Getting Started – Patents
Do I even need a patent?
The question I get most often is “How long will it take to get the patent issued?” When I say that it can take a year or longer before a Patent Office Examiner will even look at a new application, the next most frequent question I get is “What if someone steals/infringes on my invention – how do I stop them?”
A good way to think about a patent is as Legal Title to your invention. Just like you get Title to your car or house or other tangible property, just filing a Patent Application gives you Legal Title to your invention. What does that mean? Just filing a Patent Application qualifies as Patent Pending status. You can license or even outright sell (assign) some or all rights to your invention — if you have a pending Patent Application.
So Instead of thinking of a patent defensively (how can I stop others from taking my idea), think of a patent as an asset. If you are a business, the patent application will figure directly on the bottom line if you ever go to sell your business. And if an investor is interested in financing your start-up, or a company is interested in purchasing rights to your invention, they are looking for you to sell or license a pending Patent Application to them. Without a pending Patent Application, you do not have anything to legally convey.
Do I need a patent search?
The Patent Office does not require applicants to do their own search. Even if you do a patent search, the Patent Examiner will do his/her own search as part of examining your patent application.
You might ask “then why do I need a patent search?” You don’t need a patent search. But I typically recommend a patent search, because if we find that your invention already exists, you may decide not to file a patent application and instead put that money toward further development, manufacture, or marketing of your invention. Or you may decide to be innovative and come up with an even better idea, without having to wait for the Patent Examiner to reject your application.
The Patent Search may find references that are not identical to your invention, but may be important to consider when writing your patent application – and for letting consumers know why your product is better.
There may be times when it is important to file your patent application as soon as possible. In those cases, you may want to file a provisional patent application, and then follow up with a patent search to help decide how to move forward with the full utility patent application.
What is a Provisional Patent Application?
A provisional patent application is a disclosure document, providing a priority filing date and patent pending status for your invention – for exactly 1 year from the day you file.
A provisional patent application can be an important part of an invention protection strategy. There are fewer formal requirements to file a provisional patent application, than for a full utility patent application. This means that you can typically get Patent Pending status quicker, and for a lot less money up-front by filing a provisional patent application.
I almost always recommend that my clients file a provisional patent application first. This gives one year during which the invention can be further developed. You can also use this year to find out if your product is marketable or if there is even any interest in your invention. If you decide that the invention isn’t going anywhere, you can pull the plug without incurring all the time and expense of filing a full utility patent application.
Benefits of Filing a Provisional Patent Application
Patent rights used to belong to the first person to invent. Even if someone else filed their patent application ahead of you, if you could prove that you were the first to make the invention, then the US Patent Office would give you the patent. This is why still to this day some people think that they should write down their invention and mail it to themselves – as proof of the date of invention. This all changed with the first to file updates to the Patent Law. Under the current system, it doesn’t matter who invented first. The US Patent Office will award the patent to the first person to file their patent application.
Filing a provisional patent application gets you a filing date with the US Patent Office. I always recommend filing a provisional patent application before showing your invention to anyone. A provisional patent application will get you Patent Pending status for exactly 1 year.
A provisional patent application also gives you legal Title to your invention. Just like legal title to your car or home, a patent application can be sold or licensed. Without a patent application, you do not have legal title to your invention. This is why you will often hear potential investors ask if you have a patent or patent pending for your invention. The investors want to make sure their rights are legally protected.
Isn’t it better to just file the full utility patent application?
Should I file a Full Utility Patent Application?
There is no discount for filing a provisional patent application. In fact, you’ll need to pay for the provisional patent application, and then pay for a full utility patent application within 1 year if you decide to proceed with the patent process. So why not just file the full utility patent application to start with?
If you do not think your invention will change, then go ahead and file the full utility patent application.
But if you are still early in the development stages, you can file a first provisional patent application now to get Patent Pending status. Then, as you make improvements or add features to your invention, you can file another provisional patent application for the updates and improvements. As long as you file a full utility patent application within one year of the first provisional patent application, you can combine as many provisional patent applications into a single full utility patent application. This can potentially save a lot of money as opposed to having to file multiple full utility patent applications.
Both provisional patent applications and full utility patent applications qualify for Patent Pending Status, are recognized by most countries throughout the world as a priority filing, and provide legal title to your invention (so that you can sell or license your invention).
What is a Design Patent?
A utility patent protects the function of an invention, regardless of how that invention looks. A design patent protects the appearance of an invention, regardless of how that invention functions.
Think of ceiling lamps. Go into any home improvement store, and you will see all different types and styles of ceiling lamps. There is nothing new about electric lighting, so you could not apply for a utility patent for an electric light. But you could apply for a design patent – if your lamp looks different than any other lamp on the market.
Auto manufacturers apply for design patents to protect the appearance of their vehicles, such as the headlights, grills, and side panels. Tire manufacturers apply for design patents to protect the tread patterns of their tires.
Can someone design around a design patent? Yes. But a design patent can be used to stop someone from copying your design. This may be important, like it is for auto manufacturers, tire manufacturers, and many others.
What about International Patent Protection – Protecting my invention outside of the US.
There are times when it is important to protect your invention outside of the United States. Certainly if you have a business presence in another country. Most international companies will file patent applications in the countries they do business in.
Does this mean you should file for patent protection throughout the world? Absolutely not!
Filing an International Patent Application under the Patent Cooperation Treaty (PCT) is very expensive. And this only gives you the right to file in individual countries. You will need to follow up with patent filings in each country you want to file in (except that you can file a single patent application in the European Patent Office (EPO)). This means you will be paying foreign attorney fees to handle your patent application in those countries, along with government fees in each country you file in.
Most often, individuals and small businesses who are not already doing business outside of the United States can make better use of their budget on manufacturing and bringing their product to market in the United States. After all, the United States is often the biggest market for most new products.
What if someone makes your invention in China or Mexico, and sells it in the United States?
A US Patent gives the patent owner the exclusive right to make, use, and sell their invention in the United States. Therefore, someone cannot make a patented invention somewhere else and sell it in the United States without infringing on the US Patent. If need be, US Customs can get involved to stop infringing imports at the border.