IP Essentials: Q&A Series

Q When can I approach prospective investors or customers? A Ideally, the best time to approach prospective investors or customers is after a patent application has been filed, when there is no risk of inadvertently forfeiting patent rights as to what is described in the patent application. In some cases, it makes sense to file a provisional patent application first, providing up to a year to see which features are the most commercially valuable and focus a non- provisional application accordingly. If pre-filing discussions with prospective investors or customers are unavoidable, a carefully drafted NDA—if all parties are willing to sign—can help preserve patent rights in the meantime. Q How can I test my software without forfeiting patent rights? A The best way to preserve patent rights is to get a patent application on file before making the software available to anybody outside the company. If that is not possible, then all testing should be done under NDA, to help prevent the testing from being considered a public disclosure of the invention. However, an NDA may not be sufficient in all cases. For example, a customer involved in beta testing may sign an NDA but then make the beta product available to downstream end users who did not sign the NDA, resulting in a public disclosure.

Q Can I discuss my invention at a conference? A Discussing your invention at a conference (or any other public location) qualifies as a public disclosure that starts the one- year grace period in the United States and could completely bar patenting in some other countries. Even submitting an abstract can qualify as a public disclosure, depending on how much detail is included in the submission. Public disclosure also increases the risk that somebody who learns of your invention could beat you to filing a patent application. Q How are software patents different from copyrights? A A patent protects an invention, which is generally broader than any specific implementation. Copyright protects the specific expression of an idea, but not the idea itself. For example, a copyright on source code means others cannot legally copy that code, but does not prevent somebody from independently developing a competing product. A patent grants the right to block competitors from developing their own versions of the patented invention.

IP ESSENTIALS: SOFTWARE PATENTS

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