Wednesday 15 October 2014

Should you file your patent or not?

Two great tools for inventors that won't break your bank account: provisional patent applications and trademarks.

Successfully licensing an invention or taking a product to market requires research and the ability to talk to people about your invention. It is impossible for a manufacturer or retail buyer to commit to a product without seeing it.

For good reason, many inventors are reluctant to share their invention with people they don't know. Further, once an invention is shared publicly, international patent rights can be lost, and the one-year timeline within which a U.S. patent application must be filed generally has begun to tick. For this reason, many inventors rush out and file a full-blown, utility patent application. That addresses the uncertainties and also enables inventors to alert people that their invention is "patent pending."

However, this approach has several downsides. First, utility patents and even patent applications can cost many thousands of dollars. In the end, an inventor may find that the expense outweighs the benefit. Second, in the early stages, most invention designs are still evolving. Filing a patent too early could mean that it doesn't actually reflect the most evolved designs and drawings. Third--and most important, in my opinion--this investment has been made before an inventor has conducted real market research to validate marketability of the product.

Two solutions that many inventors--myself included--use are to file provisional patent applications and trademark applications for the invention and product name or logo.

These applications provide the best of both worlds. At a fraction of the cost of a utility patent application, a provisional patent application is not actually a patent. It never will convert to a patent or become public, unless further action is taken. A provisional patent application is a like a place holder. In essence, you are laying claim to the filing date of the provisional patent application if and when you elect to file for a full utility patent up to one year from the time you file your provisional patent application. So if you choose to file a provisional patent application on March 1, 2010, and you then choose to file a utility patent application eleven months later on February 1, 2011, the priority date for your utility patent application would be considered to be March 1, 2010, for all material substantively disclosed and enabled in your provisional application.

What does this mean?

From the date you file your provisional patent application, you have the legal right to write "patent pending" on your prototype and show it to whomever you wish. In the process, you will not lose your international patent rights and can still elect to file your utility patent application. But it gives you one year to develop your product and gain market information before you actually must make the final decision on whether to file utility and/or international patent applications.

So, how do you do this?

While technically you can write and file this application yourself, I recommend that you do it with some guidance and, at the least, a review by a registered patent attorney or agent.

There are three things to be careful about when writing a provisional patent application, according to intellectual property attorney Stuart West, founding partner of West & Associates :

Ensure that the application meets the written description and enablement requirements of 35 U.S.C. 112, by adequately describing not only the components of your invention and their connections, but also the operation of the invention.
Avoid using limiting or restrictive language in your written description , such as "must," "necessary," "essential" or other similar phrases.
Be accurate but broad with your descriptions. For example, if a nail is holding together two pieces of wood, an accurate but broader description of the nail would be a "fastener," or you may simply state that one piece of wood is coupled with the second piece of wood.
The second best--and still underutilized--legal tool for inventors, in my opinion, is the federal and various state trademark registration systems. Here's why:

Every product has a name, or it should. Once you begin using the name with prospective licensees and customers, the invention actually becomes synonymous with the name. I have seen this happen over and over. And there are only so many names an item could take that meet the criteria of being both catchy and able to be registered.

So give as much thought to names for your product as possible, and include questions about the name in your market research. Once you settle on your preferred name, trademark the name. Then when you speak with prospective licensees, use the name. (Note: I did not say you should tell them you are hooked on the name). But if they become accustomed to your product's name, they will see your trademark as another valuable asset you are bringing to the table. Plus it may further limit potential encroachment from likely competitors or knockoff products.

West says there are two things to understand about trademark use:

The underpinnings of trademark law are founded on the principle of first in use, first in right. Filing of a trademark application typically constitutes use, but so does simply using the trademark. In fact, in some states you must use the trademark publicly before filing a trademark application, and in the federal trademark system, a trademark must be used in interstate commerce before it can register. Therefore, use your trademark.
Once you've settled on and adopted your trademark you should identify it as a trademark by using either ™ or ® as appropriate. Check your local state laws regarding the use of ™.
In most states, trademark rights can be asserted regionally for free, simply by applying the T to a product (done by typing the letters "t" and "m" between two parentheses. The writing program automatically shrinks and raises it to have the T appearance.)

Second, a trademark can be registered with the U.S. Patent and Trademark office and overseas. This is a faster process, taking only 10 to 14 months. Once it is registered as a U.S. federally registered trademark, use the ® (also typed by inserting the "r" between parentheses).


I have always said that intellectual property, patents, trademarks and copyrights are just tools in your inventing tool box. Using the right tool can be extremely valuable. The nicest thing about a provisional patent application is that it can buy you time to figure out which other tools may be necessary. Likewise, trademarks are a valuable tool inventors overlook.

Tuesday 30 September 2014

Patent searching DIY for you

Step 1: Brainstorming Keywords
The first stage of the patent search is the keyword discovery stage.  In this stage, brainstorm various keywords that might be contained in prior art documents that disclose your invention.
When brainstorming keywords, include industry specific terms as well as generic terms.  The search function at the Patent Office website cannot distinguish between the two.  Moreover, the search function does not include synonyms.  Try to be inclusive in this stage.
You may have found, if you have already attempted a patent search, that the search result contains numerous irrelevant references.  The reason is that certain words might have different meanings in different industries.  The search function does not place words into context.  It is a pure text string search.

Step 2: Class and subclass look up
The second stage attempts to limit extraneous or irrelevant search results by searching within one or more classes or subclasses.  The USPTO classifies each patent document within one or more of 450 different classes.  Within each class, there are multiple subclasses – literally hundreds or thousands of subclasses per class.  As a result, the subclasses are detailed subdivisions and categorize different aspects of the class at the granular level.
If a search is made within the right class and subclass, then irrelevant references are less likely to show up in the search results.  The downside is that the all of the right classes and subclasses must be searched.  To ensure that all of the right classes and subclasses are found, the search process must be treated as an iterative process.  After relevant references are found, the classes and subclasses of those references are checked to determine whether all relevant references have been found.

Step 3: Search patent and published application databases
The USPTO maintains two different online databases, namely, a database of issued patents and a database of published patent applications. Both databases must be searched because although there is an overlap, they both have their own unique set of references.  Not all patent applications mature into a patent.  Hence, published patent applications that have not matured into a patent will not be found in the issued patents database.  Also, not all issued patents were published as a patent application.  The inventors could have submitted a request for non publication.  These patents will not be found in the published patent applications database.  Another way to streamline this step is to conduct the search on a third party site such as www.freepatentsonline.com.  Utilize the advanced search and be sure to check the boxes for patents and patent applications.  This should reduce your work in half.
While a review of the references found through the search process is made, you will find additional keywords and other potential class/subclass for further search and consideration.  The above process is repeated for those additional keywords and classes and subclasses.


Then again, you can use automated tools like XLPAT for searching patents from over 100 jurisdictions, 32 full text patents available. To contact us for any IP related services, please fill the form here.

Monday 4 August 2014

Intellectual Property for SME’s

According to this news article on Business Standard, thousands of SME’s lose out huge revenues just because they are either unable to afford IP services or are unaware of them. This article highlights the problems associated with IP service handling for SME’s and their solutions.

Challenges that most SMEs face in acquiring IP protection include the following:

• inadequate manpower to undertake the necessary groundwork needed for IP acquisition, for example, initial searches and other pre-filing procedures;

• high costs involved, particularly, in the patenting process which may go hand in hand with expenses for the translation of documents and fees for IP agents or attorneys;

• Inadequate “in-house” knowledge of IP rights and procedures for their protection.

 Before seeking IP protection for your SME in a particular country, you are advised to study the country’s legal system that governs IP issues. There are various sources of information on IP legislation. Probably the best place to start would be the national or regional IP office or copyright office to obtain the details of IP protection in your country. It is often advisable to seek guidance from an IP agent or attorney particularly when the relevant IP laws require that an applicant who is not residing in the country be represented by an agent or attorney entitled to practice in that country. The IP office or IP agent/attorney should be able to advise you as to whether special incentives, in terms of reduced fees, are available to SMEs for IP acquisition and maintenance.

 To some extent, the burdens associated with IP acquisition may be diminished if you have a greater understanding of how the IP system can be used effectively. SMEs may also reduce the workload and costs of acquiring IP by applying for IP protection through regional or international arrangements when seeking IP protection abroad (see “Protecting the IP Rights of Your SME Abroad”), making use of special incentives offered to SMEs, wherever available, or opting for lower levels of protection as in the case of utility model protection, where the legislation of the country or countries in question allow such forms of protection.

Alternatively, you can choose to hire an IP firm that specializes in SME’s to do all the legal work for you without putting too much of a burden on your economical resources. TT Consultants is one such firm which has helped clients globally in their IP endeavors with excellent results. With 8 years of experience in this field, they are one of the top most IP firms dealing with SME’s. To contact them, please use the form here