The patent application process can be overwhelming and is many an entrepreneur’s number one nightmare! Unfortunately, intellectual property is not something you can simply afford to ignore. Indeed, sometimes patents are the best way to protect your invention (more information on the different forms of IP is available here).
To help demystify the process for all of you, we wanted to get you the real scoop on patent applications. What better way than to take a look at one start-up’s patent adventures? As a SaaS start-up, patents haven’t formed a huge part of Kabuk’s IP strategy yet, so we turned to our start-up network to find a great case study for you. We found one in EnviroDiamond Technologies, a fellow RIC Centre incubator alumni (read all about our great experiences in the program here). A big thank you to founder Daren Swanson for helping us out and making this post possible.
First things first – a bit of background on EnviroDiamond. EnviroDiamond’s technology is explosive (pun definitely intended)! They’ve developed a process that creates nanodiamonds from high velocity explosions. The resultant nanodiamonds are more affordable and of better quality than those produced from existing detonation methods. Nanodiamonds have a multitude of industrial and medical uses including usage in drug delivery and chemotherapy treatment. The possibilities are endless.
To protect its innovative technology, EnviroDiamond decided to go the patent route. This is their story.
How it all began
It all began in 2007, when Daren started the long patent process by filing a provisional patent application. Provisional applications establish an earlier patent filing date. They are less expensive and the disclosure requirements are less comprehensive than filing for a patent so in many cases they allow inventors to file and establish that earlier date while still working to perfect their invention. A provisional patent application can protect you for 12 months, with global coverage for countries that are part of the Patent Cooperation Treaty (PCT).
At the end of the year, Daren decided to go forward and enter the PCT phase to file for international protection. The PCT phase lasts 30 months from the initial filing date and allows one to delay the costs associated with filing multiple national patents. Once this phase expires, one needs to decide whether to file for non-provisional patents – and – in which countries to do so. Knowing that the information in the application becomes public domain in the countries not applied in can be an important consideration in developing one’s patent strategy.
Selecting geographies with care
Daren selected the geographies which he wanted patent coverage by looking at where his ultimate consumers reside, though he noted that for nanodiamonds producers and consumers typically reside in different countries, some with politically unstable climates or plagued with quality control issues.
Daren ultimately decided to file in the US (41% of the global nanodiamond market), Japan (42%), the EU (14%), Canada, China, Mexico, South Africa, and India. Daren’s patenting strategy covers 97% of the countries that consume nanodiamonds and ~60% of those who produce it.
When asked whether all patents are equal, Daren mentioned that the US seems to be most rigorous and passing that test is viewed very positively.
How it’s panned out so far
7 years later and Daren is thrilled to have patents in hand for the US, Japan, South Africa and Mexico.
South Africa was the first to come in, with the US following in 2013 and Mexico last November. Daren’s Japanese patent wasn’t granted until this month – five years from filing once the PCT phase expired in 2010.
The battle still continues with the remainder.
- Process more expensive than initially thought: When Daren started the process, he thought it was a simple matter of the ~$3,500 to file each application. Fast forward to 2015 and Daren has spent over $100k to date. The reality is, there is a lot of back and forth involved. The costs can really add up, particularly when you are working with both a local law firm and foreign law firms to coordinate the process. The foreign law firms act as mediators between the patent office and your lawyer, meaning that you could be easily doubling billable hours when compared to filing locally. It is for this reason that Daren notes that selecting a lawyer with a solid foreign affiliate network can be important when filing for international patents. On top of lawyer fees, it can cost ~$5k for document translation (such as alleged overlapping patents or ‘prior art’).
- Takes way, way longer than anticipated. When he started the process, Daren thought it would take a couple of years, but five years later is still working on several geographies.
- Plan and think creatively about phrasing. How you phrase your claims is very important. Daren says its a good idea to spend some time brainstorming how you can circumvent your patent before filing. For instance, Daren notes that in his original patent he patented an explosive that when detonates produces Nanodiamond. In hindsight, he should have filed for an explosive comprised of dry ice and magnesium. Because of how his claims were phrased, they decided to file a continuation or follow-on patents to fill in the gaps – and that’s expensive.
Daren notes that a lot of people he talks to at US industry conferences say they don’t choose to file patents outside of the US, as the perception of global attitudes regarding IP in other countries is that it’s not as respected. However, Daren says that, looking back and knowing what he does today, he still wouldn’t have changed his geographic strategy.
What’s next for EnviroDiamond?
Preliminary tests and analysis have demonstrated that EnviroDiamond has a financial viable diamond yield. The company is thrilled to have already have a couple of customers lined up and a processing partner in place. The company is now actively looking to raise financing to go to market.
Interested in learning more about EnviroDiamond? E-mail Daren directly at GlobalSolutions@Envirodiamond.com.
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