Patents...

[Rick Christopherson]

I'm running late, so I need to keep this short...sorry. You can go to the USPTO website and research the patent process.

The best thing to do is file a Provisional Patent Application (PPA) first. This doesn't have to have all of the complex language, but does require a description and drawing. There is an MS Word template for completing one at the USPTO website. Your PPA is never reviewed, and that is why it doesn't require the complex language and claims the full Patent Application (PA) requires. The PPA is simply a placeholder in the system for your full PA. The PPA gives you 1-year of protection without requiring the full search or other expense. It also allows you to legally state "Patent Pending". You can complete the PPA yourself, pay the small filing fee, and even file it on-line.

The best thing about the PPA is that when you approach a patent attorney to complete the full PA 12 months later, the cost will be much lower because a lot of the work is already complete, and they just need to fill in some details. The other benefit is that once you have the patent, your protection date is retroactive to the date your PPA was filed. This actually gives you an extra year of protection over just filing a PA without the PPA.

I think the only time your PPA is examined is to confirm that your PA is describing the same invention. Your PPA is not public and cannot be searched or reviewed by your competition. If they infringe on the claims later made in your PA, they will be accountable from the date your PPA was filed. That's a risky situation for them, so your level of protection is quite good.

A PA should not cost a fortune unless it is so complex that it requires a lot of time to author the specific claims. Contrary to popular belief, the patent search is not the big expense with a PA. Technically you don't even have to do a patent search because that is what the patent reviewer does (forgot the proper name for this USPTO job). That doesn't mean you shouldn't search (which you can do on your own at the USPTO website), because if you file a patent that infringes on an existing patent, your application will be rejected and cost more money to re-file, and you could lose all protection instead of just the infringing claim that shouldn't have been listed.

If you really want to minimize your cost, then complete the PPA as though it was a full PA, and then bring that document to your attorney and ask them how much will it cost to convert this into a full PA (use the wording "convert to PA"). If you've described your claims in a reasonable manner, then all they have to do is fix the wording and language. On the other hand, if you find an attorney that tells you it's a flat-fee for a PA regardless of what work you have already completed (like the ads on TV) then walk away and find a reputable attorney.

 

[Rick Christopherson]

Sorry, I hadn't read some of the new postings before posting mine. Your U.S. PPA or PA will not protect you from someone in China taking your design unless you also file an international patent in that country. However, if you file in that country, you are protected in that country under whatever rules that country uses. That's the problem with patents is that they are not automatically global. You need to anticipate which countries an infringer may be located in. (By the way, for International protection, your PPA must include at least 1 claim before it qualifies as a placeholder in most countries. This is not required for U.S.-only protection.)

If you are protected in the U.S., they cannot sell in the U.S., but they can still build it in China and sell it in other countries. Your protection is limited to the country(s) you file in that they sell in, but that protection does include sales, not just manufacture. Technically, if I wanted to be a jerk, I could have probably stopped the super-sized Domino from ever reaching the U.S. shores, but that is not something I would ever consider and I let the option lapse.

 

[Ken Nagrod]

I just spoke with my uncle and what Rick has said was confirmed by my uncle.  He also said that there are so many options for filing a patent with the U.S. government and the costs have continually risen, that's why it gets expensive.  He said that in 1966, when he first started out, it only cost $65 for the application fee.  The patent process takes a long time because patent examiners have to deal with more than 100,000 patent applications per year.  They are first classified into a certain category, then subcategorized for examination and issued a docket where by the process of research takes place and if the examiner rejects certain aspects, it's a back and forth process of the patent applicant changing or eliminating certain parts and resubmitting them for approval.  He also stated that if you got a patent in another country, even though it doesn't apply here, it makes it difficult for someone here to copy and apply for their own U.S. patent, so the U.S. kind of accepts foreign patents by making it tough for a person here to copy it, not impossible, but very difficult.

You can do the whole process yourself, but as previously stated there are risks and legal ramifications.

 

[pugilato]

good stuff... many thanks, guys.

 

[Ken Nagrod]

I forgot to mention, if you discuss details of your item with anyone other than an attorney during the first year before patent application you can lose your rights to patent it because of public knowledge.

 

[pugilato]

What?  Public knowledge?  I'm selling the machine right now...  Does that preclude getting a patent?  I have built three prototypes since 2009, and I started tinkering with the design probably in 2008.  Those prototypes are where I sold them at the time I built them.

 

[Brice_Arnold]

Yep, as soon as you sold the first one your 1 year provision started I guess you could still file a provisional but someone could also come along and file a provisional and I think they could even come after you if they file first. But I am not an attorney.

 

[Ken Nagrod]

My uncle told me that patent examiners research whether something is considered already known or available to the public and if that's the case, the patent application cannot be approved.

 

[pugilato]

so... one other guy is the public.  no matter, i will put in for it anyway.  if nothing else so that some other guy cant sue me for selling what I designed.