Patented in Record Time
Martensen used a unique strategy and examiner insight to help REALM™ secure its IP quickly.
Patented in Record Time: Unique Strategy and Examiner Insight Helps REALM™ Secure IP Quickly
What if real estate agents could pair high-net-worth individuals with expensive properties based on the person’s lifestyle and interests rather than the home’s curb appeal and square footage? That was the question posed by highly successful realtor Julie Faupel and the idea that drove her and the team of software developers she hired to create REALM.
“Real Estate And Lifestyle Meet,” is an online matchmaking tool used by a select group of buyers’ and sellers’ agents to help facilitate multi-million-dollar real estate transactions based on a lifestyle shared by a person and a property. And soon after its launch, there was already a long waiting list of top real estate professionals nationwide eager to be granted access.
How to Patent the Unpatentable
One of the fundamental problems with trying to secure intellectual property (IP) such as that being developed by REALM is that if your invention is designed to “organize human affairs” or “manage and control economic activity,” it’s not patentable. So when approached by Julie, our first challenge was figuring out what about REALM was innovative. What made the software different from similar systems and would enable Julie to obtain a patent?
The second challenge was that Julie and her business partners wanted to know quickly whether what we had identified as potentially patentable, actually was. Unfortunately, once you file a patent application, the description of the invention is, so to speak, set in stone. To address this restriction, we decided to submit a provisional application and immediately file for expedited examination for a non-provisional based on that provisional, to get feedback from the United States Patent and Trademark Office (PTO) examiner within six months, correct the problems, and file a new application, resolving any questions, and abandon the first. Costly, … perhaps. Effective … absolutely.
We also convinced Julie to allow us the latitude to do some research on the examining attorney we’d be working with. By researching the examiner’s past decisions, we could better understand what they like and dislike in a patent application and cater ours to align with their approval criteria.
Patent, Trademarks, and More for REALM
As a result of our strategy, nuanced understanding of how the PTO works and research, we obtained an issued patent for REALM within nine months, which is absolutely unheard of. The period from filing date to issuance date for similar software applications can easily be five years.
Not only did the patent (US 10,621,649 B2) ensure that REALM’s IP was protected from the many other companies looking to cash in on Julie’s idea, it became one of the selling points as they worked to drum up interest in their service. The fact that the software could be patented was prima facia evidence that it was innovative and a strong incentive for realtors to get involved.
Add with our assistance in gaining REALM’s trademarks and draft licensing, confidentiality, marketing and other agreements, Julie was on her way. Ultimately, we armed Julie and REALM with everything needed to fully and safely leverage her idea to the benefit of all stakeholders.