Obtaining Patents

(Source Institute) #1


“Protecting my innovation was applying for patents, then I could protect my idea without a Non Disclosure Agreement (NDA)”
-Samson Mutisya

When he began his journey founding Tracopay, a company creating a revolutionary micropayment tool poised to bring micropayments into a single device everyone can carry in their wallet, Samson Mutisya knew he had to protect his innovation. While he initially thought an NDA would be enough, he eventually found a way to file a specialised patent under the Patent Cooperation Treaty (PCT). That treaty provides a unified application process for 148 countries. Here’s how he did it.

##NDA or Patent?

“Institutions don’t want to sign NDAs, so a patent is a method you can use to disclose your innovation”
-Samson Mutisya

NDAs may be relatively simple to create, but Samson quickly found out that they didn’t solve his problem. The corporations he wanted to cooperate with weren’t willing to sign an NDA. He had two choices to protect his innovation, either don’t cooperate with anyone and keep his product a tightly guarded secret, or to obtain a patent. He needed to work with a variety of companies so the first option wasn’t possible.

So, his only choice was to obtain a patent.

##Choosing the Right Patent

“The PCT process is the best method, especially for startups, where money is very valuable, because they give you feedback and you can decide to continue or amend”
-Samson Mutisya

For Samson, the international patent protection offered by the PCT what his best option. Simply obtaining a patent on the national level might be a better option for you, but it will depend largely on your potential long-term market reach. In Samson’s opinion, the PCT is the best option for startups. The most difficult aspect, however, is going through the process of getting a patent this way.

##Understanding the Patent Process

The first and most important thing to bear in mind about the PCT patent process is that it takes around 3-4 years in total. That doesn’t mean you can’t protect your innovations until you’re finished, just be prepared to stay with this process for a long period. Here are the major steps Samson went though:

###1. Determine if a patent is right for you.
For Samson, Google Patent Search allowed him to determine that nothing close to what he was creating already existed. This research step took about a week.

###2. Find the right lawyer.
This took Samson about 2 months. For this you can’t have just any patent lawyer. The person could be an expert in plant patents, in which case they will be nearly useless in filing electronics patents. Your lawyer needs specialized knowledge in all your relevant areas, that can make them difficult to find. So, to find the right lawyer, Samson turned to Linkedin, made contacts, and started asking questions.

“You want a lawyer that can take his time to answer your questions, that’s a really good indicator he takes his work seriously”
-Samson Mutisya

###3. Create a very detailed writeup.
Samson’s was almost 40 pages long. He needed diagrams for this, but decided to do them himself in case they needed to be changed. It wasn’t worth investing in a draftsman until he was 100% certain the diagrams were ready for the full patent. Once it was completed, the lawyer went through and picked out the innovations eligible for patents. This took about 3 weeks.

###4. Polish the draft with the lawyer to prepare it for submission.
This took Samson about 2 months and about 10 drafts. He found it was worth investing a lot of time and effort here, as the better your application is the easier the process will be going forward.

###5. Submit your application for a provisional patent.
It will be valid for 12 months. The examiners will give you feedback on your application so during these 12 months you can make any necessary amendments.

“The claims can be broad or narrow, one technique which our patent lawyer did was to have broad claims. Then he got feedback and narrowed them accordingly.”
-Samson Mutisya

###6. File for your PCT.
When you submit this application, once again you’ll have a few months to get feedback from the examiner. Samson learned that not all of your proposed patents will go through, so you have to be ready to make amendments and to give up on some. Still, you should try to get in as many details as possible as more details offer you better protection.

###7. Decide which countries you’ll submit national patent applications for.
Here Samson had to consider which countries were relevant for his company’s future plans to the extent that it was worth the time and money invested in them.

“If you go directly to the national phase, there’s a risk of that, you might put in money and it doesn’t go through”
-Samson Mutisya

Can you relate to the stories we told here? How is your experience different? We’d love to hear from you. Your questions and comments are what will help us make better lessons in the future.