Deciding When to File a Patent

The instinct to “patent everything” is common, especially among technical founders. But not every improvement deserves to be captured in a patent. Filing too broadly or too often can dilute focus, drain capital, and create unnecessary exposure during diligence.

Founders should focus patent filings on innovations that are novel, non-obvious, and material to business value. This means prioritizing:

• New approaches that competitors would likely copy if unprotected
• Inventions that support future licensing, partnerships, or exclusivity
• Technical differentiators that affect product-market fit or valuation

A minor software optimization or an interface tweak may improve the product but often lacks the inventive step needed for strong protection. In contrast, a new architecture, manufacturing technique, or data processing method may present a patentable—and defensible—advantage.

Understanding the distinction between incremental improvement and core innovation is critical. Early discussions with patent counsel can help founders evaluate whether an idea rises to the level of non-obviousness and how it fits into a broader claim strategy.

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Strategic Use of Provisional Patent Applications

Balancing Agility and Coverage in IP Filing Decisions

Provisional patent applications are one of the most versatile tools available to startup founders navigating early-stage innovation. They allow for speed, cost efficiency, and flexibility—all essential attributes when a company is developing technology rapidly, iterating on product-market fit, or preparing for investor diligence.

Unlike non-provisional (utility) patent applications, provisionals do not require formal claims or examination, and they do not start the 20-year patent term. What they do offer is the ability to establish an early priority date for disclosed subject matter. This is critical in both the United States and abroad, where filing date often determines who has the legal right to the invention.

As a founder, your filing strategy should reflect the pace of development, the level of technical clarity, and your business timeline. There are two common approaches to using provisionals, each with distinct advantages and tradeoffs.

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Rolling Provisional Filings — A Dynamic, Iterative Approach

In many early-stage companies, product development is not linear. Ideas evolve through prototyping, customer feedback, new hires, and investor input. The “rolling” provisional strategy allows startups to capture each significant technical advancement as it emerges.

Instead of trying to anticipate the final product at the outset, this strategy embraces the evolutionary nature of innovation by filing a new provisional application each time an inventive milestone is reached.

This approach is especially valuable when:

• The team is developing several interrelated technologies over time (e.g., hardware, firmware, software stack)
• The company expects to disclose elements of the product to third parties before everything is finalized
• There is uncertainty about which aspects will ultimately prove core to the business or market differentiation

Each new provisional establishes a separate priority date for the material disclosed in it. Toward the end of the 12-month window, a single non-provisional application can be drafted that draws from the full set of provisionals, consolidating and refining the claim set to cover the most commercially valuable inventions.

Key Advantage: Preserves flexibility, allows staged protection of innovation, and provides a more robust basis for eventual claim drafting.

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Omnibus Provisional Filing — A Comprehensive Single Filing

In some cases, the startup may already have a relatively mature product concept or a well-scoped set of inventive features at the time of initial filing. Here, it can be efficient and strategic to file a single, broad provisional application that covers all identified inventive subject matter.

This “omnibus” provisional can serve as a foundational document from which multiple non-provisional applications may later be derived, each focusing on a different aspect of the product (e.g., system architecture, user interface, backend optimization, etc.).

The omnibus approach is best suited when:

• The core technology has been architected holistically
• The startup wants to protect multiple related inventions under one umbrella
• There is a pressing timeline, such as a public product launch, demo day, or investor pitch, that requires broad coverage quickly

This strategy tends to be more streamlined from a drafting and cost perspective, though it may be less flexible in accommodating refinements that arise after the filing.

Key Advantage: Establishes early priority across a wide scope of innovation and supports cohesive claim strategy without needing multiple filings.

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Practical Considerations in Choosing a Strategy

These two strategies—rolling and omnibus—are not mutually exclusive. In fact, many sophisticated early-stage companies combine both approaches. A founder might file a broad omnibus provisional shortly before launch, then follow it with more focused provisionals as additional refinements emerge.

Whichever strategy you choose, what matters most is understanding the implications of timing, disclosure, and content. Provisional applications do not automatically confer rights—they must be well-drafted, technically complete, and followed by a timely non-provisional filing to be effective.

Most critical considerations include:

• Each provisional only protects what it discloses. Vague or incomplete descriptions may not support later claims.
• Public disclosures (e.g., investor pitches, demos) can trigger statutory bars. A filed provisional is your best defense.
• The 12-month deadline to convert provisionals is strict. Missing it means losing the benefit of the priority date.

In short, provisional applications offer startups a unique opportunity to align their IP protection with real-world development cycles. By choosing the right strategy—or combining both—founders can build a defensible patent portfolio without sacrificing speed, budget, or product agility.

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Patents vs. Trade Secrets: Knowing What Not to File

Some of the most valuable intellectual property never appears in a patent database. Trade secrets—formulas, algorithms, source code, processes—can provide durable competitive advantage if handled correctly.

If an innovation is difficult to reverse-engineer and does not need to be disclosed publicly for regulatory or enforcement purposes, it may be better protected as a trade secret. Filing a patent requires full disclosure, which in some cases could enable competitors to replicate the functionality or workaround the claims.

For example, a startup developing a proprietary machine-learning ranking algorithm might patent the training method or data architecture, but keep the specific model tuning or weight matrices secret. Protecting this information internally through access controls, NDAs, and documented policies is essential to preserving trade secret status.

Choosing between patent and trade secret protection is not binary. Many IP strategies incorporate both—patenting the public-facing invention while safeguarding the proprietary details that give it power.

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Trademark Filings: Early and Proactive

While patents protect inventions, trademarks protect brand equity. A strong name, logo, or product mark becomes a powerful asset as your startup grows—but only if you lock in rights early.

Filing a federal trademark application in the U.S. gives your company presumptive nationwide rights, even before launch, based on an intent-to-use. This protects you from being forced into a costly rebrand if a conflict arises down the line.

Founders should not wait until after launch to secure branding elements. Trademark filings are relatively low-cost and often serve as an early signal of professionalism and preparedness to investors.

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Avoiding Statutory Bars and Public Disclosure Pitfalls

One of the most common missteps in early-stage IP strategy is misunderstanding what constitutes a public disclosure—and how it can affect patent rights.

Under U.S. law, you have 12 months after a public disclosure (e.g., a product demo, pitch event, website launch, blog post) to file a patent. After that, you lose the right to patent the invention in the U.S. entirely. In most countries outside the U.S., any public disclosure before filing permanently bars patentability.

For startups that move fast and talk often, this is a serious risk. To mitigate:

• File a provisional application before significant disclosures
• Use non-disclosure agreements (NDAs) when appropriate
• Avoid publishing technical details online or in pitch decks until filings are in place

Managing these timelines carefully is essential for preserving both U.S. and international rights.

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Getting Inventorship Right

Inventorship in patent law has a precise legal meaning—it’s not the same as ownership, contribution to product development, or company role. Only individuals who contributed to the conception of at least one claim are inventors. Including someone who didn’t contribute—or excluding someone who did—can invalidate a patent.

Founders should work with counsel to assess inventorship at the time of filing. This is especially important when multiple team members, contractors, or collaborators are involved in product development. Get assignments signed early and cleanly, especially before funding events.

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Other Critical Considerations

• IP ownership should always be assigned to the company, not retained by the founders or inventors individually. Investor diligence will flag missing or incomplete assignments as a red flag.
• International filing strategy should be considered at the outset if your business has global ambitions. Filing under the Patent Cooperation Treaty (PCT) within 12 months of a U.S. application preserves the option to file in most major markets.
• Build an internal culture of IP awareness. Encourage engineers and product leads to document inventive ideas and flag them for review. A strong IP pipeline begins with early identification.

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Final Thought

Your intellectual property is not just a legal asset—it’s a business lever. The decisions you make in the first 12–18 months around what to protect, when to file, and how to position your innovation can directly impact investor confidence, market exclusivity, and valuation.

By approaching IP with strategic clarity, founders can move beyond check-the-box filings and instead build an IP portfolio that reflects the true strength—and potential—of the company.

If you’re building something new, your IP strategy should reflect the value and vision behind it. At Schmeiser Olsen, we work with founders at every stage to help identify, protect, and leverage their intellectual property—from early filings to investor diligence and beyond. To discuss how we can support your growth, get in touch with our team for a strategic consultation.

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