Patent

[Mr Miyagi]

Have you gone about getting one?

I have an idea for a product that I am think of launching / designing - but I might need a patent to protect myself for competitors.

Tim mentions in his book about putting an application in for $150 (is that right?) and once it is being applied no one can copy your product.

Can anyone give me some more information, especially about the second parragraph - the $150 patent to save time and money.

[Primedirective]

The patent you're referring to is called a "Provisional Patent"....or more commonly known as "Patent Pending"......it's cheaper than the "Utility Patent" but it is temporary.....eventually you'll get the "Utility Patent" but that takes 1-3 years (which is why they created the "Provisional" so you're protected in the meantime.) It's about $300. Look it up on legal zoom, Google, and wikipedia. Good info there. I'm planning on getting one but I can't seem to get any answers to the question "Do I get it now before making a prototype, or make a protoype, test the muse, then if it looks viable, go for the patent?"..........my hunch tells me to get the patent 1st just to cover my a##. Let's keep comparing notes, I'd like to know what you find. Thanks!

[Geof]

"I'm not a patent attorney, and I don't play one on TV", but I have about 8 patents to my name and almost that many pending.

A provisional application is about $150 or so (IIRC) rather than $300- the smaller fee is for a "small entity", which covers a person as well as a small business. At a most basic level it is pretty easy to file- you just put down on paper everything that is needed for a PHOSITA (person having ordinary skill in the art) to be able to replicate it with some tinkering allowed. If it is a gizmo, this could be details on how to make the gizmo that another "ordinary gizmo maker/designer" could use to make their own. This document is not where you hide things- put your secrets down! Then you either send in a hard copy or file electronically (you have to PDF everything) along with the appropriate cover sheets.

Provisional patents are a great way to get the benefits of an earlier filing date for a patent application without having to go through the effort (or expense if using an attorney or patent agent) of filing a regular patent. You can think of it as buying an "option to file" for a year. This is ideal if you with to have that extra year to test out the idea before incurring that extra time and money expense.

However there is one drawback- Once you've filed *any* patent application, if your invention really takes off big, and you want to pursue protection internationally (get ready to cough up $100k+ if you want to do this all out), then you have to file a PCT application (typically $3000-6000 in my experience, plus those nice lawyer fees) within a year of filing either the provisional or the regular application. So what that means is that the one year clock starts ticking when you file the provisional. This is a moot point, though, if you don't want foreign protection.

I suggest you take a look at the book "patent it yourself" by David Pressman for a primer, written for the layman. I use an attorney for many of my patents (the complicated or more critical ones) but this book has been helpful as I've done some on my own.

However there are two things to note:

First, if you have already "invented" the device, and you don't care about foreign protection, then you can actually wait a year to file. America is a "first to invent" nation (whereas the rest of the world is "first to file") This may change soon, but for now what it means is that if you actually make your gizmo, and can get multiple (3+) witnesses to sign statements saying that they saw it in operation (get them notarized, and no- don't lie!), then you actually can wait a year before filing *any* patent application! (The one year date is from when you first disclose the invention publicly or sell it.) So you can even get the witnesses to sign, then start test marketing now, and then wait a year before filing the provisional, and then wait another year before filing the full application- Two years to decide whether you want to make that investment.

Second, patents are not an "invincible wall". They are a barrier to entry. Many companies will infringe anyway, thinking you wont' notice, or thinking they'll just play a war of attrition in the courts if they are big and you are small. (Think Microsoft- oh wait- it's 2011- think Apple!) Also if you have a patent, it is up to you to enforce it- the Gov't does not do that. That means you have to sue infringers, which means either cough up the money to the lawyers, or convince them that the settlement amount will be enough for them to take on the case on contingency (e.g. if you sue and win they get a % cut). In practice this is not practical until the lawsuit amount reaches on the order of $1M. So if your idea has no chance to reach that level, then it is probably not worth patenting. (Though I do understand the ego satisfaction of having your name on a patent!)

Hope this helps.

[Primedirective]

Wow, Geof, that was a wealth of knowledge, thank you!
It's great to learn from someone who has "been there, done that"......very helpful.

The fees I found were on legalzoom.com.
It states:
Provisional Patent Pricing
Provisional Application for Patent $199
Government Filing Fee $110

Perhaps there's a better, less expensive way you know of..? I'd love to know! Like most of us, I want to spend as little up front on potential muse to see if it will even be profitable.

Maybe you can help with my question: My muse is a physical product which may sell for $30-50. Should I patent it 1st, then test it online, then manufacture and distribute?.............or do I test 1st, then manufacture, then patent?

Thanks again!

[Geof]

You are welcome!

I just checked the USPTO website (http://www.uspto.gov/web/offices/ac/qs/ope/fee2009september15.htm) and the filing fee for a provisional application is $110 for a "small entity" e.g. you.

Here is what I would do, if taking the "safe approach":

Step 1:

If you really want to pursue patent protection, the first thing I would do is write up a "disclosure"- hand-written text and hand-drawn figures are fine. But it should be detailed enough so that someone with "ordinary skill in the art" can look at it and duplicate your invention. For example, if it is a new engine then the document should be written so that an engineer or mechanic familiar with engine design can look at it and say "aha!". (e.g. you don't need to write it for someone without that experience.) Then have preferably three friends/colleagues, who are able to understand what you wrote, sign the document with the statement "I have seen this document/invention and understand it, signed John Doe, July 29, 2011". Then get that notarized.

Cost: A few hours (or a day or two) preparing the disclosure, a few dollars for the notary public, and beer for your friends/colleagues.

If you have already built it, then this is solid proof that you have indeed invented it or "reduced it to practice".

If you have not yet already built it, then this shows that you have conceived it, which is still useful.

Step 2: Test the idea using Adwords or whatever mechanism you want.

Step 3: Prepare and file a provisional patent application- it is probably adequate to take your disclosure and file that, but if at this point you think you really want to pursue a patent, put a little more effort into the disclosure.

Cost: As little as $110 for the filing fee and maybe a day or two or three of your time. More like $2k if you use a patent agent/attorney.

Step 4: Depending on the readiness of your product, you could start selling now and tell the world about it. Or if you like continue with further testing.

Step 5: Within one year of Step 3, you will need to file a "regular patent application". The filing fees are between $500 and $1k total, and the time to prepare could be a week or two on your own or a little less but $5k+ if using a patent attorney. Of course by this time you should have a good idea on whether this investment is warranted. Also if this invention clearly has a >$1M value, you could consider foreign protection as well. Get an attorney in this case.

The above is the "safer" path. A tiny bit riskier, but less expensive, would be this sequence:
Step 1: disclosure (as described above)
Step 2: Make a prototype e.g. reduce it to practice (if you haven't already). Have that witnessed as well.
Step 3: Testing, and
Step 4: If warranted, manufacture and sell
Step 5: Within a year of the first time you publicly announce, sell, or disclose it (e.g. it is no longer a secret to you and your confidants) you should file a provisional application for $110 (plus your time). So if you prototype it on August 1, 2011, and first disclose it (disclose it or offer for sale) on September 15, 2011, then you need to file the provisional by September 15, 2012.
Step 6: Within a year of the provisional, you would need to file the full regular application. September 15, 2013.

The benefit of this latter sequence is that it gives you two years before the "big bucks" and "big headache" of the regular application. You could also file the provisional before the one year deadline if you deem it worth it. The weakness of this latter sequence is that you can only patent in the US. (Every country except the US doesn't allow you to file a patent application after you've sold or disclosed it publicly- we are unique in that manner but the US is such a huge market so what.) Another weakness is that you may feel a bit "naked" without having that "patent pending" status, so I understand the desire for the first sequence.

Do NOT do this (unless you really did come up with a way to turn lead into gold):
Step 1: Go to patent attorney and say "hey do ya think I should file a regular patent application for this"?
Step 2: Attorney says "yes" (unless he or she is honest and directs you to one of the above sequences)
Step 3: You spend a lot of money
Step 4: Testing? Oops I knew I forgot something!

Hope this helps! Again, get that book "patent it yourself" (No I am not associated with it or the authors)

Geof

[stenlund]

Wow, Geof, that was a wealth of knowledge, thank you!
It's great to learn from someone who has "been there, done that"......very helpful.

The fees I found were on legalzoom.com.
It states:
Provisional Patent Pricing
Provisional Application for Patent $199
Government Filing Fee $110

Perhaps there's a better, less expensive way you know of..? I'd love to know! Like most of us, I want to spend as little up front on potential muse to see if it will even be profitable.

Maybe you can help with my question: My muse is a physical product which may sell for $30-50. Should I patent it 1st, then test it online, then manufacture and distribute?.............or do I test 1st, then manufacture, then patent?

Thanks again!

I had written a long and interesting post in answer to your question on my thread, when suddenly my computer locked up.(yes, it is Windows)
Here is the short version.

I wouldn't patent anything unless it's awesome. really awesome.

Because:

Stealing a patented product is easy, just change some minor detail.

there's no worldwide patents, you have to patent in every country that you want it patented in.

You need to have money and time to sue them when they steal your product, which they will do, if it's awesome, otherwise the patenting would be in vain. Not 80/20.

Hard to know exactly WHAT to patent. You have to patent the exact feature that makes your product better than the rest.


I heard this from inventors I spoke to, so may be wrong.

This hardly makes sense, I hate my computer.

Good luck

[Mr Miyagi]

Thanks Geoff, some great replies.

I have a couple of questions:

1) I want to patent a brand name, is this easier to do? Or do I just go through the same process.

2) The product will probably only have a short product life span - probably a year, therefore I only really need the patent for this time. Therefore the temporary one seems perfect for me.

3) I am based in the UK. Will the process be different?

[Primedirective]

Pysical product - Patent
Information/written/spoken - Copyright
Brand/logo/name/symbol/word/phrase - Trademark

gents, correct me if I'm wrong.

I'm guessing the process is almost the same, different forms maybe, submitted to your government's office that handles all 3 of the above.

Seems like a full force $10,000 patent may be excessive this early in the game (for me at least)......I haven't even tested yet.........I guess I'll see if I can make six figures selling it myself, in which case a $110 investment for a provisional patent lasting 1 year is not a bad idea and not much money to waste......then if it's a big hit I'll hire an attorney, license the idea to a big company and move on to the next muse.

Thanks to all of you for sharing your thoughts and knowledge.

[Mr Miyagi]

Turns out I needed a trademark, not a patent.

I'm in the process of getting this.

[Primedirective]

Let me know how it goes. I'm going to need one for my muse as well. Good luck!
ps.....forgot to ask you............did you test this muse yet? You can test it for 5 days with google adwords and see what kind of "sales" you'd get.

[Mr Miyagi]

Not going to bother testing it. It is risky, but I just know this product will sell.

Will take four months to get the trademark granted, but it gets back dated to the date you put the application in... so you are protected for that time.

Before you put the application in you do a search to see if any other individuals or companies have that trademark or if anyone is likely to appeal it. This is why it takes four months, to give people a chance to appeal.