The Startup Patent Application: Timing, Filing, and if You Should Even Worry about It

In preparation for Health:Refactored, our code and design focused conference taking place May 13–14, we sat down with Jeff Schox patent attorney and founding member of Schox Patent Group. His talk “When You Should Worry about Digital Health Patents” will take place during the Scary Acronyms: HIPAA, USPTO, FDA, EHRs track on May 13th. Follow the Health:Refactored speaker interview series here.

Jessica Goldband: Why don’t we start off by talking a little bit about your background. 

Jeff Schox: I have been a patent attorney for 15 years. I have written about 600 patent applications. After working at a big firm for about five years I broke off and started my own. The focus of the last 10 years of my career has been solely on startups. How do you build a patent portfolio in the early stage of a startup that scales with that startup?

Goldband: Can you touch a little bit upon what you are going to focus on during your talk at the conference? 

Jeff Schox: Sure! The digital health space is confusing from an intellectual property standpoint. Half of it is consumer Internet, or maybe iPhone applications, and from that particular angle, it doesn’t look like there is anything that both coders and developers don’t think of as intellectual property.

You have this interesting tension. Some digital health companies will need to focus on intellectual property. That’s what their investors will focus on, that’s what partners would focus on. That will be a strong aspect of their exit.

And there is another portion of digital health companies that can completely ignore intellectual property. They probably don’t have anything that’s patentable. Their investors are not going to ask those questions, the partner is not going to ask questions, and the exit isn’t going to be affected at all, whether or not they have intellectual property. I try to figure out where a digital health startup is within that spectrum. There are a couple of factors, and those factors I will explore during my talk.

Goldband: Can you touch on what is protectable and what isn’t? Some patents might be more focused on design, others might be focused on functionality. Can you talk a little bit about some of the differences there and how developers and designers should be thinking about what’s protectable? 

Schox: The patent office doesn’t necessarily care about what type of data is being passed through data channels. They don’t necessarily care about the titles that people are using. So here is an application that allows doctors to share information with nurses and family members. The patent office isn’t going to see that as a communication platform for doctors and nurses and families, rather they will see that as, this is a communication platform. The fact that it’s health information and the fact that it’s health providers is something that the patent office will not give any patentable weight to.

But there are lot of issues around communications and health. There are a lot of interesting opportunities with mobile devices, and putting sensors on it, or doing computation, or being able to do certain task on that, that wasn’t necessarily intended to, but now it can because of the processing power that it has. So thinking a little bit more about it from a technological standpoint, what are some of the problems that we are now solving, that’s kind of one category.

The second category would be, we are providing a different user experience than has ever been done before.

Goldband: And what about timing? I think that a lot of developers and designers out there might assume that you want to file a patent as soon possible. Are there other tradeoffs to that timing, and should people be thinking a little bit more carefully about when they choose to file?

Schox: Yes. We recommend all of our clients to file provisional applications first. Provisional is much cheaper, it’s much shorter, it’s much faster, and now that we are in a first to file patent system, filing first gets very important.

The timing is not just let’s get there first, but a provisional application has a 12 month expiration date. We need to convert that provisional application to a utility type application within that 12 months, before it expires.

And so also think about this timeline of 12 months on to a development timeline and a funding timeline. That we want to be able to file a provisional application on one side of a funding event, and converting it to a full patent application on another side of the funding event, and that’s the best way to preserve cash at an early stage startup.

We also want to be able to ensure that the development all occurs during that 12 months, or at least it’s done before the end of that 12 months. We don’t want to split the application. We don’t want to file multiple patent applications on a particular invention. We want to be able to grab all that we can and file a full patent application on it.

Filing a provisional application at one point, finishing the development of it, and the implementation details, and then converting it within 12 months is ideal. So technology is going to be developed longer than the 12 month period; one strategy might be to delay that provisional application.

Goldband: So any other advice for developers and designers before Health:Refactored?

Jeff Schox: There are a lot of startups worrying about patent controls, and they shouldn’t. And they don’t worry enough about what their competitors own and they should.

This interview was edited for length.