Sunday, August 30, 2015

Underpinning Base Patents with R&D

During the earliest stages of a company’s development and before the company is formed properly as a corporate entity, key early provisional patents, often called “base” or “foundation” patents, may be filed in the inventors’ names, anticipating their later assignment to the corporation (see Chapter 3.2). Often, these provisional patent applications (PPA) have only minimal descriptions, and proof of patentability may be insufficient to pursue a robust patent application because of the lack of data, prototypes, performance, etc. These insufficiencies should not hinder the filing of the PPA, as the PPA carries with it the priority date that will be important when the formal patent is eventually filed.

As one can’t be completely certain as to what will be sufficient, multiple PPAs, each containing incremental specifications, data, etc., should be filed. The time between successive filings of PPAs can be as little as a day or perhaps a month. The imperative is to make the sequence of PPAs, which eventually provide the basis for one or more patents, as strong as possible. PPAs can be as little as one page containing the bare basics of the invention (even without claims), though supporting and subsequent PPAs should have a much higher level of information and proof of patentability. Patent attorneys can assist and guide entrepreneurs so that R&D is focused and aligned with patentability requirements.

A nonprovisional (or regular) patent application that wishes to take advantage of the priority date of an earlier PPA must be submitted within one year of the filing of the PPA. Thus, R&D needed to support the eventual patent must also be executed quickly to bolster the granting of the patent. Often, these early efforts are burdened by the lack of funding for particular needs such as laboratory space, equipment, materials, etc. Early investment from founders, friends and family, and other sources should be directed at R&D and perfecting the IP portfolio. This early R&D needs to be focused on the essential claims (made in both the PPA and NPA) anticipated for the invention and considered key to the unique competitive advantages provided by the envisioned products.

Often, the issue of prototypes (or more appropriately, proof-of-concept, or POC devices) comes up when they are intended as proof of an invention’s “utility,” which means that the invention must have benefits and be capable of use. These earliest demonstrations are not appropriate for large-scale manufacture or distribution to a customer/user; however, even very simple models of the invention can prove useful when combined with some minimal amount of data and description. With the advent of 3D design software, 3D printing, and other economical methods for manufacturing of one to three articles, the ability to produce a POC device has become easier and quicker.

Also, as part of early R&D efforts, each potential usage of the base invention should be explored in relation to its potential use in other markets. That exploration into multiple markets may reveal additional aspects of the base invention that need expanded coverage, especially as they may pertain to broad (or broader) claims. This first phase of research is needed to protect the products the company sees in its future, but “out-of-the-box” thinking and supporting R&D needs to be broad enough to prevent inroads from others or at least make it very difficult.

It would not be unusual to have an initial vision of a product that is limited in some sense; that is, with more thought, additional applications and markets come to mind. Research on market needs can dovetail into technical and performance requirements that also lead to additional new thinking about other product solutions and innovation. Thus, the number and types of innovations and inventions can increase, and their protective virtues can be captured in additional claims (even within a single PPA or NPA). The goal is to prepare one or more PPAs that include a rough specification, broad claims, and narrow claims that cover one or ideally more markets and product opportunities. The thinking needs to be very broad so as to capture every conceivable application and market so that IP coverage is correspondingly broad and the potential value of patents to be created is as large as possible.

Some early thought should go into the issue of what IP should be kept as patents and what should be kept as trade secrets. For instance, aspects of the invention that may be easily seen in a product (visual) may be patented, as detection of infringement is relatively easy. On the other hand, process-oriented IP (e.g., how something is manufactured or made by chemical composition, etc.) may be better preserved as a trade secret, as discovery of infringement may be too problematic and expensive. If a process can be reverse engineered (most everything can be) or made in several different ways, then a patent may have less use; however, if there is only one best or unique way and you intend it (or have money) for major markets, then it may be worth patenting the processes rather than keeping them as trade secrets. These can be difficult issues, and their resolution should be accomplished in concert with the company’s patent attorney.

As a brief summary: Plan on filing many PPAs as quickly as possible, and do what R&D is allowed by the budget to establish proof of patentability needed for the eventual patent application. 


Rocky Richard Arnold provides strategic corporate and capital acquisition advice to early-stage companies founded by entrepreneurs wishing to successfully commercialize high-value-creation opportunities, ideas, and/or technologies. More information about Rocky can be found at His book, The Smart Entrepreneur: The book investors don’t want you to read, is available as paperback or Kindle ebook for purchase on Amazon at Financial software for use by startups can be purchased on Amazon at He posts articles about entrepreneurship on his blog at Connect with Rocky on Twitter @Rocky_R_Arnold; Facebook at; Google+ at

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