frequently asked questions (FAQ)
What about those “Do it Yourself Provisional Patent” kits?
Where can I get a "Provisional Patent Application Form"?
How do I turn my Provisional Application into a patent?
What's the difference between a Provisional Application and
a Disclosure Document?
What About Foreign patents?
When should I consult my patent advisor?
What are Typical types of items that may be protected by Utility Patents?
On what subject matter may a patent not be granted?
Who may apply for a U.S. Patent?
Can I apply for my own patent, without a patent attorney?
Does my patent application have to be published by the USPTO?
Is there any danger that the Patent and Trademark Office will give others
information contained in my application while it is pending?
If one person furnishes the ideas for invention and another person employs
him or finances his experimentation, should the patent application be
filed by them jointly?
I have made some changes in my invention after the filing of my patent
application documents. May I amend my patent application by adding a description
and illustration of these features?
While in a foreign country, I found an article on sale which has not yet
been introduced into the U.S. or patented or described in
the U.S. May I get a U.S. patent on this invention?
If I obtain a patent on my invention, will that protect me
against claims of others who say that I am infringing their patents?
What do the terms "patent pending" and "patent applied
Can an inventor sell his right to a patent or patent application to someone
Does a U.S. patent protect my invention in other countries?
I mailed myself a description of my invention. I'm protected by the patent
laws now, right?
How long does the process take?
You keep using the word “art.” What do you mean by “art?”
What’s the difference between a design patent, a provisional patent, and
a utility patent?
What is not patentable?
Do I need a prototype?
Does my invention have to be completely new?
How much protection does a patent really give me?
Should I get a Patent?
How much does it cost to get a Patent?
Should I buy it? Why can’t I “Patent
FAQs about Design Patent
What are typical type of items that
may be protected by Design Patents?
Questions about Provisional Patents
about those “Do it Yourself Provisional Patent” kits?
A Provisional, while
not examined, is subject to the same written description standards under
35 USC 112(1) as a regular application. Thus, if your invention is not
properly disclosed, you leave nothing for a patent practitioner to work
with when the time comes to file a formal application.
Hence, the DIY kit must also provide you with a detailed understanding
of how to comply with the 112(1) written
description requirement; otherwise, it is not worth it!
Patent Office filing
and issue fees for a patent application are well over $1000. It is not
worth paying these fees unless the Patent is worth something. Often,
a patent practitioner can review your work at a nominal fee, to help assure
that your provisional application draft is 112(1) compliant.
Where can I get
a "Provisional Patent Application Form"?
You can't. There's
no such thing. Your patent application needs to be written up just like
any other patent application.
How do I turn
my Provisional Application into a patent?
You can't - a Provisional
Application will never become a patent. It's necessary to have a utility
patent application on file, which will be examined and (hopefully) issue
as a patent. There are two ways to do this without losing the benefit
of your Provisional Application filing date:
- File a regular
utility patent application within a year of the Provisional filing date,
claiming priority from the Provisional. The filing date of the provisional
application will be transferred to the new application, giving an earlier
filing date for priority purposes but not reducing the 20 year term.
- Convert the
Provisional Application to a regular utility application. The American Inventor's Protection
Act of 1999 (AIPA) changed the law to permit the conversion of a Provisional
Application into a Utility Application, even if the Provisional did
not have claims, which are required in Utility applications. It appears
that the PTO never expected this route to be used, but added the provision
to address concerns in other countries that the Provisional might not
count as a "real" patent application for priority purposes.
The USPTO fees for doing this are not specifically listed on the PTO
fee schedule, but it would seem safe to assume that the fee would be
the same as a regular filing fee, plus the petition fee for filing the
petition to convert the provisional to a utility application. If the
provisional did not have claims, a preliminary amendment would be required
to add the claims.
In the end, legally
it shouldn't matter which path you took - filing a new application or
converting the Provisional - but procedurally there could be big differences.
The normal path is
to file a new application referring back to the provisional which is much
more formal and, in most cases, more detailed than the Provisional. Most
Provisional Applications will take significant work to turn them into
a useful utility application, and it's easier to do that by filing a new
application than by trying to amend the existing one. The term of
the patent which will issue on the utility application will be twenty
years from its actual filing date, not the provisional filing date.
If you convert the
provisional to a non-provisional, it would appear that the usual rules
against adding "new matter" to an existing application would
apply, which would preclude adding anything which wasn't in the provisional.
The "new matter" rules don't apply if the provisional is simply
followed by a utility application, although of course the priority date
of the provisional application doesn't apply to anything which wasn't
in the provisional. There is also additional paperwork to be filed
- a petition to convert (with fee), a preliminary amendment to add claims,
and all the additional transmittal forms, etc. - which are not needed
when a new application claiming priority is filed. Finally, your
patent term will be counted from the filing date of the provisional (now
converted to non-provisional) application, rather than from the date of
the later-filed utility application - in other words, you lose up
to a year of patent term.
In short, there doesn't
seem to be any advantage to conversion, and, while that path is open,
it does not seem that it is likely to be used as a practical matter.
What's the difference between a Provisional Application
and a Disclosure Document?
A Disclosure Document
is a paper filed under a program of the USPTO which allows an inventor
to file a description of his invention with a small fee ($10). If the
Disclosure Document is referred to in a patent application which is filed
within two years, it would serve as evidence of the date of conception.
If a Disclosure Document is not referred to in a patent application within
two years, it will be destroyed. The Disclosure Document does not document
date of invention (that requires reduction to practice, in addition
to conception), and it does not provide an effective filing date
for a later-filed application.
The Disclosure Document
was used for many years by unscrupulous Invention Marketing Companies
as an inexpensive way for them to claim to have filed a "patent
document in the US Patent Office" without going through the expense
and complexity of actually filing for a patent (especially when they knew
that many, if not most, of the inventions that they took money for "marketing"
wouldn't have been patentable, anyway).
In all the years
the Disclosure Document has been in existence, there are no reported cases
of which we are aware in which the Disclosure Document did any good whatsoever
- and there were several cases where statements were made in Disclosure
Documents which were later held against the patentee to limit the scope
of the patent. We do not recommend filing Disclosure Documents.
The ability to claim
the filing date of the Provisional Application makes them much more useful
than the older Disclosure Document program (which only serves as evidence
of conception), and with the introduction of the Provisional Application,
the Disclosure Document program has become for all intents and purposes
obsolete (although it remains on the USPTO fee schedule).
What About Foreign
You need to file
for patents in foreign countries within a year of filing a US Patent Application,
if you want to use the filing date of the US application as the effective ("priority")
filing date in the foreign countries. This can be very important, since
most foreign countries do not permit any sale or publication before filing
for a patent. In the past, many applicants used this year to test the
waters and see how the USPTO was going to respond before committing to
the enormous cost of filing in other countries.
Application starts the 1-year period for foreign filing, if you are going
to use the earlier Provisional filing date as your "Priority Date"
for the foreign application(s).
Thus, if you are
planning to file in foreign countries, you'll need to file both the US and foreign (or PCT)
applications before the end of the year from your PPA filing date. As
a practical matter, this usually means filing them at the same time, which
could be a very large expense which would otherwise be spread over a year.
This could mean that
most of the one year grace period most applicants rely on before deciding
where to file could be used up before the formal application is prepared
and filed. Of course, you could always use the later filing date of the
formal application as your priority date, unless there's a publication
or the like which will make this impossible.
Questions about Patents
When should I consult
my patent advisor?
The best time to involve
a registered patent advisor, is at the beginning. It is best to know the
rules before starting to play the game. Most registered patent professionals
will be willing to conduct an initial consultation with a prospective
client, for a modest fee, for the purpose of providing some initial information
and advice. At this consultation an inventor can find out more about what
types of protection are available, and at what cost. Often a fee estimate
can be made of how much it might cost to proceed with any further work.
What are Typical
types of items that may be protected by Utility Patents?
toys, electronic devices, computers, computer programs, games, chemical
formulas, articles of manufacture, and an infinite variety of apparatus,
devices, systems, etcetera.
On what subject
matter may a patent not be granted?
A patent may not
be granted on a useless device, on printed mater, on an improvement in
a device which would be obvious to a person skilled in the art, or on
a machine which will not operate, particularly on an alleged perpetual
Who may apply
for a U.S. Patent?
A patent may be granted
to the inventor or discoverer of any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, or on any distinct and new variety of plant, which is asexually
reproduced, or on any new, original, and ornamental design for an article
Can I apply for
my own patent, without a patent attorney?
Sure, it is not recommend,
though. There are a number of books on the subject and, as in any legal
matter, you do have the right to represent yourself, or to be pro se
as we attorneys would say. However, what you get when you pay a patent
attorney or patent agent to file and prosecute your application for you
is training and experience. By using an attorney or agent, you not only
get the benefit of experience, but you also gain objectivity. You have
a personal stake in your invention. You know it inside and out and invested
time, effort and energy in bringing it to the world. When you get your
first Office Action from the USPTO with most, if not all, of the claims
rejected, you may be confused as to the grounds. You may also be prone
to give up due to the energy you have already expended in the inventing
process. When an attorney or agent gets an Office Action from the USPTO
and most of the claims are rejected, we consider that par for the course,
notify you, tell you how we will overcome the objections and tell you
not to worry. Then we do it and the matter is done, over, no worries on
your part. Our added objectivity and experience also add value to the
patent when it is granted – we can think of things that are equivalent
to parts of your invention and add them to the application when you may
have missed them. Another important aspect is that the specification,
claims, and amendments must be written with legal precision; otherwise,
even if you can get your patent awarded, you may find that it is worth
much less than you thought after a court (in an infringement case) or
attorney (of a potential licensee) determine your patent is unenforceable
for any number of detailed legal reasons.
Does my patent
application have to be published by the USPTO?
Beginning March 2001,
the USPTO began "publishing" utility patent applications
(not design patent applications) filed on or after November
29, 2000 (including International applications).
In exchange for the publication of a patent application, patentees may
be able to obtain a reasonable royalty during the period beginning
on the date of publication of the application by the USPTO and ending
on the date the patent is issued ("provisional rights").
An application may be published earlier than the end of such eighteen-month
period at the request of the applicant. An application will not
be published if an applicant makes a request upon filing the application
certifying that the invention has not and will not be the subject of an
application filed in another country, or under a multilateral international
agreement, that requires eighteen-month publication.
Is there any danger
that the Patent and Trademark Office will give others information contained
in my application while it is pending?
All patent applications
are maintained in the strictest secrecy until the patent is issued or
the application is published. Publication is limited to only certain applications.
After the patent is issued, however, the file containing the application
and all correspondence leading up to issuance of the patent is made available
in the files information room for inspection by anyone, and copies of
these files may be purchased from the Patent Office.
If one person
furnishes the ideas for invention and another person employs him or finances
his experimentation, should the patent application be filed by them jointly?
No. The application
should be signed by the true inventor and filed in his or her name.
I have made some
changes in my invention after the filing of my patent application documents.
May I amend my patent application by adding a description and illustration
of these features?
No. The law provides
that new matter cannot be introduced into the disclosure of a patent application.
However, there is a procedure called "continuation-in-part application"
that allows the patent applicant to file a new application which contains
new subject matter to replace or supplement the original. You should notify
your patent practitioner immediately of any changes you make in your invention.
While in a foreign
country, I found an article on sale which has not yet been introduced
into the U.S.
or patented or described in the U.S. May I get a U.S. patent on this invention?
No. According to
the law, a U.S. Patent can only be obtained by the true inventor, not
by one who learns of the invention of another.
If I obtain a
patent on my invention, will that protect me against claims of others
who say that I am infringing their patents?
No. There may be
a patent of a more basic nature on which your invention is an improvement.
If your invention is a detailed refinement or feature of such a basically
protected invention, you may not use it without the consent of the patentee,
just as no one will have the right to use your patented improvements without
your consent. Seek competent legal advice before you commercialize your
invention, even if your invention is protected by a patent granted to
What do the terms
"patent pending" and "patent applied for" mean?
They are used by
a manufacturer or seller of an article to inform the public that an application
for patent on that article is on file in the Patent and Trademark Office.
The law imposes a fine on those who use these terms falsely to deceive
Can an inventor
sell his right to a patent or patent application to someone else?
Yes. The inventor
can sell all or any part of his interest in the patent application or
the patent. The patent application must be filed in the Patent and Trademark
Office as the invention of the true inventor, however, and not as the
invention of the purchaser.
Does a U.S. patent protect my invention in other
No. The U.S. patent protects your invention only
in this country. If you wish to protect your invention in foreign countries,
you must file an application in the patent office of each such country
within the time limit permitted by law. Check with your patent practitioner
about costs before you decide to file in foreign countries.
I mailed myself a description of my invention. I'm protected
by the patent laws now, right?
No. All you have
done is establish that you have invented your invention by a particular
date. This does prove useful if there is ever a dispute over who invented
what and when, but that's all it does. The problem is that there is no
disclosure to the world as to what you have done. Therefore, if someone
(Inventor 2) invents the same invention the day after you do, he is none
the wiser. It is not fair to Inventor 2 if you could then enforce your
SASE as a patent. In fact, if Inventor 2 also invents and files for a
patent within 1 year of the day you invented the invention and obtains
the patent while all you do is hold on to the SASE, you lose. Why? Because
sitting on it for a year and doing nothing leads to a strong assumption
you abandoned your invention, cutting off any rights you may have as a
prior inventor. We reward the disclosure with a patent, not the invention
itself. Also, in the U.S., there is a one-year window from
the point the invention is filed where prior art is not counted. Your
invention would be prior art, but if Inventor 2 files before the year
has elapsed, your prior art does not count. Inventor 2 would get to keep
the U.S. patent, for the full term, with
all rights and privileges, including preventing you from using, selling,
How long does the process take?
It depends on USPTO
manpower. If the art is crowded, and there are many applications to process,
it could take over 2 years. If it is not crowded, then the process could
take as little as 18 months.
You keep using
the word “art.” What do you mean by “art?”
Art refers to the
type of invention. Is it a computer part, a new engine for automobiles,
a business method, a chemical compound, a toy? All of these are just
examples of what an invention can actually be. No one would presume a
toy is the same thing as a new organic chemical compound, and because
one understands toys does not means one understands chemistry, and vice
versa. Therefore, the USPTO has divided all technology into individual
arts, or classes. Anything man can make can be categorized in one of
the hundreds of classes or subclasses that the USPTO has defined - even
if it is defined as miscellaneous. By “art,” it is meant a particular
area of technology, like toy making or organic chemistry, usually defined
by a class and a number of subclasses.
What’s the difference
between a design patent, a provisional patent, and a utility patent?
A design patent protects
non-useful, ornamental designs and lasts for 14 years. A provisional
patent does not really exist – it is a provisional patent application,
which waits for perfection into a utility patent application for up to
one year, during which time you may label your invention as “Patent Pending.”
The Utility patent is the traditional “patent” for a new, useful and non-obvious
invention. It lasts for 20 years from the date of filing, but in no instance
less than 17 years from the date of issue.
Can I file for,
obtain a design patent, and still enforce it like a utility patent?
Yes and No (You love
those weasel lawyer answers, don’t you?). A design patent is a
patent, and can be enforced as such to the extent of what it protects.
The problem is, what it protects is ornamental design. In other words,
it protects how something looks or, to sum it in one word, prettiness.
If a person wishes to get around a design patent, all he/she has to do
is add a different feature or two and, if it is the right feature or two,
Viola! They avoid your design patent. Also, woe to you if it goes to
court and the court finds the protected features are actually useful!
Design patents are NOT for useful designs, utility patents are – that’s
one way to void your design patent in a hurry. Do design patents have
a place in our society? Of course they do, when used properly – possibly
even in conjunction with a utility patent.
What about licensing?
Can I sell my idea for a million dollars and retire?
You need to realize
that inventing is hard work, manufacturing and marketing on top of that
is even harder. Generally, the further along in the process you are the
better you are for a number of reasons. First, there is less start-up
cost and time to potential buyers. Second, you can establish a track
record. Third, patent protection. Fourth, you acquire knowledge about
the market. Fifth, you get a good dose of reality. Very few inventors
will make a profit off an invention. It is not because most inventions
are duds, it can be a number of factors ranging from the “dud” factor
to inability to capitalize the invention, market trends, someone invented
it first, it flopped then and no one wants to touch it now. There are
too many variables to say what you can “sell your idea for.” A good rule
of thumb, if it is an idea and an idea only – probably not (99.999+% of
the time). If it is an invention, you have a patent and it has a high
demand as shown by success in a couple of test markets – maybe.
What’s the difference
between an idea and an invention?
What we in the business
call “reduction to practice.” You have an idea, but how do you make it
work? Have you built a prototype? Do you know what the chemical formula
is to make the invention? Have you tested it? Can somebody take what
you know and, in an almost rote fashion, recreate it with no inventive
or inspirational step from what you disclose to what the invention is?
If you can embody the idea; give it form; the only thing stopping you
from building the prototype is the budget; then you can move on and obtain
patent protection because you have an invention. If you cannot say how
the parts of the invention fit together; if the budget is preventing you
from answering how things fit together; if you have no clue as to what
chemical compounds you have to use to treat the given substance, or even
what the given substance is, in order to create your new invention – you
have an idea. You should talk to somebody (i.e. a patent attorney) about
this to make a final determination as to how far along you are.
What is not patentable?
An inventor cannot
receive a patent for perpetual motion devices, abstract ideas, laws of
nature, or naturally occurring substances. An inventor cannot receive
a United States patent for an invention publicly
disclosed more than 12 months ago.
includes any sale, exhibit at trade show, or printed in a publication,
with a few exceptions. You should seek a Patent Attorney's opinion if
you have any questions whether your invention is patentable. It
should also be noted that you do not need a prototype when seeking patent
protection - you only need to be able to describe the invention in sufficient
detail so that one skilled in the art could construct your invention.
Do I need
The first thing all
inventors should know is that they
do not need a prototype to file for patent protection.
Many inventors mistakenly believe they need a working prototype prior
to filing for patent protection. However, prototypes can be useful
when determining whether your invention will work properly.
If you plan to license
or sell your "patent rights" to your invention, there is no
need to build an expensive prototype unless you need to determine if your
invention will work properly. Obviously if you are going to manufacture
products under your patent rights you will need to design a working prototype
prior to manufacturing the product.
Does my invention
have to be completely new?
To qualify for patent
protection, an invention does not have to be totally new. It can be an improvement on existing
items or methods. Even a small functional or decorative improvement may
There are two major
parts to the definition of "patentably new". The first of these
requires the invention to be new in a narrow, but unambiguous sense. The
invention satisfies this first test as long as there is no earlier patent,
product, or published reference that has all of the invention's claimed
features. The second part of the definition requires the invention to
be more than just a small straightforward improvement. In the US this limitation is stated by requiring that the subject
matter of the invention, taken as a whole and considered at the time at
which the invention was made, is not obvious to a person having ordinary
technical skill in the art. In the European Patent Office and in international
applications under the Patent Cooperation Treaty (PCT) the
same sort of prohibition on patenting small, obvious improvements is handled
by requiring "an inventive step". Either one of these approaches
puts a healthy dose of ambiguity into the examination process. There is
always room to argue about what would have been obvious when the invention
was made, or how big a step has to be before it becomes inventive.
How much protection
does a patent really give me?
The degree to which
the invention is new and different sets a basic limit on the breadth of
available protection. A patent novelty search can
often help the inventor decide if seeking patent protection is worthwhile.
How the patent application
is written also sets important limits on protection. A poorly written
patent can deprive an invention of all protection.The prospective patentee
should expect his or her agent or attorney to ask
about alternate ways of carrying out or using the invention so that the
application can justify the broadest allowable claims.
What is protected
by a patent is what is described in its claims. The claims should be written
to withstand a hostile reading by someone who would like to design around,
or otherwise avoid the patent. From a patent owner’s perspective, no other
I get a Patent?
The most commonly
asked question. The best answer for most people is "No". Although
about 95% of all patent applications filed eventually issue as Patents,
probably less than 5% of these actually generate income or provide a significant
advantage for their owners. For solo inventors, the percentage is probably
Whether or not an
invention makes money for an inventor depends upon the merits of the invention
itself, and also the amount of effort the inventor puts into the invention.
A great invention, no matter how great, will languish for lack of inventor
involvement with regard to development, prototyping, and marketing. Similarly,
a mediocre invention will probably not succeed no matter how much it is
developed or promoted.
A Patent will not
cause the invention to succeed or fail in and of itself. The Patent will
only provide you with ownership rights to the underlying inventive
concept. It may be useful in preventing others from copying your invention
or it may be useful when the time comes to sell your invention and business.
However, the Patent, by itself, will not likely make money on its own.
The underlying invention must also have some merit.
much does it cost to get a Patent?
The lawyer answer
is "it depends". The serious answer is "a lot".
What many people don't realize is that obtaining a Patent is not like
filling out a form for your driver's license. It is not simply a matter
of completing some forms and submitting them and waiting for the Patent
in the mail.
The reason for this
is that the scope of your Patent depends upon how the claims are
drafted and how carefully the Specification is drafted as well. Patent
Examiners examine the application, and in about 90% of the cases,
reject the claims. These rejections usually are not serious -
it is just the Examiner's way of getting you to argue what your invention
is, and more importantly, is not. This examination process
can be confusing to an individual inventor. However it puts on record
what the Examiner and more importantly what the inventor considered
their invention to be. During litigation, these arguments and amendments
are usually critical to an understanding and analysis of the Patent.
are unscrupulous lawyers out there (and invention brokers) who will file
for narrow "picture claim" Patents for solo inventors, figuring
that the inventor will never succeed with his invention anyway, so a narrow
Patent will not matter. A "Picture Claim" Patent is so narrow
in scope that the Examiner will allow it on a first Action. Unfortunately,
such Patents are easy to design-around to avoid infringement. For example,
one attorney would add a suitcase-type "handle" to each invention
(whether it needed it or not!) and claim that handle in excruciating detail
in the claims. If an infringer did not use that exact handle, or left
it off entirely, the Patent was not infringed.
Thus, if you want
a real Patent, with claims of some scope, it is necessary to carefully
prepare the Specification, Drawings, and Claims, and prosecute
the Patent before the Patent & Trademark Office. This process can
take anywhere from 1-5 years or more.
with your attorney is going to be a long term one. When shopping around
for an attorney, get a written price quotation for the cost of
preparing the application, prosecuting the application, and also an estimate
of issue-related costs.
As the prosecution
process is open-ended it is impossible for any attorney to guarantee a
fixed price to "get you a patent". If an attorney does offer
you such a "fixed price" - beware.
Get it in writing.
If an attorney claims them can't accurately quote you a cost in writing,
chances are you can't afford that attorney.
That being said,
as a "ballpark" estimate, presuming that the invention is a
"simple" mechanical one, and the prosecuting is not overly extended
(e.g., two Office Actions) the cost of "getting a patent" could
run anywhere from $4,000 to $12,000 depending upon the attorney you use.
Note that this is not a price guarantee or price quote for services.
I saw a book by David
Pressman called “Patent It Yourself”. Is this a good book? Should I
buy it? Why can’t I “Patent It Myself?”
Generally, such books
get a mixed review in the IP community. Of course, there is a need for
some sort of instruction manual for the pro se (do-it-yourself)
inventor. However, the legal liabilities in writing such a book are great,
both for the applicant and the author.
It is, generally,
a very bad idea to “Patent It Yourself”. Not because takes work away
from patent practitioner, but because you can end up with a worthless
Patent. The patent system is arcane and complex and it takes years of
experience to understand it fully. It is widely accepted that a patent
application is one of the most complicated legal document to draft correctly.
The Pressman book
is probably good background information, and reading it will help educate
you a lot about the Patent system. However, it Is not a substitute for
experience in the business, and lack of such experience is costly. Read
the book, try to draft your own application, then submit it to a register
patent practitioner. If done well, your efforts and education
could save you a lot of money.
There are so many
ways to shoot yourself in the foot when writing and prosecuting a patent
application, you should definitely not try to “Patent It Yourself”.
Most Examiners (like
most attorneys) view pro se applicants as a nuisance and don’t
believe their inventions will ever be successful. They suggest narrow
claims to get the inventor “out of their hair”. The inventor, not knowing
any better is happy that his patent is “allowed” even though he doesn’t
realize that it may be of little value.
In many instances,
broad patent protection has to be hard fought and hard won. What the
Examiner is willing to hand to you often isn’t worth paying the issue
Can I tell anyone else about my invention?
The safest course
of action is to tell no one about your invention except your patent attorney
or agent until you have filed a patent application. Patents are
awarded only for inventions that are not already known to the public,
so revealing your invention to anyone except your patent counsel could
prevent you from ever obtaining a patent. And, of course, another
person who knows of your invention may file a patent application before
you, and/or start producing knock-offs.
Disclosing your invention
without having a patent application on file is a little like jumping off
a cliff—you cannot change your mind once you have jumped, so you had better
be sure that you will like the landing. At minimum, you would need
to have written, signed, enforceable non-disclosure agreements with everyone
who is NOT a patent attorney or agent.
Although a nondisclosure
agreement may offer some protection, it is difficult to draft an agreement
that covers every situation that may arise, and even more difficult to
enforce such an agreement in the event of a dispute between the parties.
You are in the strongest position if you have an application on file before
you approach a potential buyer or licensee. If you are in a hurry,
a provisional patent application (described below) may allow you to file
The US gives you a one-year "grace period" between
the date you disclose or sell your invention to the public and the date
after which your invention can no longer be patented. However, most
other countries offer NO grace period, so disclosure can instantly terminate
potential patent rights in much of the world. You may not be thinking
of international markets at this point, but if your invention does well
in the marketplace, carelessness now may cost you dearly later.
Some inventors attempt
to obtain financial backing or even sell their invention before filing
a patent application. However, manufacturers are often wary of inventors
who approach them with "an idea." A manufacturer who evaluates
and rejects an inventor's idea runs the risk of later being sued
by the inventor if the manufacturer markets anything that the inventor
might imagine to have been derived from the idea, even if the
manufacturer's product is basically different and/or was invented independently
in-house. A company may therefore be unwilling to sign an agreement
or evaluate an invention because it might then be hampered in its own
development and marketing efforts. Consequently, some companies
have a flat policy of refusing to even LOOK at independent submissions.
If you've defined
your idea well enough to formulate patent claims, the manufacturer can
at least look to the claims to determine what it can and cannot do.
On the other hand, a manufacturer who signs an agreement that essentially
forbids it from disclosing or using your invention without clearly defining
your invention opens itself to liability. A manufacturer or investor
will also take you much more seriously if you own a property right in
FAQs about Design Patent
What are typical type of items that may be protected by
shapes of articles, fonts, dolls, toys, jewelry, tools, parts,
castings, sculptures, the ornamental appearance of an infinite variety
of items, etcetera.
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