Jeffrey Schox: When to File a Patent Application?

Next section that we're going to talk about is when to actually file a patent application. I want you to think about the kind of technology development curve. And in the early days, you have this idea and you start moving down the path of actually forming a company, you raise a little bit of seed money, you actually build the thing, and you now have some kind of beta that's potentially out there in the world. And then at some point you're ready for general availability, designed for manufacturability. Somewhere in the A, we're actually going to make this thing and we're going to sell a lot of them in this kind of very simplified technology development curve. The best time to file a full patent application is this kind of second hump. When you've had a couple people on your team working on this problem for a while and you're solving the problems that your solution had actually created, and you've now gone further than anyone else. This right here gives you a little bit more depth. This right here gives you more words. This now actually has a full patent application that now when you go to the patent office, you have a higher level of confidence that you're going to actually come away with something. In an ideal world, you've actually filed a provisional application 12 months before this. Because it's great to be able to go to the patent office with more words, more depth, more specificity, but it's also great to get to the patent office first. We're in a first to file patent system. And so if you're there first, you now can kind of discount all the folks that come after you. And so when you're actually thinking about what's the best way to get something through, get there early and get there with more depth, the best way to do that is to make sure that you're going up this kind of second hump of the technology curve right in between filing the provisional and the full application. When you're looking at this curve, it actually seems fairly simple. But of course, there's one problem with this. We're trying to identify what when the second hump of technology development is going to occur before you actually before or when you're filing the provisional. And so when you're filing that provisional, it's hoped and planned that you're actually going to now go through beta and be able to learn a heck of a lot more. There is a little trick, and the trick is we could actually file and refile the provisional application on a periodic basis. At my firm, we actually file provisional applications Every three months, the same exact document. This typically just blows people's brains. Like, hey, I thought there has to be one to one ratio of a provisional to a full application. There doesn't have to be a one to one ratio at all. You could have multiple provisionals that are combined together into one application. You could have one provisional that's split into multiple applications. But the interesting thing about provisionals is that if you don't use them, they just go away. It's as if they never existed. They're not published, they're not publicly indexed, they're not considered any kind of public use. And so they just vanish. So what you can do if you don't know when you're actually going to get up this technology curve, is to refile this provisional regularly, which effectively allows you to extend how much time you have in order to convert. Now you're giving up time, you're giving up priority, you're actually shifting this curve to the right. And so if someone else jumped in to the patent office a month after you filed that first provisional and you let that first provisional lapse, it's not going to go well. But again, if you don't get up this kind of second part of this technology curve, it's probably not going to go well either. When you're thinking about a technology that could have been invented years ago, oftentimes in the clean tech space, having more depth is incredibly important. So that arrow that's pointing vertically is incredibly important. Moving at a very fast paced industry, getting the arrow to the left when it's going horizontally is incredibly important. But both of these are important in some ways to be able to get through the patent office.