We recently got the good news that the US Patent Office will accept our application for a patent protecting our Filtering algorithm. As it was the first patent we’d applied for, both as a company and as individuals, it’s been interesting and a learning experience. I wanted to share some of that with you in case you are on a similar path.
Our main motivation in applying for a patent was to protect what we’d achieved. In 2014 we set out to build an algorithm that would personalise our online courses in a robust, data-driven way. As we made progress in understanding, and eventually overcoming, the challenges of building an algorithm that would perform well for learners, we felt we were generating ideas and solutions worth protecting.
We saw two routes to protecting what we had achieved: commercial confidentiality (keeping our inventions secret) or legal protection (applying for a patent).
That was quite a finely balanced decision for us at the time. Applying for a patent would cost money, and carry significant (but hard to quantify) risk of failure. But it would allow us to talk openly about what we had done without fear of our approach being mimicked. We could use our invention confidently, to its full commercial potential.
Besides this core consideration - that a patent application would give us protection while leaving us free to be open - we found there were other advantages to taking this route over keeping things confidential.
When a patent is granted, the protections apply retrospectively from the date the claim was filed. So as soon as we made the claim in 2014 we could market our idea openly, including talking about the patent application itself. Having ‘patent pending’ status piqued interest and helped start conversations, leading to partnerships and commercial opportunities.
Refining our thinking
Our patent attorneys (Christopher Smith and Robert Sackin at Reddie & Grose) are not only experienced in maximising the likelihood of success of a claim, but are also engineers and scientists by training - creative and rigorous thinkers. It was rewarding to have someone else articulate our idea better than we could have expressed ourselves. Rewarding but also valuable, for the patent application, for marketing, even for future product development.
Despite the length of time and costs involved in applying for a patent, and the uncertainties in which inventions are eligible for protection, the mix of benefits means I’m sure we made the right decision to apply back in 2014. If you face a similar decision, definitely speak to the experts, but from our own “layperson’s” experience here are four tips:
- It’s likely to take a long time - the three years our US application has taken is not unusual. That means you need to be confident your invention will remain important to your business over the long haul.
- Don’t tell anyone (externally) about your invention till you have applied for a patent or made the decision not to - if it is already in the public domain, you won’t be able to protect it. (But you can start talking about it once you’ve made the application - if it is granted the protection applies retrospectively, from the date you applied.)
- Be clear on IP. When undertaking R&D, make sure it’s clear in employment contracts etc. where the resulting intellectual property resides. The individuals responsible for the invention will be named the ‘inventors’ in a patent, but you want the rights to the patent to be your company’s, if it's your company directing and funding the work.
- Hedge your bet. Try and make the business case stack up even if you are unsuccessful - consider the benefits of marketing and external challenge, and make the most of them. And think through how you will defend your position in the event you aren’t successful - in those circumstances details of your invention will be in the public domain but without patent protection.