Patent Attorney – "Pat. Pend."

Category: Denver Patent Law

  • What is a Provisional Patent Application? Part 3 of 3

    What is a Provisional Patent Application? Part 3 of 3

    Brought to you by the Denver Patent Law Firm: Trenner Law Firm, LLC

    Although the provisional patent application process sounds simple, there are several “cautions” you can find listed on the United States Patent and Trademark Office website that you would need to pay attention to before filing. Here are some of the issues listed as per the USPTO site:

    • Provisional applications for patent may not be filed for design inventions.
    • Provisional applications are not examined on their merits.
    • Provisional applications for patent cannot claim the benefit of a previously-filed application, either foreign or domestic.
    • It is recommended that the disclosure of the invention in the provisional application be as complete as possible.
    • In order to obtain the benefit of the filing date of a provisional application, the claimed subject matter in the later filed non-provisional application must have support in the provisional application.
    • If there are multiple inventors, each inventor must be named in the application.
    • All inventor(s) named in the provisional application must have made a contribution, either jointly or individually, to the invention disclosed in the application.
    • The non-provisional application must have at least one inventor in common with the inventor(s) named in the provisional application to claim benefit of the provisional application filing date.
    • A provisional application must be entitled to a filing date and include the basic filing fee in order for a non-provisional application to claim benefit of that provisional application.
    • There is a surcharge for filing the basic filing fee or the cover sheet on a date later than filing the provisional application.
    • Amendments are not permitted in provisional applications after filing, other than those to make the provisional application comply with applicable regulations.
    • No information disclosure statement may be filed in a provisional application.

     

  • How many design patent applications is appropriate?

    A design patent application is limited to a single design. An inventor can file separate design patent applications for each unique design. But it is easy to see how this can quickly get out of control. To reduce costs, one approach is to file design patent applications for the actual design being marketed.

    While minor variations may be considered additional embodiments of the same design, the Patent Office Examiners are typically fairly strict and will make the applicant select a single design for examination. Thus, while a single design patent application may include more than one embodiment of the same design, the Examiner may require the applicant to re-file these as separate design patent applications (and pay the separate fees for each).

    But filing multiple design patent applications for minor variations of the same invention can also get the applicant into trouble. For example, this may be used as an admission by the applicant that the inventor considers such a minor changes to be distinct. A potential infringer could use this against the applicant later, countering any claim for infringement that any minor differences in their design also are distinct (and thus they are not infringing the design patent).

    These are just some of reasons why it may be a good approach (when possible) to file both a design patent application for a specific design being marketed (regardless of how it functions), and a utility patent application for the utility of the invention (regardless of how it looks). Of course, how many and what type of patent applications to file is a business decision that should be based on input from a patent attorney who understands your invention and your goals for taking the product to market.

  • My idea is the next big thing!

    My idea is the next big thing!

    Many excited new inventors that call the Denver patent law office of patent attorney Mark Trenner says “My idea is the next big thing!” The inventor believes their idea is going to take the market by storm, making them and everyone in their path rich beyond their dreams. Their invention is the next “million dollar idea!”

    While I wish this were true of everyone who called my office, and indeed, true for inventors everywhere, many times this is not the case. For various reasons, many times ideas go nowhere, either because the idea isn’t that significant, the inventor just doesn’t bother to pursue the idea to help make it a big hit in the marketplace, or worse, the inventor doesn’t take the proper steps to develop and protect their invention.

    These two steps cannot be emphasized enough: (1) develop the invention beyond a mere idea so that it can be embodied as a product you can take to the marketplace, and (2) take steps to protect the invention so that it remains competitive and doesn’t end up in the public domain.
    Working with a registered patent attorney is the best way to take the proper legal steps to protect an invention. It will cost a relatively significant amount of money, but this is an investment in the product that shouldn’t be overlooked. Skimp on legal protection now, and pay the price later.