Five Things to Know About Patents Right Now

By David A. Boag, BOAG LAW, PLLC

Emerging tech companies often have two things on hand: (1) gently-used Herman Miller furniture acquired from a less-fortunate startup; and (2) unrealized and unmonetized intellectual property. With that in mind, here are five things to keep in mind as you develop that IP:

  1. Avoiding patent infringement is more important than getting your own.

A patent is a right to exclude others from doing something—making, using, selling, offering to sell, importing what’s covered in the patent. It does not give you the right to make or sell your invention.

The USPTO issued more than 374,000 patents in fiscal year 2021.  There are a lot of patents out there.  One-third of all patents ever issued are in force right now.

Patent infringement is costly and disruptive to even the biggest companies.  Better to do your due diligence, commission a patent study, and get peace of mind.

  1. First to file wins.

The inventor who wins the race to the Patent Office gets the prize. Independent creation of the same (or an obviously similar) invention happens. File early.

  1. Don’t tell anyone.

Under U.S. law, you have one year to the day from your first public disclosure of an idea to file a patent application or your rights are forever lost. Some jurisdictions are even stricter—Europe essentially requires that you file first and talk later, with no grace period.  Provisional applications can be a useful tool meeting the one-year deadline.

  1. The inventors matter.

A party qualifies as an inventor not because they are a co-founder or an investor, but because they contributed to the “conception” of the idea—the so-called flash of genius. Only actual inventors may be listed, and all inventors must be listed. Deliberately misnaming or omitting inventors can lead to an unenforceable patent.

  1. Software-based inventions can face additional hurdles. 

Section 101 of the Patent Act, which proscribes patents on “abstract” subject matter is a common hurdle for a software-based invention.  Courts and the USPTO will look for “something more” than the abstract concept itself.  Fortunately, there has been a lot of guidance on the subject in the past several years, making the path to issuance clearer.

David Boag is the founder of BOAG LAW, PLLC, where he sits on a brand new Herman Miller Aeron chair.  He can be reached at .