Category: Online Patent Attorney

The patent laws require that you, as the applicant, point out and distinctly claim the subject matter of your invention. The portion of this application is called the claims and is the most important part of the patent application.  Your invention could have the most thorough and complete description but it still might not matter if your claims are not adequate.

If you don’t have a claim that covers a particular thing then you don’t own the right.  This is known as the exclusive right and is granted to you in the claims.  If your claims are too narrow, it will be too easy for others to get around your patent without infringement. 

The statute that relates to the claims most directly is 35 U.S.C. 112.  Paragraphs 2 through 6 relates specifically to the claims.  This mainly states that a claim may be written in independent, or if the nature of the case admits, in dependent or multiple dependent form.  A claim in dependent form shall contain a reference to a claim that was written about previously and then specify a further limitation. A claim in dependent form shall be construed to incorporate by reference all of the limitations of the claim to which it refers to.  A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim that is previously set forth and then should specify a further limitation of the subject matter claimed.

Let’s say that you file an exceptionally detailed specification with good drawings and a representative set of claims but you fail to claim something that you later believe is of critical importance.  Can that claim still be added?  The answer is “Maybe.”  Did you fairly describe what you want to add somewhere within the entirety of the patent application you originally filed?  If yes, you can add the claim.  If no, then you cannot add the claim.

Sometimes when you file a patent application, the subject is not shown in any drawing or described in the description, but may be claimed in the application as originally  filed.  IAs long as it is described somewhere you have the ability to rearrange the application.  The claim or claims that were originally filed fulfill the requirement that the initial application be complete. 

The specification, drawings and claims all play a role and work together to describe your invention thoroughly in the critical first patent application filing.  The claims will ultimately define your exclusive rights granted by the United States Patent Office, and the specification should provide an understanding of the claims and the drawings so that the reader can follow along easily. 

Since the patent claims are so critical, it is important to hire a patent attorney for assistance. 

If you have a patent or invention, you probably have wondered how you would bring it to market.  There are steps to bring your product to market that has two major principles and thoughts behind it.  It should be as simple as possible and each step should require a small investment until you, as the inventor, can feel confident that the idea is worth moving forward with.

The first step is idea conception and evaluation.  This is the step to see if you should develop your idea.  You could do a preliminary patent search to see if your product is worth pursuing and search for patents that are similar to your idea.  You could use free search engines such as Google Patent Search or the Patent Database at the United States Patent and Trademark Office.  

You should think about the following to evaluate if your product is worth pursuing or not: (1) is your idea feasible to create based upon your ability to do so; (2) can you produce it without spending a lot of money; (3) how much competition is there; and (4) does your product make other people say “Wow”?

The second step is to determine your target market.  With a narrow target market, sometimes you can market your idea more effectively and have more effective market research.  At this point, targeting the right market is crucial since the other steps are geared toward creating the perfect product, packaging, marketing, image, etc. for that target market.

The next step is inventor market research to predict success.  You should conduct meaningful market research for your idea within your target market.  Your results should show how people compare your products to other products.  You should also create a brochure or prototype for your product so people have something they can objectively evaluate.  You should also get an estimate on how much your product will cost to manufacture.  Create surveys, questionnaires or study groups to compare your product with other existing products. After conducting this market research, you should come up with some ideas on how to improve your product.  Make the necessary changes and repeat the market research until you are satisfied with the results.

The next step is to make a looks-like, acts-like prototype for your product.  This will help you determine if your idea works the way you think it will.

The next step is to take a serious look at your patent options and hire a patent attorney or agent to conduct a patent search for you and use these results to figure out your patent strategy.

A patent won’t work in every circumstance so that is why it is important to consult a professional.  There are also other steps to take to market your product and that is another reason you should consult an attorney so that they can guide you along the way to market your product or at least recommend someone to help you market your product.

You are probably wondering when is the best time to market your invention.  After you secure patent pending status is when you should market your invention.  You can secure patent pending status by filing a patent application.  If you do not wait until you secure patent pending status, you risk losing your patent rights if someone else files a patent application before you while you are marketing your invention. 

You, as an inventor, have a one-year grace period to test market your invention.  The one-year grace period starts when you begin to market your invention. United States patent law describes marketing activities as three distinct activities.  These are    public use, offer for sale, and distribute a printed publication of the invention without filing a patent application.  Inventors engage in these activities when they market or commercialize their inventions.   You can always also file a patent application before the one year period is up.  But, if an application is not filed within one year of starting efforts to market the invention, the inventor is barred forever from seeking patent protection.  It is not recommended to rely on this one-year grace period.  If a third party files a patent application related to your invention before you file your own patent application with the United States Patent office, the third party’s actions would be considered prior art and could invalidate your patent.  This is known as “First-Inventor-to File Regime.”

The big problem if you market your invention before filing your patent application is the third party will get the patent even if the third party saw the invention and copied it as long as the third party is the first to file.  You could have recourse against the third party but this could require lots of time and money.  Litigation is very unpredictable and it may not be economically feasible in this situation.  Therefore, the one-year grace period is solely personal to you and your situation and not something and should not be relied on to safely market your invention before you file the patent application with the United States Patent Office. This is why you should market your invention after filing a patent application to secure patent pending status.  You can still market your invention before you file the application but it is not worth losing your patent protection after invention after investing time and money into launching your product.

You should consult with an attorney so they can advise you when you should market your invention and the necessary steps to file your patent application.

 One of the problems of getting your invention idea started is finding the money, if you don’t already have it.  Your invention idea may seem expensive and costly to create and produce but there are a few methods by which you can attain the funds necessary to get your idea started.

Think about asking your friends or family for a loan.  Tell them your idea and explain to them what it is about and your plans.  If they believe in your  invention, you could ask them if they can help you fund your idea and let them know that you plan to pay them back.

You can start by writing a solid business plan to present to potential investors. The investors want to see how your invention can make them money.  If you are not able to write the business plan yourself, you can hire someone to do it for you.The plan should describe in detail how much money you will need, what the money will be used for, how you plan to manufacture, market and distribute for sale your patented product, and what income and potential profits will be generated.  You should ask for enough money to fund the entire project.  A fully researched business plan will help you avoid starting out with not enough money.

You could also seek out money through government offices.  There are grant and loan programs to sustain a new product through the patent and initial development stages through branches of state and federal government. For example, the United States Department of Energy gives grants for developing inventions that benefit the environment and reduce household energy use.  Many communities also have incubator programs that provide funding and assistance for patent applications and assistance with startup. You can find a list of these sources at your local chamber of commerce, or local college or university.

You could also present your product for patent to venture capital investment groups for consideration in their next round of funding.  Venture capitalists do understand all phases of developing and bringing a new product or invention to market. Not only can they provide money but they can also guide you with the best professional assistance through the early stages.  They can suggest a local patent attorney or patent agent.  Be careful with venture capitalists because they sometimes have strings attached.  You should be prepared to negotiate how much ownership you will dispense for the patent funding you need.  Look out for patent assistance offers that require you to do little more than send in your money. 

You should seek an attorney for patent assistance before choosing where to spend your money.

Selling an invention without a patent can be challenging but it can be done. Here are some steps on how to go about doing that.

First, apply for a provisional patent from the United States Patent office.  This step is much simpler and than obtaining a full patent.  It also provides you the same legal protection for up to 12 months. 

Second, maintain an inventor’s logbook, which is a detailed diary that documents all the steps you plan on taking to develop your idea or invention.  Always include the date with each entry you make.  This helps show that you developed the idea yourself.  This is necessary if someone else files a patent for the same idea, you can show that you were the first person who invented the product.

Third, you should approach companies in your field that do not already sell a similar product about licensing. Contact marketing managers that are in your target companies and talk to them about your idea

Fourth, you could use an intermediary firm. These companies are “middlemen” to license products to corporations in exchange for part of the license or a flat fee.  They often have good insider knowledge and contacts.  You should also network with other inventors for contacts. 

You should also attend state and national invention conventions. These shows bring together inventors and corporations for products to invest in and develop. Licensing companies also attend these conventions and they do not expect you to have a patent in place.  Another way to sell your idea without a full patent is to license your patent.  These licensing companies are often looking for profitable ideas that generate sales so you could license your idea to these companies if you want to start earning money.    

Also, if your idea is an invention that can be put to use, you might be able to sell it directly.  There are submission companies that will either provide services that help you sell your idea or allow you to sell the product directly to consumers over the internet. You will have to first find the submission company you want to work with.  There are multiple services that these companies offer that you can take advantage of, including graphic illustrations, press release development and publication lists that include information about where you can sell your idea.  

Seek an attorney’s advice if you have any questions about selling your idea without a patent. 

Not everyone is perfect and we all make mistakes from time to time.  Let’s talk about some common mistakes that inventors make so you can hopefully avoid making these mistakes. It is impossible to make all the right decisions, all the time. These mistakes can be avoided if you know what to look for.

Do not expect unrealistic results from your invention.  Some people believe that inventing an idea is a get-rich-quick scheme but in reality, this is wishful thinking.  A successful invention involves building a business around a new product idea, which takes hard work and a lot of time.  It is important to develop a plan with realistic timelines and financial goals.

Failing to search the market early is a common mistake.  There could be an identical product already on the market. You should search relevant stores and the internet.  It is important to know what is out there that is similar to your product.  If you develop a product that is similar to a product already on the market, you don’t want to infringe on the competitor’s patent.  

Do not assume that everyone will want your invention.  You should decide if your product is something that people will actually want and buy.  Doing some market research would help you avoid this mistake.  First, determine if there is a viable market for your product.  You should also go beyond asking your friends and family for honest feedback.  Sometimes you will hear that your idea is terrific from your friends and family because they do not want to hurt your feelings. It is important to try to recruit objective parties. You could also speak to retailers in the specific industry where you plan to sell your invention to see if they would carry your product. 

Do not send your idea and your money to an Invention Promotion Company.  These companies like to prey on hopeful inventors. Be suspicious of any pay upfront “deals” you are offered. 

Do not spend all your money on a patent.  Before you pay to get a patent, you should research whether your idea is marketable.  Ask yourself if people will want it and is it financially feasible.  You could speak with a patent attorney or patent agent to determine how broad a patent you can get and they can also help you determine the business value the patent will bring to your project. 

The success of your product does not begin and end with the “big idea.”  The “idea” is actually a very small component of the overall process. The most successful inventors actually seem to have many ideas and only act on the ones that are the most viable. 

A patent attorney will also help you avoid making these very common mistakes so you should definitely consider hiring an attorney to help you through the process.

You should keep your invention confidential until you file a patent application.  Keep in mind that it is not always possible to file for a patent in the early stages of your product development and production because of many reasons. In the meantime, you should consider a provisional patent and have confidentiality agreements signed, if possible. 

A provisional patent application is good for 12 months and allows you to use the term “Patent Pending” which usually is enough to scare aware any idea stealers. 

Confidentiality agreements are legally binding contracts.  These agreements allow inventors to share their ideas without fear of having these ideas stolen.  However, this agreement can’t literally stop a thief in their tracks from stealing your idea but the agreement adds an added level of protection and legal recourse if your idea is stolen.  This plan is not fool-proof but it is definitely better than nothing and sometimes your only protection before you obtain your patent.

Your confidentiality agreement should include details such as a detailed definition of what is considered confidential, obligations and terms of use, time frames, exceptions, third party use and methods for dispute resolution.  Your agreement should be signed when you’re performing market research, licensing to a manufacturer and looking for potential partners when getting feedback on your idea.  It is your job as the inventor to provide the confidentiality agreement for the other party to sign.  Always bring the confidentiality agreement to the table when it seems appropriate.  A word of caution: do not bring a confidentiality agreement to a Venture Capitalist.  For many reasons, Venture Capitalists will not sign these agreements. 

Inventors Confidentiality Agreements are generally one-way agreements because the agreement is designed to protect the inventor’s idea.

Another question you might ask is whether or not you would still need a confidentiality agreement after you have been granted a non-provisional patent.  In most cases, the answer to this is yes.  One issue is that the patent protects your invention but not the sales, marketing or production plans of your invention. 

Although it seems unlikely that someone might steal your business plan but not your invention, stranger things have happened in the legal system.

If you need advice on how to keep your patent confidential or need a confidentiality agreement, you should talk to an attorney. 

It is important to do some thorough research about marketing your invention. Your success also depends on your marketing plans.  A good invention that is successfully marketed is worth more than a great invention that is poorly marketed.  In other words, you should think twice about inventing anything that you think will not sell well.

There are three options you should consider when deciding how to bring your invention to market.  The first option is for you to do everything, including manufacturing, marketing and selling.  Another option you have is to hire the manufacturer while you can concentrate on selling your invention. Another option you have is licensing your intellectual property rights to a company that arranges the marketing, manufacturing and selling aspects and pays you a royalty, which is a percentage on each unit that is sold.  An attorney could advise you as to what is best for your situation.

Here are some important tips about marketing your invention.  You should find out as much about the industry that you are selling your product in and educate yourself about the distributors, manufacturers and competition. You also should also use every resource possible for assistance, including the Internet, the Patent and Trademark Office, the Small Business Association, local colleges, business schools and attorneys.  Let the customer drive your product.  Take advice from customers and find out what they want and more importantly, what they don’t want.  You should also let the customer determine the price of your invention.  You should charge what the customer is willing to pay and work out your profit margins around that.

If you do not have the resources to produce, market, sell and distribute your invention, licensing your patent is a great way to make money on your invention. Only some patents are licensed for royalty, but this could be very lucrative.  Here are some licensing tips to follow.  You should make contacts at trade shows and elsewhere with whomever might be able to get your foot in the door with the right companies and also help you avoid the wrong companies.  Another tip is to take some time to develop negotiation skills.  The last tip is to focus and concentrate on creating a win-win licensing agreement.  Also, it is very important to know when to sign contracts and when you should walk away.  An attorney could help you with both of these tips.  By planning, listening, studying and strategizing, you can leave room for further negotiations.

If you consult an attorney, he or she could give you other tips on marketing your invention. 

A prototype is a draft version of a product to allow you to explore your ideas and show the intention behind the overall design concept or feature to users before time and money is invested into development.. It is often advisable to make a prototype when you have a great new idea but not always necessary.  What do you want to achieve?  This will help determine what type of prototype you should build.

There are four reasons to build a prototype.  These include explaining your idea, selling your idea, gathering feedback and testing the logic behind the idea.  

Explaining your idea is not always easy and can be complicated. When you want to communicate your ideas sometimes sketches and 3d mockups are more effective. When others are able to visualize your idea it can help them understand what you mean and it can also help others build upon your idea. Paper prototypes, storyboards, application screens, and 3d mockups are techniques you can use for this purpose. 

Prototypes are also designed to help sell your idea and create more interest during a presentation.  You can use this type of prototype to sell your idea to a manager, customer or investor. Digital prototypes, videos or animations are techniques you can use for this purpose. 

Prototypes are also a great tool for gathering feedback and testing out your assumptions. In order to reduce your risk, it’s better to fail early on the process. You should bring your prototype to your target audience as quickly as possible to determine what the outcome might be. A technique used for this purpose could be a click dummy.

Prototypes help you refine your concept and design the system.  These prototypes help fine tune the backend and focus mainly on the operation.  Techniques used for this purpose are wireframes, customer journey mapping, and process flowcharts.

An attorney can help you decide if a prototype is needed for your idea but it is often advantageous to you to prototype your idea because a prototype will help you reduce time and cost, improve and increase user involvement, and help with quality assurance and innovation. 

You will receive a Notice of Allowance if, on examination, it appears that you are entitled to a patent.  A Notice of Allowance indicates that the patent application has met the requirements of the United States Patent Office successfully and that the claims are allowed by the examiner.  The Notice of Allowance is issued if the application is not opposed. This is very exciting and means that your patent has been granted.  This is the final step in a long and complex patent application application process.  

The information in the Notice of Allowance must be correct.  If there are any errors, it needs to be pointed out as soon as possible.  

If the patent will be published, a publication and issue fee is required.  The fee requirements are listed in the Notice of Allowance.  

Once you have paid the issue fee, you will be sent an Issue Notification with the patent number and the anticipated issue date.  Any extra patent applications that are based on this patent application (“parent” application) that has been allowed will need to be filed before the parent patent application issues.

Since the three month deadline on this cannot be extended and failing to pay the issue fee results in losing the patent, this document is very crucial and you want to be on the lookout for it. 

In some cases the examiner realizes that there was an error in the Notice of Allowance.  There are four notices you could receive. One notice is referred to as a Corrected Notice of Allowance.  In this case, the examiner realizes that there was an error in the Notice of Allowance that was mailed to the attorney.  Another notice is referred to as a Corrected Notice of Allowability.  This means there is a need to revise some aspect of the Patent Application to complete the Notice of Allowance process. The Patent Application might need to be revised and submitted again.  Another notice is referred to as a Notice of Allowability.  The applicant has to satisfy the requirements of the patentability and ensures the prosecution is closed on merit. The formalities must be fulfilled either before or along with the payment of the issue fees. The last type of notice is a Supplemental Notice of Allowability. This permits the applicant to file an Information Disclosure Statement after the Notice of Allowance is received.  These are all part of post-allowance.  The notices ensure Patent Application and related documents are compliant with the United States Patent Office and do not affect the due date of the Issue Fee Payment.  They may, however, result in abandonment if the documents are not in order.  The Notices should be checked thoroughly to ensure all the documents are docketed in an appropriate manner. 

These final steps are very important and you should make sure you complete the process correctly by using an attorney.