Parts of a Patent Application – Patent Title

You may wonder how to name your invention and what rules the US Patent Office requires for the patent title.

How to title your patent might seem simple at first, but it really can be difficult. Like a book, you probably have the main idea for your story. When it comes down to naming your invention, this can be very challenging. While your patent attorney can help you choose the best title for your patent application, here are some guidelines to help you understand the process better.

Guidelines for naming your invention – the patent title.

You probably want your title to be somewhat unique. This can help to market your product and excite your consumers.

In addition, you want the Patent Office Examiner to approve the title for your patent application. You want to make a good first impression because this will be one of the first things that the Examiner sees when looking at your patent application.

If the applicant does not use a satisfactory title, at the time of allowance for the patent application, the examiner may change the patent title by an examiner’s amendment.

What are the Patent Office requirements for the title?

The patent title should be descriptive of the invention to which the claims are directed. If the title is not considered descriptive, the Patent Office Examiner may require a new title.

The patent title must not exceed 500 characters in length and must be as short and as specific and descriptive as possible. The title should be one that is easily searchable using a few key words during a patent search.

The Examiner may require a change to the patent title that results in slightly longer titles. Typically, any loss to a brief title will be more than offset by the gain in its descriptive value in indexing, classifying, and searching.

Certain words such as “new,” “improved,” “improvement of,” and “improvement in” are not considered to add any value or adequately describe an invention. Therefore, these types of words should not be included in the title of the invention, and often will be required to be removed from the title before the Examiner will allow a patent to issue. Likewise, articles such as “a,” “an,” and “the” should not be included as the first words of the title.

The Patent Office also has restrictions on the type of characters that can be used in the patent title. Any character that cannot be captured and recorded in the Patent Office’s automated information systems may not be reflected in the US Patent Office records. Use the US PTO Character Checker to automatically check whether the characters in your patent title are valid.

Where should you include the title of your invention?

The patent title should be included on the Application Data Sheet (ADS), and should also appear as a heading on the first page of the specification of the patent application.

When applying for a patent, it is best to hire an attorney to guide you through the process, including helping you decide on a good and sufficient title to your patent. Here are some tips to find a good patent attorney. I hope this helped you understand the patent title.

Budget Patent Search

The first thing you want to do when you have a new idea for an invention is a patent search. You’ve heard it time and again. But what how can you afford a patent search? Let’s talk about a budget patent search.

There are numerous resources on the Internet for conducting a patent search. Some charge, and some are free.

Basic Search (Google, Yahoo!, Bing)

Of course, the first thing that comes to mind when considering a patent search on a budget is one of the major Internet Search Engines, like Google, Yahoo!, or Bing. Even searching Amazon, EBay, and other retailers (Walmart.com, Homedepot.com, etc.) is a good idea. And this is a good place to start. If you find something identical to your invention already exists, then there is no point spending any money for a professional patent search.

But inventors get into trouble when they don’t find it on their Internet search and conclude that it doesn’t already exist.

Free Internet Search (Google Patents)

It seems that every inventor has heard of Google Patents. And one would think that the ultimate Internet Search Engine must also be the ultimate patent search, right? Wrong. I’ve often found patents on the US PTO that I cannot find on the Google Patent Search. And this is when I know the patent exists – literally I am putting the issued patent number in, and not finding it on Google Patent Search. Just imagine if I’m doing a general keyword search.

Free Patent Search – Official Patent Search Databases

The only true authority for patents issued by the US government is the United States Patent Office. The US PTO publishes all issued patents going back to the beginning of the US Patent System. All new patents are published here every Tuesday. And all patent applications that are allowed to be published at 18 months, are published here every Tuesday.

But even this free database is not definitive.

You might ask then, what is definitive?

What about the European Patent Office patent search database?

What about the World Intellectual Property Organization patent search database?

While these are also good sources to check – in addition – none of these databases by themselves are definitive.

Well, there really is not definitive source. That’s because a Patent Office Examiner can reject a patent application based on any prior art that the Examiner finds. That includes social media (Facebook, YouTube), journal articles, college thesis, and any number of sources.,

So what is an inventor on a budget to do?

Is there such a thing as a budget patent search?

Trenner Law Firm offers a budget patent search. For just $500 you will get a patent search directed specifically to your invention, along with copies of all relevant references we find, and a full attorney opinion explaining how the references found during the search could be interpreted by the Patent Office Examiner to grant or deny a patent for your invention. Learn more about the Trenner Law Firm Patent Search.

Professional Patent Search Saves Time and Money

In today’s competitive landscape, it is crucial to act fast and protect your invention with a patent. But filing a patent application can be expensive. And if you file a patent application for an invention that already exists – you will quickly learn that that you have wasted your time time and money that could have been better spent taking a different product to market. Fortunately, a patent search can tell you in advance whether you should pursue a patent for your invention.

Let’s look at some ways a professional patent search saves time and money.

Need for a professional patent search . . .

Most inventors believe that their patent does not already exist, simply because they have never seen it. Sometimes, an inventor will ask their close friends or family for confirmation. If no one they ask has seen the product, then the inventor (often incorrectly) assumes that their invention does not already exist.

Have you ever noticed that when you buy a new car – all of a sudden you see that car everywhere you go? No, everyone did not run out and purchase the same car you just bought. What you are experiencing is familiarity. Companies rely on familiarity (or brand recognition) to sell products to you every day. In other words, before you purchased your car, you may not have been familiar with that type of car and so you did not think about that car. Because it was not forefront in your thoughts, you did not “see” that car (even though it was probably all around you). But after purchasing your new car, it is now front and center in your thought (it is familiar). So everywhere you look, now you notice your type of car.

The same thing happens with inventions. When you ask your friends or family if they have seen anything like it – their answer will almost always be “no.” But that’s because they have not been looking for it. So just because your and your friends and family have never seen anything like your invention, that is not confirmation that it does not already exist.

So how do you avoid filing a patent application for an invention that already exists? Do a patent search.

What are your options when it comes to a patent search?

1) Free Internet Search.

Everything can be found using Google, right? While it is generally a good idea to do a general internet search (Google or other favorite search engine, Amazon.com, etc.), this is far from conclusive. At best, you find that your invention already exists. At worst, you don’t see your invention and mistakenly believe that it does not already exist. Thinking of doing your own patent search? Watch this patent attorney video first to find out if that is a good idea.

2) Check Free Online Patent Databases.

There are several free online patent databases. Google Patents is perhaps the easiest. But this database is not updated regularly. Other free databases include the US Patent office patent databases (be sure to search both published applications and issued patents). You can also use the European Patent Office (ESPACENET patent database) to search pending and issued patents in other countries. Unfortunately, these databases are difficult to navigate and it is easy for the inexperienced inventor conducting his or her own patent search to miss important patent documents.

3) Get a professional patent search through a patent attorney.

A patent attorney typically works with a professional search firm. The search firm conducts the patent search and provides the relevant references to the patent attorney. The patent attorney evaluates the references based on an understanding of both the invention and the patent law. A good patent search also includes an opinion letter that explains why your invention can be patented, or whether your invention is not a good candidate for filing a patent application.

What to expect from a professional patent search.

If this is your first time inventing something, here is a brief overview of what you should expect from a professional patent search:

· A thorough search of a trusted patent database.

· Professional analysis by an attorney who understands the patent laws and has worked with Examiners at the US Patent Office to get many patents issued for other clients.

· A full written opinion discussing the merits of your invention, including all differentiators and what makes your product unique.

· Copies of all pertinent references found during the search so that you can confirm the attorney’s recommendation.

· A fair price.

Benefits of a professional patent search . . .

· The patent search may reveal other products that you were not already aware of.

· A professional search firm will be able to zero in on features of your invention that might already be described in other patents – even if those patents are for different types of inventions.

· A patent attorney can determine whether there are any features of your invention that might be patentable.

· Determine whether you are wasting your efforts trying to patent something that already exists.

· Find out if your invention is so close to something that already exists that the Examiner would likely reject your patent application.

The patent process is a big investment of your time and money. Make sure you’re not wasting your time or money trying to patent an invention that already exists.

If you would like to learn more about having a patent attorney conduct a professional patent search for your invention, give us a call at (720) 221-3708, or Email Us. Or start today by visiting our online patent law firm.

How Provisional Patent Application Can Protect Your Invention

It is crucial to protect your invention if you want to compete in today’s marketplace. That means getting a filing date with the US Patent Office right away so that your competitors don’t get rights to your invention before you. Fortunately, there is a fairly quick and relatively inexpensive way to do this.

Let’s look at how a provisional patent application can protect your invention without costing thousands of dollars.

Need for a provisional patent application. . .

Some inventors simply do not have the money to hire a patent attorney and will attempt to file their own patent application. The Do-It-Yourself patent application is almost always a bad idea. Mistakes are common. At best, the do-it-yourself filer ends up hiring a patent attorney to correct the mistake. This often costs more than it would have cost to hire a patent attorney from the start. At worst, it is too late to correct the mistake. The inventor loses some or all rights to patent their invention. Learn about one common mistake in our patent attorney video.

What are your options when it comes to filing a provisional patent application?

1) Mail a description of your invention to yourself (DO NOT DO THIS!!!).

Sometimes called the “Poor Man’s Patent” – this never was a good idea. Basically, people thought if they could show a record of prior invention that they could file a patent application someday in the future (for example, when they have more money), and get a patent. While the US Patent Law used to be a first-to-invention, this approach was still fraught with pitfalls and many an unwary inventor lost some or all rights to their invention by doing this. But today, it is even more critical that NO ONE EVER DO THIS again. In 2013, the US Patent Law changed to a First-To-File system. That means – whoever files their patent application first – regardless of whoever else may have invented it before that – will get the patent. You will lose rights to your invention if you are ‘Second In Line’ (so to speak) at the Patent Office. Learn about this common mistake in our patent attorney video.

2) Pro Bono Patent Programs.

Not everyone can hire a patent attorney. There are pro bono programs for inventors who qualify. See this article in the Denver Post. But there are strict income requirements. I volunteered with Mi Casa in the past, and it is a great program run by great attorneys Please contact them if you think that you might qualify. (Disclaimer – I do not currently participate as I have other volunteer commitments at this time). But this program is truly intended to help low income applicants, and not anybody who doesn’t want to spend the money to hire a patent attorney.

3) Do-It-Yourself (DIY) Patent Application.

There is no requirement that you hire a patent attorney to file a patent application for your invention. You are allowed to file a patent application on your own behalf. But this is almost always a bad idea. The patent process is complicated, and seemingly simple mistakes can mean losing all rights to your invention. Even the US Patent Office warns against trying to file your own patent application.

4) Work with a patent attorney to file a provisional patent application.

An experienced patent attorney can prepare and file a provisional patent application for you fairly quickly and relatively inexpensively. A patent attorney understands the legal requirements to write a comprehensive patent application that will protect your legal rights to your invention. In addition, a patent attorney can advise you regarding when to file a full utility patent application and any foreign filings (filing a patent application outside of the U.S.).

What to look for when filing a provisional patent application.

If you are reading this, you likely have never filed a provisional patent application before. Here is a brief overview of what you should expect from your patent attorney when filing a provisional patent application.

· Legal advice from an experienced patent attorney who understands the patent process.

· Someone who understands your invention, and how best to describe important features you want to protect.

· An opportunity to review and comment on the provisional patent application before it is filed.

· An overview of all important deadlines once the provisional patent application has been filed.

Benefits of filing a provisional patent application. . .

· A filing date with the US Patent Office. This ensures that you will receive the benefit of the First-To-File patent law if someone else files for the same or similar invention after your filing date.

· You can publicly disclose your invention after filing a provisional patent application, without losing any rights to file a utility patent application in the U.S. Some countries do not recognize the provisional filing date – you will need to file directly in those countries before you publicly disclose your invention.

· Most foreign countries will recognize the filing date of your provisional patent application if you decide to file outside of the United States. Certain deadlines apply, so be sure to check with your patent attorney if you want to file outside of the U.S.

· The provisional patent application is a property right. You can sell or license your invention and rights to the provisional patent application once it has been filed at the Patent Office.

Developing a product and bringing it to market can be challenging. But protecting legal rights to patent your invention doesn’t have to be.

If you would like to learn more about having a patent attorney file a provisional patent application for your invention, give us a call at (720) 221-3708, or Email Us. Or start today by visiting our online patent law firm.

Patent, Copyright, or Trademark?

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.

Can I do my own patent pending search?

I am often asked by inventors “Can I do my own patent pending search?” The answer is yes, but read this first.

Can I do my own patent pending search?

Inventors can certainly do their own search of the U.S. Patent and Trademark Office database for both pending patent applications and issued patents. The search is free, and can be accessed online at the US PTO website. This site includes several resources for inventors, including a video titled “How to Conduct a Preliminary U.S. Patent Search: A Step by Step Strategy.” The site also links to several other resources, such as the USPTO Patent Full-Text and Image Database (PatFT) for searching issued patents; and the USPTO Patent Applicatoin Full-Text and Image Database (AppFT) for published applications. There is also a link to Search International Patent Offices.

Free and Paid Resources to do a patent pending search

There are other online resources for searching patents, including the Google Patent Search, which can be easier in some ways, than using the US PTO website. Other resources, both free and paid, are also available.

Should an inventor do their own invention search? That depends. How comfortable are you using search databases. Are you familiar with how to use search operators such as Boolean operators (AND – OR) to broaden or narrow your search? Are you familiar with all of the terms that might be used to describe the invention? Are you familiar with legal terms that may be used to describe the invention?

Finding prior art is easy – but can you interpret it?

Even if you are able to answer yes to all of these questions, more important is do you know how to read a patent (or pending application for a patent) that you find during your search to determine whether your invention might be patentable in view of the prior art references? For example, did you know that a prior art reference can be cited against your patent application as disclosing your invention, even though the inventor did not “claim” a particular embodiment? Simply disclosing an embodiment is sufficient to be considered prior art that a Patent Examiner can cite against your patent application and deny the claims (and the patent application from issuing).

That brings me back to my original answer to this question – yes, but. Yes, an inventor can do his or her own patent search, if the inventor is familiar with the search tools available, and how to conduct an effective search. The second part of my answer though, goes to whether the inventor understands how to interpret the search results to make a determination whether the invention is patentable.

That’s where it is best to get the professional opinion of a patent attorney. Patent searches are fairly inexpensive. Trenner Law Firm offers patent searches and full written opinions through the Online Patent Law Firm. In-person meetings to go over the search results are also available if you’re in Colorado.

Colorado Patent Attorney Discusses Design Patents – Part 3 of 3

Watch Video Interview at This Link: Colorado Patent Attorney Discusses Design Patents

Interviewer: Which type of patent application – design or utility – should inventors consider then?

Patent Attorney: Well the article points out that “a collection of design patents can significantly increase the selling price.” But really, it’s going to depend on the particular invention and what aspects are important to protect.

Interviewer: So does the article offer any tips for design patent applications?

Patent Attorney: Yes, the article suggests “filing more than one design patent application, each covering a different aspect of the design.” The article also discusses the importance of getting the drawings right to avoid rejection.

Interviewer: Any other tips?

Patent Attorney: The article suggests proper use of surface shading in the drawings, and that even just changing the surface shading after the initial filing, could be considered new matter and thus rejected by the Patent Office.

Interviewer: Sounds technical, how does an inventor go about finding out all of the drawing requirements to file a design patent application?

Patent Attorney: That is why it is important to work with a patent attorney and not attempt to file a design patent application on your own.

Interviewer: Thank you, I think that’s all we have time for today. For more information, be sure to visit Trenner Law Firm’s website at www.us-patentattorney.com and Mark Trenner’s blog over at www.ipatentattorney.org

Colorado Patent Attorney Discusses Design Patents – Part 2 of 3

Watch Video Interview at This Link: Colorado Patent Attorney Discusses Design Patents

Interviewer: And how long is a design patent valid?

Patent Attorney: A design patent is valid for 14 years from the date of issue. This is different than utility patents, which are valid 20 years from date of filing. Note, that I said “date of filing” for the utility patent – and not “date of issue” as for the design patent.

Interviewer: Good point. I see that the article says “design patents are often a forgotten form of intellectual property despite the fact that they have been available to inventors and designers for over 150 years.” Why are these so often overlooked?

Patent Attorney: Design patents offer different protection than utility patents. Often, design patents are seen as offering less protection than utility patents. But the key here is “different,” not necessarily less protection.

Interviewer: What do you mean by different protection?

Patent Attorney: It’s important to understand, that design patents only protect the ornamental appearance exactly as pictured and nothing more (perhaps trivial variations). As such, design patents are often said to offer less protection than a utility patent.

Interviewer: But you said that design patents offer “different” protection – not necessarily “less” protection.

Patent Attorney: That’s right, the article makes a good point that design patents can be very valuable. The article points out as good examples, Apple’s iPhone graphics and the original Coca-Cola bottle. The article also points out that design patents are a cost-effective way to protect intellectual property. I would add that design patent applications are often examined much faster than utility patent applications, and thus may issue as enforceable patents long before a utility patent issues.

For part 3 of 3, follow this link: Colorado Patent Attorney Discusses Design Patents – Part 3 of 3

Colorado Patent Attorney Discusses Design Patents – Part 1 of 3

View the video interview here: Colorado Patent Attorney Discusses Design Patents

Introduction: This morning we are interviewing Denver-area patent attorney Mark Trenner. Mark has been practicing as a patent attorney in Colorado for almost 14 years; the past 9 years at Trenner Law Firm. While his practice focuses primarily on helping small businesses protect their inventions with patents, Trenner Law Firm assists clients build out all aspects of their intellectual property portfolio, including copyrights, trademarks, and trade secrets.

Interviewer: The National Law Review recently published an article titled “Design Patent Basics.” Mark, aren’t all patents for product designs?

Patent Attorney: That’s a good question, one I get all the time. There are actually three types of patent applications inventors can file in the United States: utility patent applications, plant patent applications, and as discussed in this article, design patent applications.

Interviewer: I didn’t realize that. So what is a design patent?

Patent Attorney: In the United States, a design patent protects the unique ornamental appearance of a product, but not the function. Think of a lamp for example. The function of a lamp is to produce light, usually with an electric light bulb. The common electric light bulb that you can buy in your local hardware store can’t be patented. But if you have a unique design for the lamp – maybe the lamp base or the lamp shade – you may be able to apply for a design patent. Or as the article discusses, “a design patent can protect the shape of a bottle or the pattern on the bottom of a shoe.”

For Part 2 of 3 Follow This Link: Colorado Patent Attorney Discusses Design Patents – Part 2 of 3

Denver Patent Attorney Discusses Patent Trolls – Part 3 of 3

View the video interview here: Denver Patent Attorney Discusses Patent Trolls

Interviewer: I thought the article was about Vermont?

Patent Attorney: Yes, the article explains that Nebraska is the second state going after these so-called frivolous lawsuits.

Interviewer: And Vermont is the first state?

Patent Attorney: Right, apparently Nebraska was inspired by Vermont, who filed a lawsuit in May against a patent holding company after several Vermont businesses were threatened. Apparently even two Vermont charities were threatened by the patent holding company.

Interviewer: Are any of the sates successful in deterring patent trolls?

Patent Attorney: I think that is yet to be seen. But, a lot of companies, and even some charities according to this article, are being threatened with litigation, and so it is definitely making the headlines lately.

Interviewer: Are there any laws specifically on point?

Patent Attorney: The article does mention the use of Vermont’s Consumer Protection Act, and legislation was also passed in May in Vermont giving someone accused of patent infringement the right to counter-sue if it is in bad faith. Of course, proving bad faith is a whole other issue in itself.

Interviewer: Sounds like we will be hearing a lot more about patent trolls . . . . Thank you, I think that’s all we have time for today. For more information, be sure to visit Trenner Law Firm’s website at www.us-patentattorney.com and Mark Trenner’s blog over at www.ipatentattorney.org