Navigating the Path from Provisional Patent Application to Product 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. Then you will receive an official Filing Receipt about 2-3 weeks later. At this point, you have patent pending status, and you can start showing your idea. This status allows you to seek investors and work with developers. Finding a good patent attorney near Boulder can also facilitate this process.

If you’re working with developers, you’ll want to make sure you have a solid agreement in place. This agreement should give you the copyright to the code and any patent rights for new features the developer may add. This 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 the developer assigns all rights in any code or features to you. This includes specifying that everything the developer creates is a “work made for hire.” Additionally, the agreement should cover confidentiality. The developer must keep your idea and any related information secret. A patent attorney near Boulder can help draft this agreement.

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. It also ensures 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 focus on building a strong business plan. This includes identifying your target market, planning your marketing strategy, and understanding your competitors. Consider international patents if you plan to market your app globally. Again, a patent attorney near Boulder can be very beneficial in this stage.

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 want to know how their investment will be used. They will also want to know 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: Inventors face a lot of decisions when patenting their invention. What are common pitfalls during the patent process, and how do you avoid making mistakes along the way?

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 pitfall 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. Finding the right patent attorney near Boulder can be a significant first step.

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 careful planning is essential. Thorough legal protection and a clear business strategy 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. Need help finding a patent attorney near you? Working with experienced professionals, including a patent attorney near Boulder, can help you secure patent rights to your invention. This can increase your chances of success in a competitive market.