Patent Attorney – "Pat. Pend."

Category: Marketing Your Invention

  • 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.

  • Designing and manufacturing your invention

    Inventors often approach me, asking if I can help them with the design and manufacture of their product. Unfortunately, I have to explain that my area of expertise is in the patent process, helping inventors protect their inventions by filing and prosecuting patent applications in the U.S. Patent Office.

    Surely, having worked with so many inventors I should have a vast network of engineers, designers, and manufacturers? But the patenting process is so distinct from the manufacturing process, that I rarely interact directly with any manufacturers. While my clients may work with manufacturers to turn their invention into an actual product that they can sell, I am typically not involved in these discussions in my role as a patent attorney.

    However, I do keep my eyes and ears open, and try to pass along any information that might be relevant to clients of mine, or just those inventors who read my blog. As happened the other day, I was introduced to a design and manufacture firm that can help inventors realize their invention as a product.

    T2 Design designs and builds prototypes and also sources manufacturers and provides engineering liaison with the manufacturer. Check out their website, and contact Paul Berman at T2 Design Corporation if you have any questions. Paul tells me that T2 Design has over 20 years of experience developing new products and was featured on ABC’s hit TV show “American Inventor”. Paul also tells me that T2 Design is rated “A” by the Better Business Bureau.

    * And now for my legal disclaimer – Trenner Law Firm and patent attorney Mark Trenner do not have any professional relationship with T2 Design Corporation. The links provided here are for general information purposes only, and do not constitute any endorsement. Please do your own research to determine if a particular vendor mentioned on the ipatentattorney blog fits your particular needs.

  • Wrong reasons to license your invention

    You have an idea, and you think its going to be the next big thing. If only you could find someone with the manufacturing and marketing expertise to get your invention in front of customers. Ideally, you’d like to get your invention on the shelves at Walmart or Home Depot, so you can makes tons of money for doing nothing and retire to the Caribbean.

    Of course, you file a patent application so that no one else can take your idea. Then you sit there and wait for an investor or mega-retailer to approach you. Unfortunately, this tact rarely works.

    Let’s say you find an investor and ask if the investor would like to license your invention. You supply the idea, and the investor does all the rest. Of course you only take a small cut of the profits. What are the first questions the investor is going to ask?

    Conversation with a potential investor. Have you protected your idea? Answer: no, I was hoping you would pay for a patent application. Have you made the product? Answer: no. How do you know that your idea will even work if you haven’t made the product? Answer: it should work. Is there a market for your product? Answer: I think so, because everyone I tell about my idea says they like it. Just because your family and friends say they like your idea, does not mean there is a market for the product.

    Bottom line, if you’re unwilling to invest any time or money, or take any risk with your idea, why should an investor be willing to do so?

    Another conversation with a potential investor. I did a patent search for my invention. There doesn’t appear to be anything like it in the market. I applied for a provisional patent application, so I have patent pending status and its going to be hard for anyone else to compete once I finish the patent process and have an issued patent. I built several prototypes of my invention, based on feedback from focus groups. I took the best prototype and made a product, which sold out on my website in less than a week. Conservative estimates based on these actual sales indicate that an investment of X dollars should result in a return of Y% within the first year. Investor: this sounds like a great opportunity. Let’s talk about an investment or licensing deal.

    All too often, inventors come up with great ideas and fail to pursue their ideas through to fruition. Not because the invention itself is a bad idea. But because they just don’t want to put the time and effort, or risk any money to take their invention out into the marketplace. Remember the old adage – nothing risked is nothing gained.