Patent Attorney Video: When To File A Patent Application?
“When to file a patent application?”Watch the video to learn more.
The “old” patent law was a first-to-invent patent filing system. Here’s an example. I made my invention today and did not file a patent application right away, and another inventor came up with the same idea tomorrow or even 6 months later. They didn’t steal my idea. They came up with that invention on their own. Let’s say they filed a patent application before me, I would still have priority at the Patent Office because I invented first. So when to file a patent application was not as important under the old law.
But that all went away in 2013.
Now the US Patent Law is a “First-To-File” system.
So get that out of your head. It is no longer enough to simply write down your invention and mail it to yourself (aka “a poor man’s patent“) to preserve the postmark as the date of your invention. It does not matter if you invented first. It does not matter if you invented 1 day or 10 years before someone else if they file their patent application before you. All that will matter is who files their patent application with the US Patent Office first.
The answer is as soon as possible under the new patent law. If you delay, someone else may file before you, and then whoever filed their patent application first would have priority to the patent application. In short, talk to a patent attorney as soon as possible and get that all-important filing date at the US PTO.
I hope this answers your question. Remember, the information in this video is only intended as general information and is NOT LEGAL ADVICE.
In this video, I am going to answer the question: Should you do your own patent search?
Doing your own Patent Search (aka – Prior Art Search)
Read the transcript.
Can an inventor do his or her own patent search? The answer is yes. You can do your own patent search. In fact, it is often a good idea to do your own patent search. Find out if your product already exists. Look on Amazon.com and other online retailers. You can use your favorite search engine (Google, Bing, or Yahoo) to search for your invention.
You search Google Patents for free!
In fact, Google has their own patent search where you can search specifically for issued patents and published patent applications. Disclaimer – I do not endorse Google Patents – information may not be up to date.
You can also do your own patent search on the US Patent Office website
You can also use the free patent search on the US Patent Office website. Here you can search for both issued patents and published patent applications, and this is generally going to be the most up-to-date database. Note, patents are published and issued by the US Patent Office every Tuesday. I believe you can search patents here going back to the first patent issued. The US Patent Office started publishing patent applications in March 2001.
There are also some paid databases for searching patents. You can also visit the US Patent Office in person and search their library of issued patents and published patent applications.
And don’t forget to search foreign databases. Most Patent Offices publish patent applications and issued patents, and most of these are available on free databases.
Should you do your own patent search?
It depends on your comfort level with your ability to use online databases and search on your own. Which database should you use? You may want to search more than one database.
Can you make a decision whether to file a patent application based only on your own patent search? I suggest at least talking to a patent attorney before making a decision to file a patent application. Even if your product seems to already be on the market, there may still be the possibility of filing a patent application.
A patent attorney should always interpret the search results – even the results of your own search. What if you find something and you think it’s too close to your invention? You may still be able to apply for a patent. You may be able to apply for narrow protection for a particular aspect of the invention.
I typically recommend that my clients do a professional patent search. Learn when to do a prior art search in this video. A patent attorney has the resources to do a patent search quickly, efficiently, effectively, and be able to interpret the references for you and give an opinion whether to file a patent application for an invention.
Be sure to discuss a professional patent search with your patent attorney.
Patent, copyright, or trademark are all different types of intellectual property (IP) protection. So it is important to understand the differences before deciding which type of protection is best. In some cases, more than one type of protection may be available. It depends on what needs to be protected. Learn more about intellectual property (IP) in our patent attorney videos.
Should you file a patent, copyright, or trademark?
Let’s start with the basic definitions. Visit the U.S. Patent Office glossary for more definitions of important intellectual property terms.
Patents grant the exclusive right to make, use, and sell an invention.
Patent rights are granted by the government. As such, patent rights are typically limited to a particular country. For example, a U.S. patent is granted by the U.S. government. A U.S. patent grants the patent holder the exclusive right to make, use, and sell and invention in the United States. However, a U.S. patent has no effect in other countries. It may be important to file for a patent in more than one country. Learn more about patents.
Copyrights protect original works of authorship.
Examples of copyrights include literature, drama, music, paintings, sculptures, and audio visual works (for example, movies). Copyright protection grants the owner exclusive rights to distribute, make copies, and to make derivative works. Copyright does not protect ideas or inventions. Copyright also does not protect titles, recipes, or slogans.
Trademarks identify the source of goods or services.
A trademark is any word, phrase, symbol, or graphic design (or a combination) which identifies the source of goods or services. A trademark does not necessarily grant exclusive domain over a word or combination of words. Rather, the trademark has to be used to identify the source of goods or services. Learn more about trademarks.
Some words or words cannot be protected by trademark. Generic words cannot be protected by trademarks. An example of generic words that cannot be protected by trademark is “gas station” when used to identify a gas station.
So now that we have a better understanding of the differences between a patent, copyright, or trademark, it should be easier to decide which type of intellectual property protection to apply for.
A single product may be protected by one or all of patent, copyright, or trademark protection.
A product has is an invention may be subject to patent protection. For example, a toothbrush might be patentable (design patent or utility patent – or both). That same toothbrush may be packaged with illustrative instructions for proper use. Those illustrations may be subject to copyright protection. The toothbrush may be marketed under a name for the toothbrush. That name may be subject to trademark protection.
Be sure to consider all aspects of any new product to ensure that everything has been protected.
Today I’m going to answer the question – When should a prior art search be conducted?
Patent Attorney Video Series – Question 9
Read the transcript.
When should an Inventor do a prior art search?
A prior art search is not required. That is, even if you do a prior art search, and you cite any references you find to the Patent Office for the Examiner to consider (this is required by law!), the Examiner will still do their own search for your invention.
So a prior art search is not required. Is it recommended? Yes – I usually recommend a prior art search. But there are times I don’t recommend a prior art search (or at least I recommend that my client file a patent application before doing a prior art search). For example, if there is a pending bar date.
I talked about bar dates in another one of my other videos, so I won’t waste time talking about that again here. But if you’re up against a bar date, you’ll need to contact a patent attorney immediately and get your patent application filed as soon as possible before it’s too late! Get in to see a patent attorney right away. When you call them to make an appointment, tell them that you’re up against a bar date, and ask for them to get you in as soon as possible – before it’s too late! (I can’t emphasize this enough).
If you’re up against a bar date, for example, if the bar date is in 2 weeks, you don’t want to waste your time doing a patent search. Chances are, getting the results back is just going to eat up that time, and then it’s going to be too late. Then it won’t matter what the results of the patent search are, because if you’re up against the bar date, you’ll be out of luck if you go past that.
In those situations, I’ll often say not to bother with the patent search (at least not right away). Instead, get that patent application (at least a provisional patent application) filed to lock down that filing date.
So when should an inventor do a prior art search? Just about any time before making an investment in the patent process. The patent process is expensive. You don’t want to waste money filing patent applications on things that are already out there.
I usually recommend my clients do a patent search, get the results, and then make a better decision. It may also help your patent attorney write a better and stronger patent application.
You may want to file at least a provisional patent application first.
It’s not only bar dates you need to be concerned with. Remember the new patent law is a “First-To-File” system – see my video on the new patent law and how it affects inventor rights. Or read this article.
If you file a provisional patent application, then you can do a prior art search. You have 12 months after filing the provisional patent application to file a full utility patent application. So maybe 6 or 8 months after filing the provisional patent application is a good time to do a prior art search. That helps you decide whether to move forward with the full utility patent application.
In summary, a prior art search is not required. It is generally a good idea to do a prior art search. But the timing of the prior art search is what’s important. There may be times when it’s just not feasible to do a prior art search before filing a patent application. Be sure to discuss your matter with a registered patent attorney to help you determine when it is best to do a prior art search.
I hope this answers your question. Remember, it is important to work with an attorney to file a patent application with the US PTO within the time limits set by the Patent law, or you may lose the right to patent your invention.
