Month: March 2010

Small Business Innovative Research Funding for Your Patentable Concept

Funding is a concern for many startups and small business creating new products.  The Small Business Innovation Research (SBIR) is a congressionally authorized, federal program that may be an option for funding for some of those businesses operating in select fields of technology. Two of the key driving policies of the program are to help the government agencies solve their problems and to bring innovative solutions to the public. Even though there is no man in a question-mark covered suit marketing the SBIR program, it is real and money has been and is currently being awarded. To be sure, the program is only available in select situations and is a difficult process. That being said, eligibility and successfully completing the process brings two key advantages:

  1. Funding – The recipient can receive from about $100k in early phases to slightly less than $1,000,000 throughout the phases of a project.
  2. Intellectual property – The recipient maintains substantial ownership of the involved intellectual property.

The program primarily operates at the agency level. An agency may have a very specific problem that needs to be solved or may be open to solutions to more broad problems. The range of problems is broad as some of the participating agencies include the Department of Agriculture, Department of Health and Human Services, Department of Defense, Department of Education, Department of Energy, Department of Homeland Security, Department of Transportation, and NASA. Those agencies create a diverse technological demand, which makes the SBIR program worth exploring for a lot of innovators. The titles of some prior awarded projects under the program indicate research across the spectrum and include:

  • Color Sorting of Post-Consumer Glass and Plastic Containers to Improve Their Recyclability
  • Improving Business-Consumer Commerce Via Mobile Social Networking Services
  • Household Hazardous Substances Data System
  • Hearing Aid Connectivity to Consumer Electronics
  • Device For Aiding Memory Dysfunction in Elderly
  • A Pollution Free Aerosol Dispenser

The first major step in seeking SBIR funding involves identifying the timing and  solicitation topics of the various agencies. The agencies themselves do not post all SBIR solicitations in one location. They are typically posted on the individual agencies’ websites. However, there are some sites to aid your cross-agency search. The Zyn website allows robust searching of SBIR solicitation data.

The next major step involves registering and completing a detailed application in response to a solicitation. The instructions vary by agency and are complicated. The instructions must be followed with diligence or the application may be rejected without substantial review. In fact, about half of applications are rejected because of noncompliance with the rules. The application will take significant time to complete, as it involves detailed project planning, staff information, commercialization strategies, cost information, and other data requirements.

The Small Business Innovation Research program is arduous, but can be worth the reward and should be explored as an option for funding your innovations!

Provisional Patent Applications Must Have Sufficient Technical Description

Frequently I hear the misstatement that one can just submit some notes and pictures of one’s product in a provisional patent application. People think this is so because the application is “informal” and will not be examined by the patent office. Unfortunately, I have seen multiple situations where an entrepreneur had an inadequate disclosure because “Someone said I could just submit my notes and sketches and I’m covered.” WRONG! Even though provisional patent applications are not directly examined by the patent office, the provisional should be thought of as a “patent-lite” and prepared diligently.

The goals of a provisional patent application include securing a filing date, which is a critical date in the process. Sufficient technical disclosure should include enough detail to disclose any sold or publicly used versions of the product, support the claims and description of the future nonprovisional application, and support arguments which distinguish the product from the prior art. Failure to disclose adequate information can place the filing date or the scope of patent protection in jeopardy.

Imagine the following scenario:

  1. Inventor creates a product on 1/1/10.
  2. Inventor publicly demonstrates the product on 6/30/10 to promote the product, thus starting a one year period in which the inventor must have a filing date.
  3. Inventor files an insufficient provisional patent file on 1/1/11.
  4. Inventor files a thorough nonprovisional patent application on 1/1/12.
  5. The patent office reviews the nonprovisional patent application  on 1/1/14 (it is common for a couple of years to pass before examination) and determines that the invention as claimed in the nonprovisional patent application is not supported by the provisional patent application.

One possible result is that the effective filing date is now the filing date of the nonprovisional patent application, which is 1/1/12. That filing date is more than one year after the inventor publicly used the product, thus the inventor is barred from receiving a patent (Even if the bar to patenting did not exist, any relevant technology created between the filing date of the provisional and the nonprovisional can now be prior art). Another possible result is that the issued patent is limited in scope to what was sufficiently disclosed in the provisional, thus it has less less value.

Don’t fall prey to the myth and take great care in the preparation of your provisional patent application.