All The Ways A Patentability Opinion Can Save Your Startup 🏥

Precipice IP PLLC Patentability Opinions

The life of the entrepreneur can be one of crazy highs offset by tremendous lows.  Besides the tech, most entrepreneurs I know think constantly about two things- getting capital and getting more capital. Why? Because capital is required to bring innovations to the market.  

Early stage product development may be so early that adequate funding is hard to find, but in order to get funding, something must be shown to a potential investor. Investors, in turn, want to know only two things- when the investor will get their investment back, and by what multiple.

In the very early days of startup life, many technology companies don't readily have the resources to file for patent protection because they need investors.  And investors are reticent to provide funding without an indication that patent protection for the invention or concept is underway.  

There is a relatively low-cost solution that can satisfy all concerned, and the solution is a patentability opinion. A good patentability opinion has a few things going for it.  It should demonstrate 1) a reasonable search of the field, 2) an analysis of the invention and the references found, and 3) recommended actions. Purchase a Patentability Search and Opinion here.

Search The Field 

A good patent opinion should demonstrate a good search of the field.  And by search, I mean at least searching published patent applications and published patents. A diligent inventor, however, should have searched the marketplace prior to retaining a lawyer to get a sense of whether a similar product is currently on the market.  For example, before showing up at your patent attorney's office, you should have searched GooglePlay or the App Store if the product is a software app.  If the product is a consumer product, then, by all means, please search Amazon, eBay, and at the very least.  Searching the marketplace is good 'first cut' and also gives you a sense of alternative technologies marketed by your closest competition.  

The patent attorney will review the invention or inventive concept, along with the 'first cut' results, and perform a keyword, Boolean, and classification search using multiple patent databases.  [Side note: I started my career as a Patent Examiner at the United States Patent and Trademark Office- and the entirety of my job was searching for inventions.  There is an art to it, as well as a science.]  

No search will uncover all references, but a good search done by a professional will uncover the most significant patents and published applications that could impact patentability. Knowledgeable technology investors should ask whether a patentability search was done before making it rain $$ on the business.

Lay It All Out

A good patent opinion should have some analysis.  And by analysis, I don't mean showing and telling the client that some patents were found and calling it a day.  That sucks. The show and tell method does nothing to help a client understand what the real issues are. Patent law is complicated, but the law is navigable.  Some areas of patent law are more complicated, while other areas are fairly straightforward.  Furthermore, USPTO policy can also create some interesting nuances and tensions with regard to particular technologies.  The analysis portion of the opinion should analyze the invention and address unique technology challenges, case law trends, and USPTO policy that could impact the patent examination of the invention.  

Investors should be on the lookout for a good analysis section in a patentability opinion.  A good analysis section will call out both what is novel and strong about the technology (in the eyes of the attorney) as well as potential issues to be addressed.  

Outline a Path forward

A good patent opinion should make recommendations about a possible path forward and options for protection in view of the search. I will admit, this is my favorite part of the opinion, though if I'm doing my job right, the recommendations I make here will not be something an inventor will have heard for the first time. 

Each technology will have unique issues to be addressed in the patent application. Medical devices, for example, should have adequate drawings showing each claimed embodiment.  Chemical inventions should have experiments which were actually done along with the results.  Software inventions should not be abstract ideas only.  

So the path forward section should be clear and concise. The exact guidance will depend not only on the type of technology but also on what makes the technology novel and unique. 

Investors should look for the path forward section in any patentability opinion presented in the course of the diligence with a prospective startup target.  The path forward section noted in an opinion should be reviewed carefully as it will become the roadmap to a competitive advantage by means of adequate and meaningful patent protection.

Caveats, Disclaimers, and Other Legalese 

It is important to finally note legal opinions are meant for the client and constitute legal advice, and as such, should be considered privileged and confidential. Sharing a legal opinion with a person that the opinion was not intended can waive that privilege. Before sharing a patentability opinion with a potential investor, consult with your attorney about the pros and cons of doing so.

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Angela Grayson is the Principal and Founder of Precipice IP, PLLC.  She practices before the U.S. Patent and Trademark Office and is a registered patent attorney. Ms. Grayson is licensed to practice before the Mississippi Supreme Court and is admitted to the Court of Appeals for the Federal Circuit and the U.S. Supreme Court Bar. Contact Angela Grayson @ 479.259.2966 or 601.427.4773.