Making sense of Patents and IP, what you should know and when to care

Written by Andrew Askins on March 12, 2018

You have an amazing idea. World-changing, even. Or at least mildly innovative. You’re ready to get rolling on it...but first, should you do anything to protect your new intellectual property? 

Can you get a patent? 

Do you need to worry about your day job coming after your new side project?

Obviously, the best thing to do is to talk to a lawyer and get advice personalized to your specific idea/business. However, if you need something to get you started and figure out what your options are, we talked to Jason Rosenblum, a New York and Charleston based IPBA (intellectual property bad ass), to get his thoughts on intellectual property for software startups:

DISCLAIMER BECAUSE OUR LAWYER SAID SO: We are not attorneys. The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.

Don’t just look at patents

Typically, when people think about protecting their IP, they think about patents — but that’s not the only avenue you can take. “There’s actually a number of avenues for IP protection when it comes to software,” says Jason. These include:

  • Copyrighting — the source code of software is copyrightable (along with photos, videos, and music or sound, if any of those are included in your app).

  • Trademark, which identifies the source of the goods or services (in this case, software). In addition to trademarking the software name itself, the creator can also have their own brand (which allows you legal avenues of retaliation if someone infringes on your branding).

  • Trade secrets, which can come into play when it comes to software via internal procedures, customer lists, or ways you're building the software.

  • Even under the patent umbrella, there are design patents, which are different than utility patents (which is what most people think of when they consider a patent). These cover things like a graphic user interface.

A design patent would cover something like the way a graphical user interface looks, such as Apple’s swipe to unlock. As Jason puts it, “if you look at Apple, when the iPhone first came out, they had the rows of icons and the slide to unlock — that arrangement was new and had never been done before as an aesthetic.”

Is this patentable?

In general, it can be difficult to obtain a utility patent when it comes to software. But it’s not always impossible. The biggest question you should ask yourself is, “What’s the underlying invention or function here?” To find out whether something is patentable, you need to ask yourself:

  • Is it patentable subject matter? If it relies too heavily on natural phenomena or a law of nature (which in this case could be math, for example), it’s probably not patentable.

  • If yes, is there something new here that’s never been done before? (Remember: patents are about invention.)

  • If yes, did you disclose it already? One thing to note is that Jason stresses the importance of talking to an attorney — even if it’s just a brief (often free) consultation — before going public with your idea. f it is patentable and you go public with it, you can potentially lose your right to patent it in the future.

Note: Don’t let this discourage you from doing user research. In our article about validating your idea we explain why you don’t have to (and shouldn’t!) mention your idea while doing initial research.

Jason says, “I've had people contact me and say, ‘Hey, put this website domain in your browser and see what we're doing. We want to patent it.’ I'll ask, ‘Well, how long has this been up for?’ and they’ll say, ‘Oh, the last year and half.’ They've basically shot themselves in the foot and lost the right to patent, if there was something even patentable there, because they disclosed it.”

Disclosure laws could be an entire post of their own, and vary from country to country, but in general, it’s better to be safe than sorry by talking to someone first.

In general, software is more likely to be patentable if it:

  • Improves the operation of a computer (or other hardware).

  • Uses a proprietary process to achieve its end results, in which case, you wouldn’t be patenting the software, so much as the process behind the software. Instead of patenting your app, you’re patenting the specific five-step process that your app goes through to get the results that the user needs.

IP and day jobs: when worlds collide

If you’re working on a #SideHustle while still at a day job, you’re naturally going to wonder what the rules are around that. Different IP works in different ways, but in general, it’s a good rule of thumb to not touch it at all during work hours or on work equipment. Don’t use your work computer/phone/email and don’t store anything related to your side project on a hard-drive or cloud account owned by your work.

Be careful with Intellectual Property for things created during your day job

Photo by rawpixel.com on Unsplash

Aside from potential legal ramifications there in regards to IP, you also give up a lot of privacy once you use anything work related. “If I’m counseling a client and they CC their work email, they could potentially lose whatever attorney/client privileges were in effect, you have no expectation of privacy on your work email.” says Jason.

At the end of the day, you want as much separation between your work on your side project and your work for your employer as possible.

And, of course, make sure to review your employee handbook and any contracts you’ve signed:

“What happens a lot is when you have a job, you usually sign some sort of handbook or contract that somehow gives them rights to whatever you're doing. If you're essentially inventing your own invention that competes with your day job, you should definitely not do it at your work. It can get hairy there and it really does depend upon what your contracts are, what employee handbooks have you signed. Copyright, if it's within the main scope of your work, they might own it, just based on the fact that you were an employee doing your job and created it for the business.”

"Copyright, if it's within the main scope of your work, they might own it, just based on the fact that you were an employee doing your job and created it for the business.” -Jason Rosenblum

In the long run, though: don’t get hung up on patents

All of that said, the key is to take action ASAP instead of sitting on an idea (or putting something out there and potentially losing the right to patent). Once you have an MVP, you should talk to an attorney and see if it falls within patentable subject matter (and what potential IP protection options you do have). 

It’s likely that it doesn’t, at least not at this juncture — and that’s fine. Too many potential startup founders get hung up on trying to patent their idea and stop there, instead of moving forward with whatever they can (and the advice of a good lawyer).

Thanks so much for reading this post! And thanks to Jason Rosenblum for sharing some of his knowledge with us. If you need advice on IP, go to talk to Jason. 

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