What is the right way to go talk to VC or patent attorney first? 10 Answers as of February 07, 2013

I have an idea for a new product and built a prototype. Some friends suggested me go talk to VC to get funding. However, some suggested file patent (even provisional filing) before talk to VC, since VC hardly signs non-disclosure before they head your story. Patent application takes long time and is expensive. Is provisional filing the right way to go?

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DANIEL NESBITT
DANIEL NESBITT | Hasse & Nesbitt
Your patent rights will be at greatest risk if you go to a VC first (generally speaking), but they'll be best protected if you go to a patent attorney first. You just need to consider what either option will "cost" you, in dollars or protection. And the more valuable your invention, the greater the risk, and the more you will want to pay for good patent services. Under the new US patent law that takes effect on March 16, you will not be able to claim any longer your "pre-patent filing" activities as your earlier invention date. You will have to rely entirely upon your actual patent application filing date.
Answer Applies to: Ohio
Replied: 2/7/2013
Mark S. Hubert PC
Mark S. Hubert PC | Mark Hubert
From what you have told me I would say yes. Provisional patent applications are useful when you want to be able to lock down the starting date of your patent application without spending all of the expense of filing a utility patent until you know if you will be able to make any money from your invention.
Answer Applies to: Oregon
Replied: 2/7/2013
TechLaw LLP | Ross A. Epstein
Concerning inventions, whether you plan to speak to a VC or a potential customer or even your third cousin on your mother?s side, it is always best practice to get some sort of patent application on file prior to making any disclosure outside your company or a non-disclosure/secrecy agreement. Specifically with respect to VC's, disclosure to a VC is a publication of the invention like any other. So if you don?t have anything on file, you will trigger the US statute of limitations of one year could blow your international patent rights. Whether you should file a provisional or a non-provisional application before meeting with a VC is a question of resources and timing. Generally speaking, we strongly prefer non-provisional applications simply because you can only claim what is contained in a provisional when you convert it into a non-provisional, so if you are not careful and complete, you may miss something important. We reserve provisional filings for specific, strategic purposes only. With respect to the time and expense of obtaining a patent, one should always view that as an investment in the creation of value in and around your business enterprise. It is not cheap nor should it be. But it doesn't have to break the bank either. And the US Patent Office is getting more and more efficient. Bottom line get something on file before you speak with a VC.
Answer Applies to: California
Replied: 2/7/2013
Law Office of Kirk Buhler
Law Office of Kirk Buhler | Kirk A Buhler
The new rule with the patent office is "first to file". If you talk to a VC then they could file a patent application before you. You should file a provisional patent application before you talk to a VC. Make sure you perform some patent searching to ensure that your invention has not patented by someone else.
Answer Applies to: California
Replied: 2/7/2013
Tran & Associates | Bao Tran
You should get patent application as soon as you can to prevent others from copying you. This is important as we move into the First to File era.
Answer Applies to: California
Replied: 2/7/2013
    Ochoa and Associates
    Ochoa and Associates | Susan Ochoa Spiering
    It is recommended to file at least a provisional application before speaking to anyone about your invention. And even after your file, try to get them to sign a non disclosure agreement. Note that once you disclose your invention, or offer it for sale to anyone without a signed non disclosure agreement, you start a time clock running in the US, and must file an application within 1 year of the disclosure to preserve any patent rights.
    Answer Applies to: Texas
    Replied: 2/7/2013
    Barton Barton & Plotkin
    Barton Barton & Plotkin | Maurice Ross
    You should file a patent application before disclosing your product to anyone. Whether you file a provisional or a utility is debatable-I am not a fan of provisionals. Most importantly, you need to retain IP/patent counsel to develop a product development and branding strategy. And you need an IP clearance opinion-before approaching VC you need counsel to provide an analysis that demonstrates that your product can be made without violating patents and other IP rights owned by others. In fact, the clearance opinion is the most critical piece of the puzzle-the first question most VC's will ask is whether you have one.
    Answer Applies to: New York
    Replied: 2/7/2013
    Webb IP Law Group
    Webb IP Law Group | Jason P Webb
    Provisional patent applications are a common way to solve that dilemma. It shows the VC that you have some skin in the game and that you are protected. It also gets rid of the need for non-disclosure agreements, which are annoying to them.
    Answer Applies to: Utah
    Replied: 2/7/2013
    Banner & Witcoff, Ltd. | Ernie Linek
    Talk to a patent attorney first and file a provisional with assistance from the attorney - then go see the VC - for the reasons specified in the question. Beware of the one-year grace period of any public disclosure of your invention - especially since you have a prototype made. The provisional application must be complete under the patent laws - which is why you need help from the attorney. The provisional will expire in one year - but the invention will be "patent pending." Also, having the provisional on file may help you with the VC - as the invention will have some initial protection attached.
    Answer Applies to: Massachusetts
    Replied: 2/7/2013
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