If you’ve ever thought about patents or IP, you’ve likely heard of Bereskin & Parr LLP, the stand-out IP boutique firm that Chambers Global hails as “a well-rounded team with coveted expertise in trademark portfolio management, patent prosecution and IP litigation.”
Patents and IP are complex but very much needed. And so we thought who better to dive into the matter with than Tony Orsi — a partner and patent agent with Bereskin & Parr LLP and a member of the firm’s Patent, Electrical & Computer Technology and Industrial Designs groups. Tony’s practice focuses on patents in the electrical, biomedical, software, mechanical and Cleantech fields with an emphasis on evaluating new technologies, patent searching, patent drafting and IP management strategies. Tony works with startups and entrepreneurs to help them learn about IP, to develop their IP strategy and to build their IP portfolio.
Q: Why are patents so important for startups?
A: Patents, and IP in general, are important for startups because they often represent the only assets that a startup has early in its lifetime. This is important for a startup that is looking to create and capture value. Patents can also be used to protect what is unique about the startup’s technology which can provide a barrier to entry for competitors. Once a patent application is filed, the startup can market that the technology covered by the patent application is patent pending. This can help attract investors, and parties who may be interested in partnering with the startup. This can also put competitors on notice that they might not be able to commercialize in the startup’s space although this depends on how broad the startup’s patent rights will be.
Q: Are all patents and processes for obtaining patents the same, or do they differ depending on your field (i.e: AI, medtech, Cleantech, electrical, etc)?
A: Patents applications for innovations across a wide range of technologies are subject to the same Patent laws and rules and follow similar principles in terms of descrbing and claiming an invention that is new, is non-obvious, has utility and describes statutory subject matter (which basically means the invention is a category for which a Patent Office will grant patent protection). However, patent applications in some fields, such as the life sciences, are subject to additional Patent procedures while patent applications in other fields are heavily scrutinized including business-method inventions and some software inventions. Therefore, extra care must be taken in determining whether inventions in those areas are patentable and how they should be protected. Also, the strategy for drafting the claims in a patent application, which state what aspects of an invention is to be protected, can change for different technology areas.
Q: Why is it important to obtain an agent when it comes to patents? What would be some pitfalls in not utilizing an agent?
A: The patent process is quite complicated since there are many rules to know, some of which are country specific, and the process is very time sensitive and quite rigid in terms of changes that can be made after a patent application is filed. Also, some mistakes that are made may be quite costly and hard to correct which will prevent a patent from being obtained. Submissions made to the patent office during the examination of a patent application may also later be used in court proceedings if a patent issues and its validity is challenged. Therefore, it is important to work with a knowledgeable professional who can provide guidance as to what exactly needs to be done at different stages of the process.
“Most countries require that an invention be kept secret until a patent application is filed, so startups must be careful to not publicly disclose their invention before a patent application is filed”
In addition, a patent application is a complicated document since it is more than just a technical description of the invention and once a complete patent application (i.e. other than a US provisional application) is filed, one can only make minor editorial changes to the description to correct minor issues (grammar, spelling, etc.). Thus, it is important to properly describe all aspects of the invention in the patent application, describe alternative versions of the invention and describe various possible uses for the invention. It is also important to properly describe the invention in the patent application using terms that can support claims that are as broad as possible. Claims are sentences at the end of a patent that describe what is protected. Patent claims can be hard to understand and have to be written in a certain way so it is important to have a professional help with drafting the claims.
Some pitfalls that are typically made by individuals or startups who do not use an agent include drafting the patent application such that: (1) it does not meet the Patent Rules; (2) the invention is not fully described; (3) the invention is described too narrowly or (4) there are not enough technical details or alternative embodiments in the application to allow for making changes to the patent claims during examination.
Other pitfalls include not taking actions in a timely manner, or communicating with the Patent Office in a format that is not within the Patent Rules and will not be allowed by the Patent Office. This can lead to greater costs as well as potential loss of patent rights.
Q: During the current pandemic, how is IP proving to be a valuable target for cyber spies and what can startups do to protect IP?
A: Actually, my colleagues at the firm Micheline Gravelle and Ainslie Parsons wrote an article about this which can be found at our firm’s website
Q: What are your top three tips for startups looking to launch an idea?
A: I think that it is important for startups to:
(1) Create a business plan to consider the idea can be monetized in a profitable way and the steps that need to be taken to commercialize the idea;
(2) Create an IP plan that will support the achievement of the business plan and build value for the startup; and
(3) Build a strong network of advisors, partners, funders and customers who can help them execute on their business and IP plans.