Let’s say you’ve just come up with a brilliant idea for a product that will change the world (at least for your customers).
Of course you want to protect that idea so no one else can swoop in and sell it out from under you. So you need to register a patent to formalize your claim under intellectual property law.
Most of SPARK’s clients wind up seeking patents at some point in the product development process. Part of our process may include connecting them with a patent attorney when the time is right.
What is a patent?
The US Patent & Trademark Office (USPTO) grants patents for 20 years from the initial application date—for anyone who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”
Essentially a patent certifies someone’s sole right to make, use, sell, or import the protected design. It also gives a legal basis for stopping potential infringements (more on that later).
There are 3 types of patents:
Utility patent – Protects the unique and novel functionality of a product. Stronger protection, but harder to get than a design patent. Includes roughly 90% of patents registered with USPTO.
Design patent – Protects unique ornamental characteristics that aren’t part of a product’s function—like the iconic Oakley sunglasses arms. Design patents comprise ~9% of registered patents.
Plant patent – The remaining fraction of patents protect non-sexually reproduced unique plant varieties.
Whatever the type, a patent is essentially a detailed description of a unique product or design. According to the law, a patent “Must enable one of ordinary skill in the art to make and use the claimed invention.”
Meaning someone with reasonable experience in the field and a reasonable amount of effort should be able to replicate the product.
But they wouldn’t be allowed to sell it—because of your patent (until it expires).
Patent law and product development
It is possible to DIY the patent process, but there are a lot of formal requirements and potential pitfalls that can result in extra costs and worse—lost time. You could even wind up losing your patent rights.
SPARK has several local attorneys that we have come to know and trust to support our clients and collaborate with through concept-to-market product development projects. We are sure there are many excellent attorneys to choose from, but we’re happy to make recommendations based on our client’s needs.
Similarly, sometimes people approach attorneys with an outline or simple sketches of their idea. But they will need more detail—even for a provisional patent application (see below). Because of this, attorneys will also occasionally send their clients to SPARK to develop the concept and produce more detailed sketches or a 3D CAD model.
To simplify the interchange attorneys often work directly with SPARK to get specific information, diagrams, images, and/or 3D models that he needs to complete the patent description.
“One critical thing all inventors should know, and this burns people more than anything else...”
The rule in the US is, once you publicly disclose your invention, offer it for sale, sell it, or use it, you have only one year to file for a patent—or you’re permanently barred from getting a patent.
Agreement to assign intellectual property
Any time you’re creating something with other people, it’s important to establish intellectual property rights in writing beforehand. It’s a tricky part of the law, and the best bet is to clarify everything in writing beforehand.
“Let’s say an engineer from SPARK who’s helping with a project creates some new feature that ends up being in the patent application,” said one of SPARK’s partner attorneys. “Well that engineer would probably have to be named as an inventor on the application. Meaning they would own an equal share of the patent.”
So make sure your service provider is willing to sign their intellectual property rights back to you—as the person who’s paying for their services.
This is standard operating procedure for SPARK—even if we’re required to be listed on the patent, we always assign full ownership to the client.
What you need to file a patent
Patent applications are published 18 months after their first filing date. For sensitive stuff, you can request that it stay unpublished until the patent goes through. The patent office can also unilaterally keep things secret for national security reasons.
Note: you’ll need to file a patent in each country where you want to protect your invention.
Usually an official filing receipt is received about 3 weeks after filing. But sometimes it takes longer if there are other legal hoops to consider. Then about 16 months later (on average), your patent will be reviewed by a patent examiner and ultimately accepted or rejected.
To file a full patent you need enough detail to enable a competent person in the field to understand and make the product. You also need to define your patent claims—all the specific elements you’re trying to protect—which is where a patent attorney really earns their keep.
A patent typically runs 10-20 pages including:
Patent drawings
Elevations
Exploded views
Cross-sections
Detailed written descriptions
For clients who are earlier in the development stage but want to protect their intellectual property, an attorney will usually file a provisional patent application first. In fact most clients start with this 1-year temporary patent—both for budget reasons (it requires way less resources) but also because it lets you change the design during the provisional period. Once you have a full patent application filed, you can’t add any new claimed material.
Provisional 1-year patent – Cheaper, easier, and less formal, but still a very detailed description; hand sketches, screenshots from 3D models, and prototype photos are all acceptable.
Full utility patent – Requires formal patent drawings (different from engineering or CAD drawings), a very detailed description, and patent claims. For the drawings, a patent draftsman can be contracted.
How a patent application gets rejected
A patent application must describe something “unique and non-obvious.” How that gets interpreted by the USPTO patent examiner depends somewhat on who’s running the federal government—and how much they’re willing to help the little guy. But some things are universal.
“Let’s say you had some electronic device that has always communicated by hardwire,” an attorney explained; “And let’s say you were the first person to make that device wireless—so it’s novel—but it would be rejected as obvious...to make anything wireless these days.”
In fact about 90% of utility patent applications get rejected at least once. So your attorney will prepare a written response— “Basically pointing out why the patent examiner is wrong”—and explaining in intellectual-property legalese why the patent should be allowed despite the cited objections.
Then if you get a second rejection or “final rejection,” the next steps may include filing an appeal or paying another filing fee to go a second round with the examiner in a “request for continued examination.”
Which typically only makes sense if the examiner was showing some flexibility in the initial review process.
If you can’t get a patent, you have a decision to make. You don’t have to have a patent to market a product. But if you don’t have a patent you can’t stop anyone else from selling it. That means if you start seeing some success, a bigger company can swoop in and undercut you to corner the market.
However, sometimes even if you can’t get a utility patent, you may be able to get a design patent—which means you can still write “patent pending” on your product materials which can keep competitors at bay because they don’t know exactly what’s protected (until the design patent is published). Sometimes that’s enough of an edge in the market.
What if someone infringes on a patent?
Without a patent you have no legal claim to stop infringement. With a patent you stand a chance—even against a big corporation.
After doing an infringement analysis of the case, attorneys would advise their clients to keep it friendly and light in an email. Something like: “You probably don’t know this but I have a patent on that—can you please stop selling it.”
If that doesn’t work you can send a formal Cease & Desist letter from a patent attorney. That will usually stop most violators. But if the infringement goes to a lawsuit, your attorney will hand it off to a patent litigator. Those cases tend to be multimillion-dollar behemoths that are well beyond your average patent attorney’s scope.
Patent law is ultimately a creative process, which is why we cherish the partnerships we have developed over the years.
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Have an idea you’d like to discuss? Give us a call.
Produced with Quillpower