In short, 2–4 years. There’s no sugar coating that it takes a while to get a patent. Read on to find out why, and how it turns out this timing works out well for startups.
When a company starts out, there may be at least a discussion about patenting the core intellectual property. Such intellectual property protection can safeguard core assets of the company from competitors, which cannot be protected in other ways. A patent can protect the functionality or design of the startup’s core product or service. Therefore, patents give fledgling startups a fighting chance in marketplaces with much bigger players.
However, there is a question I always get when entrepreneurs are considering seeking patent protection.
How long is this going to take?
The answer, as everything in law starts out with two words: “it depends.” But this post would be of no use if that’s all I had to offer. Let’s get into it further, and why I say the process usually takes 2–4 years. We’ll be discussing U.S. non-provisional utility patents, not provisional patent applications.
Preparation: 2-4 Weeks
While I can only speak for Mertzlufft Law here, the process of preparing and filing your patent application is the starting gun on the overall process and can be expected to take 2-4 weeks (using our process). While we can turn a rush application around in a week or less if necessary to meet a statutory bar, we generally advise to put the time in up front to save on costs later. At this stage, you’ll disclose the invention such that we can fully understand it, we will write the application, we will prepare drawings and claims, and we then provide an opportunity for you to mark up our work.
Awaiting Examination: About 1–2 Years
Once filed, your patent application is awaiting examination. Patents take time to obtain—this is no secret in the entrepreneurial world. When you apply for a patent, you submit a patent application to the United States Patent and Trademark Office (USPTO). The application is initially sent to the USPTO’s intake and docketing division, where a specialist will review it to determine whether any necessary corrections or alterations to the filed paperwork are needed. However, this is merely a check for procedural formalities, rather than a review of the application’s merits.
Examination: About 1–2 Years
The substantive review does not begin until a USPTO examiner takes the case. Cases are not immediately assigned to an examiner, so you do have to wait some time to even know who your examiner will be. Once the case is assigned to an examiner, an action could come at any time. I’ve received an action from the USPTO within 3 months of filing an application—though, we used some techniques to speed up the process.
In my experience, if everything is running on time, you will generally wait 1 to 2 years to hear anything back from the patent office on the merits of your case. As can often be scary to individual inventors filing without the help of a patent attorney—but as patent attorneys know from experience—the first thing that you receive from the examiner is usually an office action containing a rejection of at least one of your claims. I can’t stress enough that this is normal and should be expected unless you’ve made a tactical decision with your patent attorney to aim for first action allowance.
Given the time it takes for the back-and-forth with the examiner, you can expect examination of the application to last another 1 to 2 years.
Thus, in a normal case receiving one to two office actions on the merits, you’re looking at a total of 2 to 4 years to get a patent.
What is the point of patent protection if it takes so long?
It is a long process, especially for a startup to commit to in terms of time and up-front costs. You may ask what the point is of seeking a patent if you cannot get one for 2–4 years? It turns out the timing it takes to obtain a patent often coincides nicely with when the patent can become useful to a startup’s valuation, namely, a startup’s first series-level financing action.1See https://carta.com/blog/getting-funded-how-long-does-it-actually-take/. Now, I’m not talking about seed funding, I’m talking about series A or B funding.
At Seed, “Patent Pending” Can Be Good Enough, but at Series A, “Patented” Is Better
It’s no secret venture capitalists and other investors considering a Series A, B, or C investment are often interested in what a startup’s intellectual property portfolio looks like. Reviewing a startup’s IP is usually a key part of due diligence. The difficulty is, if a startup waits to apply for a patent until it gets to that point, it’s often too late. Patents have very strict bars on premature disclosure. For example, if you wait to apply until more than a year after you put your product on sale, you are generally out of luck.
To Enforce a Patent, You Need Competitors
Moreover, the timing of when a patent issues generally works out if a startup is looking to enforce the patent. During the earliest stages of your start up (when you should be applying for a patent), you generally don’t have direct, potentially-infringing pressure from competitors in the marketplace because others simply don’t know about your invention yet. However, as your market share grows, your competitors may start to pick up on what you’re doing and whether your product or service is being adopted. Generally, about the 2-to-4-year mark is when competitors need to decide about whether they’re going to try to compete with you. Coincidentally, it’s also when you, if successful, get to start marking and marketing your invention as “patented.”
Being First to File Is Important
Beyond the timing of when you would expect a patent to issue, filing also reserves your place in line at the USPTO. You want your place in line to be first. So, in a first to file system like we have here in the United States, the first person to file wins the race to the USPTO and will generally be the one to patent the invention. So, even though you would not have an enforceable patent right away, once you’ve filed, you’ve secured your place in line.
Patents & Patent Applications Are Reviewed in Due Diligence
You may ask how a pending patent application can contribute to the valuation of a company if an actual patent wouldn’t issue for 2–4 years. This is a great question. In M&A deals, part of IP due diligence is to investigate existing patents, as well as pending patent applications. If an application is designed to protect the key component of the company’s value proposition, that patent would likely be investigated for patentability by the prospective investor or buyer. If they determine it’s likely patentable, having that patent application filed can sweeten the deal immensely.
Bonus: The Press Release
Whenever you get a patent on an invention, the usual advice is to shout it from the rooftops. Putting aside the legal importance of doing this for now, it is a wonderful marketing tool. A press release about a newly-patented invention is a great way to keep and draw more focus toward your brand and product or service.
Patents take a long time to get. However, top startups prove starting the process early is crucial to business strategy. If a startup applies for a patent in its initial stages, the timing can work out well for when a patent can become advantageous for investment, enforcement, and exit strategies.
If you have more questions, please don’t hesitate to get in touch with us!