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   Are Foreign Business Process Patents Worthwhile?
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IPL61003
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Are Foreign Business Process Patents Worthwhile?
« on: Sep 24th, 2007, 7:10pm »
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Hello, All:
 
For practical purposes, should an inventor of a business process patent apply for just its U.S. patent, and not bother trying to apply one in EU, Japan or elsewhere?
 
I suppose the cost, difficulty (e.g. in EU) and small market (e.g. in Australia) considerations would make the U.S. market, and therefore the U.S. patent, the only one truly worthwhile to apply for in the case of business process inventions.   Is there a problem with that thinking?  Would Amazon, eBay or Google think the same way?  How would the leading dot-com companies act differently?
 
On the other hand, if a business process invention is of exceptional merit, how about this approach:
(a) Inventor files provisional patent with PTO;
(b) Shortly thereafter, he approaches VC and/or Angels to fund a start-up based on the invention;
(c) With funds available, the inventor then attempts to get foreign patents on his business process invention as well, concentrating on countries that do approve business process patents, e.g. Australia ?
 
Given (a) and (b), would (c) make business sense? Or would it still be largely a waste of time, money and resources?  
 
My impression is that EU and Japan are not receptive to granting business process patent applications.  I am not up-to-date on this, but does anyone foresee any likelihood of change in EU in 2 to 5 years from now, i.e. they adopt the American criteria for granting business process patents?
 
Would an EU rejection of a business process patent application do more harm to the inventor than if the inventor had never bothered to apply to EPO (as a result of weighing the poor odds of success given EPO's treatment of business process patent applications)?
 
Is the EU patent examination process generally speedier than that of USPTO?  If so, would a denial at EPO have some negative impact on a pending US patent application, especially given the long duration/backlog of the application process for business process patents at the USPTO?  
 
I appreciate and welcome any and all comments and opinions.
 
 
Regards.
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PA
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Re: Are Foreign Business Process Patents Worthwhil
« Reply #1 on: Sep 24th, 2007, 10:15pm »
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If the business process is of exceptional merit, why not just file a non-provisional application?  Why bother with the provisional?
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IPL61003
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Re: Are Foreign Business Process Patents Worthwhil
« Reply #2 on: Sep 24th, 2007, 11:48pm »
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on Sep 24th, 2007, 10:15pm, PA wrote:
If the business process is of exceptional merit, why not just file a non-provisional application?  Why bother with the provisional?

Well, money is an issue here.  The provisional allows one to budget cost, gain some time (several months), seek outside funding, and with extra funds do the non-provisional justice by hiring an able patent attorney.
 
In the meantime the provisional plus NDA will enable potential VCs to more concretely evaluate the merits of the invention, while priority date preserved.
 
There may be other considerations besides the above that readily came to mind.
 
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PA
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Re: Are Foreign Business Process Patents Worthwhil
« Reply #3 on: Sep 25th, 2007, 10:15am »
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on Sep 24th, 2007, 11:48pm, IPL61003 wrote:
In the meantime the provisional plus NDA will enable potential VCs to more concretely evaluate the merits of the invention, while priority date preserved.

I figured you might say something like this, and this is the part I don't get.  Why would a quickly drafted provisional (and I assume you're trying to do this as cheaply as possible, or else you'd simply file the non-provisional) have anything to do with helping VCs evaluate the merits of your invention?
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IPL61003
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Re: Are Foreign Business Process Patents Worthwhil
« Reply #4 on: Sep 25th, 2007, 11:35am »
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on Sep 25th, 2007, 10:15am, PA wrote:

I figured you might say something like this, and this is the part I don't get.  Why would a quickly drafted provisional (and I assume you're trying to do this as cheaply as possible, or else you'd simply file the non-provisional) have anything to do with helping VCs evaluate the merits of your invention?

You can assume that it would be the inventors' best effort in terms of comprehensiveness of disclosure details and other aspects, sufficient for a provisional, but not in the best technical shape for a non-provisional.   So, it's not typically "quickly drafted" nor "as cheaply as possible" in the sense of being perfunctory or shoddy in effort.
 
The provisional would be done in such a way that the patent attorney will have a good work product to start with when it is time to file the non-provisional.
 
The provisional, along with additional business analysis and plan, will help a VC to understand in detail the nature of the invention, and to better assess its business and profit potential.
 
I hope I made it clear.  But I don't wish this tangential issue of whether a fund-limited inventor should nonetheless bypass the provisional, to detract too much from the other important questions and issues raised in the original inquiry.
 
Regards.
« Last Edit: Sep 25th, 2007, 11:45am by IPL61003 » IP Logged
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