You may be wondering if you can obtain a patent and keep it a secret.  The short answer to this question is no.  Patents are granted by the patent office in exchange for full disclosure of the invention.  The details of the inventions are published and then made available to the public.    Publication takes place at various stages of the patent procedure.  The patent document is only published after the patent is granted in some countries.  In other countries, patent applications are generally published 18 months from the filing date or the priority date.

           You might also wonder if you can discuss the details of your invention with an investor before filing the application.  The answer to this is also no.  It is important to fila a patent application before your publicly disclose the details of the invention.  Any invention which is made public before an application would be

You should not file a trademark application without first researching the process and doing a trademark search to determine whether another business is already using a trademark that is identical or similar to yours.  You should search both word marks (for example, corporate names) and image marks (for example, logos). Understanding the steps involved will make the process easier for you and will hopefully  lead to a federally registered trademark.

You are probably wondering what a good starting point to start your research may be.  Try using simple and familiar web tools, such as Google and Bing. Typing your intended mark into these tools will provide you with great information.  Also, if you are intending to trademark a logo, you could check against existing logos into the Google’s image search.  Start by dragging the photo into the search bar, and Google will return any images that appear similar. This is not an exact process, but it does serve as a decent starting point.  If you see that your mark is already being used then you know you might need to start over.  If you do not find any current uses of your mark, the process is still not over because Google or Bing does not provide a comprehensive database of registered trademarks.

If you found no use of your mark through Google or Bing, you could search the registered trademark database through the USPTO called Trademark Electronic Search System (TESS).  This database contains the records of active and inactive trademark registrations and applications.  If you do use the TESS database on your own, it is important to keep in mind that some trademark owners with valid and protected trademark rights do not choose to register their marks with the USPTO so it is recommended that you also do research on state registrations and common law marks.

In addition to studying the TESS database results for similar or identical marks, according to the USPTO, it’s also important that you “closely study the listed goods and/or services to determine possible relatedness.” This information can also affect whether the USPTO will approve or deny your application.

Your attorney can also help you do trademark research and your attorney will also give you a legal opinion as to whether your proposed mark is legally safe to use.

If you and your attorney are satisfied with the trademark research results, you could then proceed to file your trademark application.

The difference between a design patent and a utility patent is that a design patent protects the ornamental design, appearance, or shape of the invention. This patent is appropriate when the basic product already exists in the marketplace and is not being improved upon in function but only in style or appearance.

Design patents are far easier to obtain than utility patents.  Usually, the easier something is to obtain the less rights that are conveyed.  For example, you can obtain a copyright for $30, if you prepare the application and file it yourself.  You get tremendously long protection in terms of the number of years but the rights a copyright provides are exceptionally weak.

A protectable design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. For example, distinguish an ordinary steak knife from a butcher’s knife.  In any knife there will typically be a handle and cutting blade.  A design patent will protect the appearance but not protect the mechanical structure.  In this regard it is possible for many different knives to receive design protection even though the basic handle and blade configuration is well known.  The question is if this design can be patented and whether the presentation or appearance of the functional item is unique or not. A design patent protects the way something looks but not the way it functions.

When possible, you as an inventor would want to protect the function of the invention because by obtaining a utility patent, you will be able to prevent others from making, using, selling or importing into the United States any product that is functionally covered by the claims in the issued patent regardless of whether the device looks anything like what you are making or anything at all like the drawings in your patent application.  This is the reason utility patents are stronger, broader and more desirable than design patents. But, if you cannot get a utility patent because the invention is not unique enough and looks different, then you could consider a design patent. 

Notwithstanding all the reasons to consider seeking a design patent, it is absolutely essential to understand what you are getting when you seek to obtain a design patent and to understand the limitations of design patents. Design patents do NOT protect an idea or an invention, but rather they only protect the ornamental design of exactly what is pictured.

Always consider seeking the advice of an attorney to find out what type of patent is best for your invention and they can guide you along the way.

You might be wondering what the difference is between a provisional patent application and a utility patent application.

You can and should be doing everything you can to market the product and/or seek investors or a company to sell your invention to. The purpose of the provisional patent application was to “stop the clock” and get a filing date at the US Patent Office. Anyone that files after you will be second in line and you will receive priority. However, the provisional patent application only provides a priority filing date for information actually disclosed in the write-up and drawings. Therefore, you should limit your disclosure to only that material. If you have added anything and want to be able to disclose that, then you should file the full utility patent application early so that you can obtain a filing date for that prior to your disclosure.

In preparing for the full utility patent application, it is important to keep in mind that we can add any disclosure you like and even completely rewrite the provisional patent application. But, as noted above, you will only receive a priority filing date for that information which was actually disclosed in the provisional patent application, and any new matter will receive the later filing date of the utility patent application.

In that regard, you should certain gather as much data as possible, consider any design changes, improvements, upgrades/add-ons, and all other aspects to future proof protection of your invention. Once the full utility patent application is filed, we can no longer add anything without having to file a new patent application which may not even be possible depending on the circumstances.

You should always seek the advice and help of an attorney when preparing either a provisional patent application or a utility patent application.

Mark Trenner went on air this morning during the 10 o’clock hour on AM 630 to discuss the new Patent Office satellite office just announced for Denver. Mark was asked how this might make it easier for inventors to obtain a patent. While everything can be filed electronically, there are times after a patent application has been filed and the Examiner rejects the claims as being anticipated or obvious in view of an earlier invention or other disclosure. While the inventor has an opportunity to file a written response, sometimes it can help to discuss the differences of the invention with the Examiner. This conversation may be over the phone, but in-person meetings often are worthwhile. Currently, an in-person meeting with a Patent Office Examiner to discuss a pending patent application requires the inventor and his or her attorney to travel to the Patent Office location in Virginia. So having a satellite office in Denver may make it easier for inventors in Colorado to have in-person meetings with the Examiner.

The United States Patent Office announced today the opening of four regional offices, including an office in Denver, Colorado. Read the press release at http://www.uspto.gov/news/pr/2012/12-40.jsp. Stay tuned – more information about this exciting announcement to come on the ipatentattorney blog as more information is made available.