Conversation with a Patent Attorney near Boulder, Colorado

Inventor Conversation with Patent Attorney near Boulder, Colorado: Navigating the Path from Provisional Patent Application to Development

Have you ever had an idea for a new software product or mobile phone app, and wondered if it’s an invention that can be patented? We sat down with a Patent Attorney near Boulder, Colorado recently. Here’s what he had to say.

Inventor: Once I file my provisional patent application for my mobile device app, the next step is to find a developer to start working on it. Is there anything else I should be working on or be aware of?

Mark Trenner: Yes, absolutely. Once you file your provisional patent application, you will get an e-filing acknowledgement the same day, and then an official Filing Receipt about 2-3 weeks later. At this point, you have patent pending status, and you can start showing your idea, seeking investors, and working with developers.

If you’re working with developers, you’ll want to make sure you have a solid agreement in place that gives you the copyright to the code and any patent rights for new features the developer may add. This agreement is crucial because it ensures that you maintain control over your invention and its future developments.

Inventor: What are some key elements that should be included in this agreement with developers?

Mark Trenner: The agreement should clearly outline ownership rights, ensuring that any code or features developed by the developer are assigned to you. This can include clauses that specify that all work produced by the developer is considered “work made for hire” and, as such, is owned by you. Additionally, the agreement should cover confidentiality, ensuring that the developer is bound to keep your idea and any related information secret.

It’s also wise to include terms for dispute resolution, payment schedules, and milestones to keep the project on track. Having a well-drafted agreement can save you from potential legal disputes down the road and ensure that you retain all rights to your invention.

Inventor: Are there other steps I should be aware of during this phase?

Mark Trenner: Yes, beyond finding a developer and securing your agreement, you should be focusing on building a strong business plan. This includes identifying your target market, planning your marketing strategy, and understanding your competitors. You should also be prepared to protect your intellectual property further by considering international patents if you plan to market your app globally.

It’s also important to document every step of your development process and maintain thorough records. This can be invaluable not only for your own project management but also in case of any legal scrutiny over your patent or intellectual property rights in the future.

Inventor: How important is it to seek investor funding at this stage, and what should I keep in mind when doing so?

Mark Trenner: Seeking investor funding can be very important, as it provides the necessary capital to move forward with development and marketing. When seeking funding, it’s crucial to present a clear, compelling pitch that showcases the uniqueness and potential profitability of your app. Be prepared to discuss your business plan, market analysis, and how you plan to protect and leverage your intellectual property.

Investors will be interested in knowing how their investment will be used and what kind of returns they can expect. Having your patent pending status in place can provide additional assurance to investors about the viability and protection of your idea.

Inventor: What are common pitfalls inventors face during this process, and how can they be avoided?

Mark Trenner: One common pitfall is not having a solid agreement with developers or other collaborators, which can lead to disputes over ownership and rights. Another is underestimating the importance of a comprehensive business plan and market research. Additionally, failing to secure adequate funding or not protecting your intellectual property adequately can hinder your progress.

To avoid these pitfalls, it’s essential to be thorough in your planning and legal preparations. Working with experienced professionals, such as patent attorneys and business advisors, can provide you with the guidance needed to navigate these challenges successfully.

Inventor: Thank you, Mark, for your insightful advice. Any final thoughts for aspiring inventors?

Mark Trenner: My pleasure. I’d just like to emphasize that the journey from idea to market can be complex, but with careful planning, thorough legal protection, and a clear business strategy, you can significantly increase your chances of success. Always be proactive in protecting your intellectual property and stay informed about the latest developments in your industry.

Inventor: Thank you again, Mark. This has been incredibly helpful.

Mark Trenner: You’re welcome. Best of luck with your invention!

Navigating the process of bringing an invention to life involves many steps and considerations. Working with experienced professionals, including a patent attorney near you, to secure patent rights to your invention and increase your chances of success in a competitive market.

Understanding Patent Applications as Legal Title to Your Invention

Understanding Patent Applications as Legal Title to Your Invention

When will the patent issue? I often get this question from inventor clients of mine. But the answer is not as crucial as you might think. A patent is a significant business asset, comparable to the title of your house or car. You don’t hold the title to your house merely to sue trespassers. Instead, you can apply for loans, use it as collateral, live in it, or sell or rent it. Similarly, a patent application serves as legal title to your invention. It adds considerable value to your business during valuation.

Once you file your patent application, it enters the examination phase. This typically takes 12-18 months, but it can take longer depending on the examiner’s workload and backlog. During this period, the examiner will review the claims you have made in your application.

If the examiner allows all your claims, they will issue a Notice of Allowance. You then need to pay the necessary fees, and the patent will be issued sometime after that. However, it is more common to receive a first action rejection. This does not mean you cannot obtain a patent for your invention. It usually requires a phone interview with the examiner to discuss a path forward, followed by filing a formal response to address the rejections. It’s important to note that additional fees will apply in either scenario.

There is no guarantee that the examiner will allow a patent to issue. The outcome depends on what the examiner finds that is similar to your invention and whether they believe your invention is patentable.

The most crucial aspect to remember is that your patent application serves as legal title to your invention. This is similar to the legal title to your home or car. With this title, you can license or sell your invention without waiting for the patent to issue. This means you don’t have to delay your business opportunities.

An issued patent mainly provides the right to sue someone for infringement in court. However, there are many business opportunities beyond suing that become available once you hold the title to your invention.

To summarize, a patent application is a significant business asset. It serves as legal title to your invention, much like the title to your house or car. This title allows you to license, sell, or use your invention as collateral. The examination process can be lengthy, but the primary value lies in holding the title, not just the issued patent. So, don’t wait. Leverage your patent application to explore various business opportunities and protect your innovative ideas effectively.

Key Points to Remember:

  • A patent is a business asset, comparable to the title of a house or car.
  • The examination phase takes 12-18 months, sometimes longer.
  • If the examiner allows all claims, a Notice of Allowance is issued.
  • First action rejections are common, requiring further action.
  • The patent application is the legal title to your invention.
  • You can license or sell your invention with the application, without waiting for the patent to issue.
  • The issued patent mainly provides the right to sue for infringement.
  • Holding the title allows for various business opportunities beyond litigation.

Navigating the patent process can be complex, but understanding the significance of your patent application as legal title can help you maximize the value of your invention.

Patent Attorney near Golden Colorado Saved the Day

Cautionary Tale – This Inventor Almost Lost All Rights To Their Invention

Innovation has never been more accessible. Thanks to social media, inventors can showcase their breakthroughs to a global audience with just a few clicks. But the ease of sharing comes with its own set of pitfalls, especially in the realm of intellectual property. Today, I want to share the inspiring story of how Mark Trenner, a well-respected patent lawyer near Golden, Colorado, helped Mary protect her invention just in the nick of time.

The Journey Begins – An Invention Is Born

Mary, an inventive spirit with a knack for problem-solving, had been working on a revolutionary home gadget. Her invention was something she believed could make life easier for countless households. Excited by the potential impact of her creation, Mary started sharing her innovation journey on Instagram. She posted videos demonstrating how her gadget worked and shared snippets of her development process. The response was overwhelming. Her followers were intrigued and supportive, and some even reached out with suggestions and words of encouragement.

The Realization – Inventions need to be Protected

Months went by, and Mary’s Instagram account grew in popularity. However, it wasn’t until a fellow inventor commented on one of her posts, asking if she had filed for a patent, that Mary realized she might be in over her head. Panicked, she started researching patent laws and quickly learned about the critical one-year bar date. According to U.S. patent law, an inventor must file a patent application with a patent attorney near Golden, Colorado, within one year of publicly disclosing their invention; otherwise, they lose the right to patent it.

Mary checked the dates and discovered she was perilously close to missing the deadline. She needed professional help and fast. That’s when she found Mark Trenner, a seasoned patent attorney near Golden, Colorado. With a reputation for being thorough, efficient, and client-focused, Mark was Mary’s last hope.

The First Meeting

Mary reached out to Mark and explained her situation. Understanding the urgency, Mark scheduled an initial consultation immediately. Mary arrived at his office, her anxiety palpable. Mark greeted her with a reassuring smile and a warm handshake, instantly putting her at ease. They sat down, and Mary began explaining her invention in detail. Mark listened intently, asking insightful questions to ensure he fully understood the nuances of her creation.

Mark explained that time was of the essence. With the one-year bar date looming, they had to act quickly. He reassured Mary that he had handled many urgent cases before and was confident they could get everything in order before the deadline.

The Race Against Time – Don’t Let Your Invention Become Public Domain

Mark and his team sprang into action. They meticulously reviewed all of Mary’s social media posts to gather detailed information about her invention’s public disclosures. Mark dove deep into understanding every aspect of the gadget, from its technical specifications to its potential market impact. He worked tirelessly, often burning the midnight oil, to draft a comprehensive provisional patent application.

Mary was actively involved throughout the process. She provided additional information, answered Mark’s questions, and reviewed drafts of the application. Despite the tight timeline, Mark’s expertise and dedication ensured that no detail was overlooked. He also took the time to educate Mary about the patent process, explaining each step and its significance.

Victory – Filing a Provisional Patent Application

Finally, after days of intense work, the provisional patent application was ready. Mark filed it just days before the one-year bar date. When he called Mary to share the good news, she was overjoyed and relieved. They had done it. Her invention was now protected, and she could continue sharing her innovation journey without fear of losing her intellectual property rights.

Reflection

Looking back, Mary couldn’t help but marvel at how everything had come together. She realized the importance of seeking professional help and the value of having a knowledgeable and dedicated patent attorney like Mark Trenner by her side. Mark’s expertise had not only saved her invention but had also given her the confidence to pursue her dreams with renewed vigor.

Find a qualified patent attorney near Golden, Colorado

Mary’s story is a powerful reminder for inventors everywhere. While sharing your innovation with the world is exciting, protecting your intellectual property is crucial. If you find yourself in a similar situation, don’t hesitate to reach out to a qualified patent attorney near Golden, Colorado. Mark Trenner is a prime example of how a skilled patent lawyer can make all the difference. Don’t let the excitement of your invention lead to missed opportunities. Protect your ideas and ensure your hard work gets the recognition it deserves.