In this video, I answer a founder’s question about sequencing: if you plan to pitch investors, show a prototype, run a crowdfunding campaign, or take pre-orders, which of those steps can affect your patent rights, and what should come first? My answer is that the first patent for startups, at least an attorney-drafted provisional patent application, should be on file before any of them.
Founders usually think of a patent as something they’ll get to once the money comes in. The problem is that the steps that bring the money in are often the same steps that can take a patent off the table.
Which early steps can affect your patent rights
Any disclosure you make can matter. That includes:
- A pitch to an investor
- A Kickstarter or other crowdfunding campaign
- Pre-orders or a product page on a store
- Sharing the design with a third-party manufacturer or prototype manufacturer
One of the saddest conversations I used to have went like this. A founder would run a successful Kickstarter campaign and come to me saying, “Now I’m funded to the point where I can actually talk to lawyers and do a full patent project.” And I’d have to tell them that the Kickstarter campaign made it so they couldn’t get a patent anymore, because they made a public disclosure before they filed a patent application.
If you don’t have an earlier filing that predates your disclosure, you might not be able to get a patent at all. For background on what counts as disclosure, see What Is Patent Disclosure and What Does It Mean for My Patent.
Why I don’t tell founders to rely on the 12-month grace period
U.S. law has a one-year grace period for certain disclosures made by the inventor, set out in 35 U.S.C. § 102(b)(1). I’ve seen bad things happen when founders lean on it, for two reasons.
Crowdfunding timelines run long
A well-planned and funded Kickstarter campaign often takes more than 12 months from start to finish. By the time a founder is ready to talk about patents, the clock may already be past the window.
Other people can disclose first
People watch what’s happening on Kickstarter. Some reinterpret it and launch their own campaign, or put their own product on a Shopify store that overlaps with 99% of what your product does. That 99% might not be covered by the grace period, because you didn’t make that disclosure. They did. If their disclosure predates your filing, the grace period might not help you.
So if you think you’re going to use the patent system to protect a product or concept, file a patent application first.
Start with an attorney-drafted provisional patent application
A provisional is the first phase of the process and the least expensive part of it. It also has a practical advantage: if you file a provisional and decide to abandon it before moving to the next, more expensive phase of patent prosecution, it isn’t published. The USPTO explains on its provisional application page that a provisional lasts 12 months and that you need to file a corresponding nonprovisional application within that period to keep the benefit of the earlier date. Our provisional patent application guide and provisional vs. non-provisional comparison cover the mechanics in more detail.
What a provisional typically costs
My ballpark range is $4,000 to $6,000. That covers the patent figures, attorney time, filing fees, and paralegal time. For that, you get a well-drafted provisional where we strategically analyze the invention, position it against the market, and understand what you want to do so we can set up a future filing.
Two problems I see with self-drafted and AI-drafted provisionals
People often come to me relying on a provisional they drafted themselves, and more and more of them used generative AI to do it. That creates problems.
AI use can create an earlier reference
When you run something through AI, it can become indexed by Google, and that can become a reference that predates the filing of your patent application. That can affect whether you can get a patent. How much risk you face depends on the tool and how you use it, which we break down in Are There Risks Using AI (and ChatGPT) to Draft a Patent Application?
Patent pending isn’t the same as coverage
Patent applications are the most complex documents in all of law. If you don’t articulate the invention smartly and strategically, you might say you’re patent pending on a feature or on the whole product, but that reliance is misguided. You may not have met the requirements of 35 U.S.C. § 112 to fully enable the invention, or you may not have disclosed the best mode of using it because you don’t know the rules. You can say you’re patent pending without having the coverage you need to protect your product in any valuable way. More on that in What “Patent Pending” Really Means for Your Invention.
What your provisional needs to support a later filing
The first law I point to is 35 U.S.C. § 112, which covers enablement. Even in a provisional filing, the invention has to be described so that a person of skill in the relevant art can make or use what you’re describing.
The law is the framework. Inside it, you can characterize your invention one way, or you can characterize it several ways, forecasting where the invention is going. Describing the invention that way gives you more of a halo effect, which makes it harder for competitors to design around your patent portfolio. That’s another critical reason to work with a lawyer on the application. If a client has a provisional they drafted without at least the help of a lawyer, I’ll often say I’m not going to work from it. For how we think about design-arounds, see our competitive patent design-around page.
A filed application gives you leverage with investors
Investors, and VCs especially, typically don’t take conversations under NDA. Without a filing, an investor can listen to your pitch and, with little consequence, tell their other portfolio companies that you’re doing something competitive and that they’d better move before you file or raise money and become a competitor. A patent application on file takes away much of that consequence-free option. That’s one more reason the filing should come before the pitch. Our post When You Must File for a First Patent Application covers the business side of timing.
Founder takeaway: the order of operations
- File first. Get at least an attorney-drafted provisional on file before you pitch, crowdfund, take pre-orders, or send drawings to a manufacturer.
- Don’t plan around the grace period. Crowdfunding can outlast it, and a copycat’s disclosure isn’t yours.
- Budget for it. A well-drafted provisional typically runs about $4,000 to $6,000, and it’s the least expensive phase of the process.
- Be careful what you put into AI tools before you file.
- Draft for where the product is going. An enabling disclosure that forecasts your next versions is harder to design around.
FAQ: filing a first patent for startups
Can a Kickstarter campaign stop me from getting a patent?
It can. A crowdfunding campaign is a public disclosure. If you haven’t filed a patent application before it goes live, you may not be able to get a patent on what you showed.
Can I rely on the one-year grace period instead of filing first?
I don’t recommend it. Campaigns often run longer than 12 months, and if someone else discloses a similar product before you file, the grace period might not protect you.
How much does a provisional patent application cost?
My ballpark is $4,000 to $6,000 for a well-drafted provisional, including patent figures, attorney time, filing fees, and paralegal time.
Is a provisional patent application published?
No. If you abandon a provisional before moving to the next phase of prosecution, it isn’t published.
What does a provisional need to include?
It needs an enabling disclosure under 35 U.S.C. § 112, so a person of skill in the field can make or use the invention. A strong one also describes the directions the invention is likely to go.
Plan your first filing with Schell IP
Schell IP works with startup founders, independent inventors, and product teams. You can also browse the Patent Resource Library. If you’re getting ready to pitch, crowdfund, or prototype, book a free consultation or call (720) 419-1296 before you share the invention.
