Episode 9: Why dates and deadlines are important in patenting a product

by admin on May 27, 2010

Let’s start with a simple understanding.  If you have even the slightest suspicion that you want to patent a product, you need to hire and get legal advice from a patent lawyer or a patent agent.  This blog is not legal advice.  I am not your lawyer or your agent.  I am not providing you with any legal advice, representation, or counsel.  You and I have no attorney-client relationship.  The purpose of this blog is to introduce you to the vocabulary that you will need when you got to a patent attorney and ask him to help you patent your product.

In the process of patenting a product, dates and deadlines can be critically important.  This can kill you.  It can mean that you don’t get a patent or your patent on your product is not enforceable if you miss a deadline.

The first reason that dates and deadlines are important in patenting a product is that the patent system tends to recognize the first inventor and it’s easier to prove that you are the first inventor if you filed the patent application first.  I realize that it is possible for the second filer to be the first inventor, but it is always easier if you filed before the other guy.

The second reason that dates are critical is that the United States Patent and Trademark Office can decide, if you miss a deadline, that your application to patent your product has gone abandoned, and they can refuse to let you patent your product.  In the process of patenting a product, there are all sorts of dates and deadlines.  They range from deadlines to pay fees to deadlines to respond to correspondence from the USPTO.  You need to be aware of these dates and make sure that they are handled.

There are fees during the process of patenting a product.  There are also maintenance fees after you have your patent.  You need to pay these fees in a timely fashion, or all of the time and expense that you have invested in patenting your product can vaporize.

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Episode 8: What to do with a patent after you have successfully finished the process of patenting your product

by admin on May 27, 2010

Let’s start with a simple understanding.  If you have even the slightest suspicion that you want to patent a product, you need to hire and get legal advice from a patent lawyer or a patent agent.  This blog is not legal advice.  I am not your lawyer or your agent.  I am not providing you with any legal advice, representation, or counsel.  You and I have no attorney-client relationship.  The purpose of this blog is to introduce you to the vocabulary that you will need when you got to a patent attorney and ask him to help you patent your product.

The main thing that you do with your patent, after the process of patenting your product, is that you use the patent to convince other people not to make, sell or use your product without your consent.  Stated otherwise, you convince people to pay you for your product.

When someone infringes your patent by making, selling or using your product without paying you or otherwise securing your consent, you have a variety of options to stop them.  The fact that you have patented your product can be very helpful in stopping the product pirates from destroying or your market and undercutting your price.

Let’s talk about a hypothetical business named “Pasquale’s Pizza Ovens.”  For this example, let’s assume that “Pasquale’s Pizza Ovens” sells a pizza oven from Austin, Texas and has completed the process of patenting the pizza oven product.  Pasquale’s Pizza Ovens has been wildly successful and is the leading name in Pizza Ovens.  Let’s assume, for this example, that Pasquale has done the right thing and hired a lawyer to successfully complete the process of patenting his pizza oven.

Because the buzz around Pasquale’s Pizza Oven is so great, some sleazy rip-off artist in New Jersey subsequently starts selling second-rate copies of an oven that infringes Pasquale’s patent.  So, people get on the Internet and search for pizza ovens and they end up buying from the rip-off artist in New Jersey rather than the real deal from Austin, Texas because the rip-off artist is selling at a lower price.  He has no R&D cost for developing the oven.  This is a problem for Pasquale.  To make matters worse, the rip-off artist in New Jersey makes bad pizza ovens.  They infringe the patent on the product, and they are no good.   So, he is not only stealing from Pasquale by undercutting his price but also harming the faith of the market in the new form of pizza oven.

Because Pasquale went to the trouble of patenting a product, he has many options for dealing with the rip-off artist in New Jersey.  Pasquale will go to the lawyer who handled patenting his product.  The lawyer will then send a cease-and-desist letter demanding that the rip-off artist in New Jersey quit making the infringing oven.  Let’s assume, for the sake of this discussion, that the sleazy rip-off artist in New Jersey refuses to quit making the infringing oven.

What probably happens next is that Pasquale will file suit for patent infringement.  His lawyer will file a law suit alleging that sleazy rip-off artist in New Jersey is making an oven that infringes the patent on Pasquale’s product.   Because Pasquale has taken the time and gone to the expense of patenting his product, his chances of winning the lawsuit and stopping the sleazy rip-off artist in New Jersey are significantly enhanced.  This is the key.  Patenting a product helps you resolve disputes without having to break some guy’s legs.

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Episode 7: How Patents are Different from Trademarks and Copyrights

by admin on May 27, 2010

Let’s start with a simple understanding.  If you have even the slightest suspicion that you want to patent a product, you need to hire and get legal advice from a patent lawyer or a patent agent.  This blog is not legal advice.  I am not your lawyer or your agent.  I am not providing you with any legal advice, representation, or counsel.  You and I have no attorney-client relationship.  The purpose of this blog is to introduce you to the vocabulary that you will need when you got to a patent attorney and ask him to help you patent your product.

There are essentially four types of intellectual property: patent, copyright, trademark, and trade secret.

Patenting a product enables you to prevent other people from making, using or selling your product in the United States.  Patenting a product, however, does not actually secure for you the right to make use and sell your invention in the United States, because the invention might contain parts that are somebody else’s patent product.  The term of the patent is roughly 20 years from the date of filing of a patent application, though the actual calculation of the term is possible only after the product is patented and the calculation is complex.

Patenting a product is different from registering a trademark in that patents protect your exclusive right to make the things or perform the processes that are your business, while trademarks merely protect your business name.  A patent helps you protect yourself from having some knock-off artist manufacture goods or provide services identical to the ones that you have developed, a trademark protects you from that same rip-off artist using your name to sell his rip-off product.

Copyright is different from patenting a product in that copyright protects a particular expression fixed in a tangible medium.  Copyright prevents people from reproducing your ideas as they are expressed in print or recording or other tangible form.  There may be some overlap in patent cases where computer software is used and there is copying of the software by a rip-off artist also creates a product that infringes the patent on your product.

Trade secrets are the things that you don’t tell other people, whether those are your customer list or your secret formula for blueberry pie.  Patents are public, once they issue, and you can choose to have them published during the process of patent prosecution.  Registering a trademark, applying for a patent, or registering a copyright all involve very public conduct.  Trade secrets are about protecting yourself from a competitor hiring an employee and learning the things that you don’t tell anyone.

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Episode 6: How to Select a Lawyer to Handle Patenting Your Product.

by admin on May 27, 2010

Let’s start with a simple understanding.  If you have even the slightest suspicion that you want to patent a product, you need to hire and get legal advice from a patent lawyer or a patent agent.  This blog is not legal advice.  I am not your lawyer or your agent.  I am not providing you with any legal advice, representation, or counsel.  You and I have no attorney-client relationship.  The purpose of this blog is to introduce you to the vocabulary that you will need when you got to a patent attorney and ask him to help you patent your product.

Once you’ve made the right decision and hired a patent lawyer to handle patenting your product, the next trick is to hire the right lawyer to handle patenting your product.

Patents are not like most other legal matters.  For most legal matters, any idiot with a law degree is licensed to represent you in the legal matter.  In patents, a lawyer has to have a science or engineering degree and take a separate registration exam in order to represent clients who are applying for patents.  In patents, only a select subset of lawyers (probably around 45,000 of the million or so lawyers in America) is technically capable of patenting a product for you.  But the mere fact that someone is a registered patent attorney doesn’t mean that you can trust them.

You need to go to a specialist in patents on the type of product that you want to patent.  If you are getting a patent on a system for polishing gems, you don’t want to hire a patent lawyer who specializes in computer software.  Just like you may not know all of the small details that are necessary to properly accomplish the task of patenting a product, a lawyer who handles patents on products that are nothing like yours may not know of all of the details that are necessary to get things right in the process of patenting your product.

Note: A lawyer really doesn’t know the details of patenting a product until he has written a hundred patent applications or practiced patent law for at least five years.  Until then, he will tend to make rookie mistakes in patenting a product that will tend to cost you time and money.

So, here are some questions to ask in selecting a lawyer to handle patenting your product:

1.)    How much of your practice is dedicated to patenting products and resolving patent disputes?

The answer needs to be more than 70%.

2.)    How many patent applications have you written?

You are looking for an attorney who has written more than 100 patent applications.

3.)    How many of your patent applications have issued as patents?

You are looking to hear “more than a dozen.”  Honestly, you just want to be sure that you’re not buying a parachute from a guy who has never jumped out of a plane.

4.)    Do you have specialized docketing software to handle the calendaring and docketing of product deadlines?

The answer needs to be “yes, we have software that automatically calculates and sends reminders for everything from extension of time dates to post-allowance maintenance fees.”  Microsoft Outlook is not “specialized software” for handling the process of patenting a product.

5.)    Have you ever been the subject of a grievance or a malpractice suit?

If the answer is yes, you don’t want the guy patenting your product.

6.)    Do you have malpractice insurance?

The answer needs to be, “Yes.”  If a patent lawyer screws up the process of patenting your product, and his negligence costs you money, there needs to be an insurance policy standing behind his work to make you whole.


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Episode 5: Why You Should Pay a Patent Lawyer to Patent Your Product

by admin on May 27, 2010

Let’s start with a simple understanding.  If you have even the slightest suspicion that you want to patent a product, you need to hire and get legal advice from a patent lawyer or a patent agent.  This blog is not legal advice.  I am not your lawyer or your agent.  I am not providing you with any legal advice, representation, or counsel.  You and I have no attorney-client relationship.  The purpose of this blog is to introduce you to the vocabulary that you will need when you got to a patent attorney and ask him to help you patent your product.

1. The stakes are very high

The reason that you want to patent a product is that you feel that your product has great value and you want to protect that value from being stolen by rip-off artists.  There is a great deal of potential money on the table that has to be protected by patenting a product, and you really can’t afford mistakes.

2. Patenting a product is hard.

I am not going to give you any false impressions about how difficult it is to patent a product.  It is frequently the case that, even when an experienced and expert attorney handles the process of patenting a product, the process of patenting a product can take a quarter of a year (500) of man hours and that time can be spread out over 5-10 years of arguments and negotiations with the patent and trademark office.

Let me say that again.  Even when done by an expert, it can take 500 man hours over the course of 5-10 years to complete the process of patenting a product.  As you can imagine, if it takes so many hours over so many years for an expert to handle the process of patenting a product, the process is complex and difficult.

Processes that are complex and difficult, even for experts, are prone to be screwed up badly by people who are trying them for the first time and are mostly focused on other things.

3. You don’t want to mess up when you patent a product

You can probably patent a product without the help of a lawyer.  It can be done.  You can also cut out your own appendix, but I don’t recommend it.  In patenting a product, there are MANY small details that can be incredibly destructive if you get them wrong.  It’s better to have a surgeon handle the process of removing your appendix.  It’s better to have a registered patent lawyer handle the process of patenting your product.  In either case, the work is more likely to get done right by someone who has done it hundreds of times and knows the small details that have to be carefully observed to make sure that everything works.  In the case of cutting out your appendix, getting things right is the difference between life and death.    In the case of patenting a product, doing things right may the difference between securing the exclusive right to make and use your product or having your product ripped off by some lowlife copycat.

4. If something does get messed up, you want to have somebody who will stand behind the work.

The other big advantage in hiring a patent lawyer to patent your product for you is that hiring a lawyer to handle patenting a product means that there will be somebody to stand behind the work.  If you make a mistake in your patent application that costs you the right to exclusive manufacture and use of your product, you have nobody to blame but yourself.  If you hire a patent lawyer to patent your product for you, and the lawyer makes a mistake in patenting your product, your patent lawyer has a large number of incentives, the least of which is the value of his own good name, to see to it that the mistake is fixed for you.

At the end of the day, if you end up with some sort of colossal mistake that costs you the exclusive right to make and use your product, that mistake can cost you a lot of money.  When you hire a lawyer to handle patenting your product, and the mistake is made by the patent lawyer, his malpractice insurance may be available to help you pay those costs.

5. It just isn’t worth the inconvenience.

The final big advantage to hiring a patent lawyer to handle patenting your product is convenience.  Patenting a product is handled by a part of the government called the United States Patent and Trademark Office (USPTO).  The USPTO is famous for long delays in responding to patent applications submitted by applicants for patents.  When you file your patent application, rather than waiting on the USPTO to respond by yourself, having a patent lawyer handle the patenting of your product means that you have made the patent lawyer responsible for remembering that the USPTO is expected to respond.  You’ve made the patent lawyer responsible for following up if he doesn’t hear anything.  Patent lawyers who spend a lot of their time patenting products will have computerized calendaring systems specifically designed to remind them to follow up on the patent applications that they are registering for their clients.


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Episode 4: The Benefits of Patenting a Product

by admin on May 27, 2010

Let’s start with a simple understanding.  If you have even the slightest suspicion that you want to patent a product, you need to hire and get legal advice from a patent lawyer or a patent agent.  This blog is not legal advice.  I am not your lawyer or your agent.  I am not providing you with any legal advice, representation, or counsel.  You and I have no attorney-client relationship.  The purpose of this blog is to introduce you to the vocabulary that you will need when you got to a patent attorney and ask him to help you patent your product.

People patent products for essentially 3 reasons:

1.)    Validation – Many people view having a patent on a product as a validation that the product is a significant contribution to the state of the art in the are of the product that they are patenting.  I don’t ever argue with people who want patents for that reason.  When the government grants you a patent on your product, many people see the patent as an official pronouncement that the product appears to be useful, appears to be novel, and appears to be a non-obvious improvement.  An inventor that I know, who is worth hundreds of millions of dollars, has a plaque on the wall of his study with the numbers of his patents on the products that his company sells.  He is justifiably proud of the patents on his products, and a patent serves as a celebration of the products on which he has received patents.

2.)    Market Value – Many people believe that patented products have higher value than non-patented products.  The holders of this belief range from consumers, who see the patent as a form of proof that serious scientific and engineering thought went into the product to venture capitalists, who don’t want to get involved in a business that has no inherent barrier to entry.  Either of those may be a perfectly legitimate business reason to patent a product, depending on your particular market.

3.)    The right to exclude – The main reason to get a patent is to get the legal right to prevent others from making or using the product on which you get a patent.  Before you spend the money to get your product from development to production, you need to be sure that you have the exclusive right to make and use the product that you seek to patent.  Essentially, you don’t want to spend all of the time and money developing your product, only to have some rip-off artist start selling the same or a similar product at a lower cost because the rip-off artist has no research and development costs.

When you successfully patent a product, the government grants you a right to stop others in the United States from making, using or importing into the United States without your permission.  When you patent your product, you buy for yourself the right to go to court and demand that a judge stop others from making the product on which you have a patent.  When you patent your product, you buy for yourself the right to go to court and demand that the customs service seize at the border the product on which you have a patent.  When you patent your product, you buy for yourself the right to go to court and demand that a judge stop others from using the product on which you have a patent unless those people have your consent.

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Episode 3: The Parts of an Application for a Patent on your Product

by admin on May 27, 2010

Again, let’s start with a simple understanding.  If you have even the slightest suspicion that you want to patent a product, you need to hire and get legal advice from a patent lawyer or a patent agent.  This blog is not legal advice.  I am not your lawyer or your agent.  I am not providing you with any legal advice, representation, or counsel.  You and I have no attorney-client relationship.  The purpose of this blog is to introduce you to the vocabulary that you will need when you got to a patent attorney and ask him to help you patent your product.

Most patent applications have the same basic parts, though some will have additional parts not listed here.

1.) Background – when you write an application for a patent on your product, you start with a background section that attempts to explain the problem that your product is designed to solve.  It is easier to get a patent on your product if the examiner understands why the product is useful.

2.) Summary – This section is a short description (often less than 200 words) that gives a rough outline of the product that you are trying to patent.  Frequently, a patent lawyer who is trying to patent your product will write the summary toward the end of the process.

3.) Drawings – Drawings are critical to the process of getting a patent on your product.  A picture is worth a thousand words in the process of getting a patent on your product, and you’ll know that you have enough drawings when it is easy to talk your way through the drawings and explain the invention to someone who is not familiar with the invention but is familiar with products similar to the one that you are trying to patent.

4. ) Description of the drawings – When the examiner is trying to decide whether to grant a patent on your product, he will read the application, and the description of the drawings gives him a basic idea of the components that make your product work

5.) Detailed description – The detailed description is the longest part of the application.  As you work on the patent for your product, you will write a description, which walks through the drawings, and tells the patent examiner everything that someone of ordinary skill in the art to which the invention pertains would need to know to make and use the invention.

6.) Claims  -- The claims are a legal definition of the product that you are trying to patent.  While the detailed description should describe the product in the fullest detail possible, the claims should seek to describe the product in the minimum number of words and elements necessary to distinguish the product that you are trying to patent over the things that have come before it.

7.) Abstract  -- The abstract is a description of the product that you are trying to patent in under 150 words.

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Episode 2: How the Patent Process Works

by admin on May 27, 2010

Most people who want to patent a product approach the process of patenting a product with no real sense of how the process of patenting a product works.  There are essentially three phases of the process of patenting a product:

Again, let’s start with a simple understanding.  If you have even the slightest suspicion that you want to patent a product, you need to hire and get legal advice from a patent lawyer or a patent agent.  This blog is not legal advice.  I am not your lawyer or your agent.  I am not providing you with any legal advice, representation, or counsel.  You and I have no attorney-client relationship.  The purpose of this blog is to introduce you to the vocabulary that you will need when you got to a patent attorney and ask him to help you patent your product.

1. Application preparation and filing

The first phase of patenting a product is preparing a patent application for your product.  How long this takes depends on how much time you have to devote to the process of patenting your product and how much you are willing to spend on getting the work done by a patent lawyer or a patent agent.

2. The long wait

The process of patenting a product involves two real misfortunes.  The first of those misfortunes is that the process almost always takes longer than anyone believes to be possible.  It is not uncommon in some technology areas for the patent applicant who is trying to patent a product to be forced to wait two or three years between the filing of his application and the first time that the United States Patent and Trademark Office offers an opinion on whether the applicant should be able to patent the product.

How long you will have to wait to patent your product depends on the type of product.  The United States Patent and Trademark Office has very large backlogs of applications from people who are trying to patent products in software and computer systems.  There are significantly shorter wait times in many of the mechanical technology areas.  Your experience will depend considerably on what product you are trying to patent.

3. Patent prosecution

Sometime after your patent application is filed, the process patent application prosecution begins.  When you are trying to patent a product, you prepare an application describing your invention and making “Claims” that are statements of what parts or aspects of your product you believe are patentable.  The United States Patent and Trademark Office then takes a look at the other products that are related to your product and sends you a decision on whether your product is patentable.  This decision on whether or not your product is patentable is called an “Office Action.”  If the patent and trademark office decides not to grant a patent on your product, then there is a negotiation between you (or your lawyer) and the patent examiner.  You have the choice to make adjustments to the claims in your application (called an amendment) or to argue with the examiner that he was wrong in denying you a patent on your product.  This process can go several rounds and last anywhere from six months to five years.

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how to patent something – How Much Does a Patent Cost?

by admin on January 29, 2010

If you have come up with an invention and you believe it to be something that you want to protect others from taking advantage of, then you may be considering filing a patent. One of the questions in your mind may regard how much does a patent cost. The costs of a patent can vary greatly, depending on what all is involved and undertaken during the process.

If you are [click to continue…]

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applying for a patent – Tips To Get A Patent

by admin on January 28, 2010

Tips To Get A Patent

The best way to protect yourself and your plans is with a patent.Taking out a patent gives you the right to stop people from making, using, importing or selling your invention without your permission. A granted patent can remain in force for up to 20 years.

Obtaining a patent does not guarantee commercial success and is just one of the issues [click to continue…]

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