international markets is through a mixture of traditional and non-traditional patent filing mechanisms, such as with provisional applications, design applications and utility model applications. A provisional application is essentially an informal version of a regular utility patent application that can usually be prepared more quickly and at lower cost (half or less), and acts as a holding case that enables the client one year to make a decision about whether to file a regular utility patent application and still keep the same filing date. Importantly, provisional applications do not register as enforceable patents. Thus, within one year a client must file a regular application that claims priority to the provisional application, or lose the filing provisional date. A design application typically registers as a patent at half (or less) of the cost of filing a non-provisional utility application, but only protects the look and feel of an article, not its function.

A utility model application (only available outside the United States) also registers as a patent, and covers articles and functions, like a U.S. utility patent application, but typically cannot be used to cover method claims (which can eliminate software claims) or product-by-process claims and also is registered for a shorter amount of time. Unlike a regular non-provisional utility application, a utility model application usually registers with little or no prosecution costs...

To continue reading