Don’t File for that Patent Yet!
For good reason, many inventors are reluctant to share their invention with people they don't know. Further, once an invention is shared publicly, international patent rights can be lost, and the one-year timeline within which a U.S. patent application must be filed generally has begun to tick. For this reason, many inventors rush out and file a full-blown, utility patent application. That addresses the uncertainties and also enables inventors to alert people that their invention is "patent pending."
However, this approach has several downsides. First, utility patents and even patent applications can cost many thousands of dollars. In the end, an inventor may find that the expense outweighs the benefit. Second, in the early stages, most invention designs are still evolving. Filing a patent too early could mean that it doesn't actually reflect the most evolved designs and drawings. Third--and most important, in my opinion--this investment has been made before an inventor has conducted real market research to validate marketability of the product.
Two solutions that many inventors--myself included--use are to file provisional patent applications and trademark applications for the invention and product name or logo.
These applications provide the best of both worlds. At a fraction of the cost of a utility patent application, a provisional patent application is not actually a patent. It never will convert to a patent or become public, unless further action is taken. A provisional patent application is a like a place holder. In essence, you are laying claim to the filing date of the provisional patent application if and when you elect to file for a full utility patent up to one year from the time you file your provisional patent application.
Read Tamara's entire February "Inventions" column at Entrepreneur.com...
If you want help with your patent research and determining your next steps in the inventing process, check out our New Product Evaluation Program. You'll get a patent search and legal opinion, a review of manufacturability and marketability, a phone consultation with Tamara Monosoff and more!
If you're ready to file a provisional patent application and trademark, you can save $400 through our special program with our trusted patent law firm. For more information, contact West & Associates.
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Regarding the year to file a patent after the item is first pubically sold- I am confused... Does that mean once the item has been sold pubically, after one year you can never obtain a patent?
If the design was to change slightly would it be a new product, enabling the patent to be filed?
I know all inventors love their products, but mine was evaluated and missed being licensed by one point on their rating scale, which I wouldve gotten had i had the patent. I also sold it online to see how it did, and it was a huge success.... Amazing feedback and the market potential was huge- but things came up as a single mom, and tht time got away from me - more than the year.
Should I continue to sell without a patent, or tweak the idea to obtain a patent and lose the simplicity of the invention?
Thank you so much for any advice :)
I could not agree more with this article! Working for a product design firm we have seen this happen to our clients time and time again. The initial patent is not feasible and once we design something that actually works and is MARKETABLE, the client needs to file another patent. We use Non Disclosure Agreements with our clients to make sure their ideas are protected and they trust us with it. They have to trust us with this information or we can't begin the design process! Best of luck to everybody!
Sebastian Valemont
Synthesis Labs
Product Design & Development | Engineering
Hello All. I am sooo confused at this moment I hope you can help. I have just seen several products that are very close to my idea yet they are also very similar to each other. I know a new product is supposed to be unique and different , so I don't understand how so many products that are serving the same purpose can be awarded a patent. I'm sort of bummed out here but I'm not giving up yet. I have many more ideas where this one came from. My product is so similar to what I have seen today , I'm not sure if I should proceed any further Tamara can you please give me some guidance as to which direction to go now? I will move on to my next idea if I have to . I would like to know as much as possible before making this decision though. If those products can be awarded when they are similar then why can't my product? I don't have funds to fight an infringement suit so I am reaching out to my favorite trusted source for all the help I can gather. Granted, my product is somewhat different, but is it different enough? That is the question I fear I will have to spend thousands to get an answer to.
Thanks
Hi
I am in the same situation. I went back and forth, called the patent office's Inventor's Assistance Program, called the attorney, talked to the patent search firm, and finally made my decision. My product also came back from the search with similar products. However, none are identical to mine and non serve the purpose that mine will. I also don't understand how so many similar products can all get a patent. From what I understand it depends on who you get as a patent examiner and how broad or narrow your claims are under your scope in your patent. My attorney told me he has reservations about patentability with my product for the only reason that my scope is going to have to be narrow and it may be expensive filing for one and then fighting back the office until an agreement is met. That is why I went with the Provisional Patent Application right now. This is less expensive right now (about $1000) and this gives me a year to figure out if my product is going to work. Then I can look at a cost/benefit at the end of year to decide if I can file for a patent and go through the process of fighting for it. Pretty much the patent office never accepts any application on the first try. I was told this by a former patent examiner. They always reject it to see if you are really serious about pursuing it. You have to want to do this. If I have learned anything from this process it is that nothing is going to be cake. You are going to have to fight for it. The patent office told me that there has to be only one unobvious difference in your idea in order to be able to file and get a patent approved. He also told me that you can go without a patent. But I don't feel comfortable with this since anyone can just take your idea and make it. It is a hard decision but you need to determine whether there is an unobvious difference in your idea and someone else's idea. Also, be aware that as far as infringement on other patents go, you are not infringing if the patent is expired. So check the other ideas that have been patented to make sure they are not more than 20 years old from the filing date. I checked mine and out of 11 patents only 4 of mine were still active. That helped me to make my decision about infringement. Hope this helps. I have just been through this process so if you have any more questions I will be glad to help.
Sam
Hi Sam. Thanks for all the great info. I am saving all my responses for future reference. I haven't seen anything exactly like mine but very close. I have not seen anything on the market like mine but I haven't shopped in every store that exists either. I have been looking for names of trade magazines that deal with this product line but have had no luck yet. As my product can be sold to health and beauty stores and can also be used within the medical community I feel that I have to search both areas, and it does take time. I am leaning toward the PPA so that I have more time to consider the best course of action for me. It doesn't seem fair that If you are not awarded the first time around, you have to apply again at an additional fee. Thank god I'm a single entity. I have had this idea for many years and something in me can't let it go. I have a vision and I'm determined to see this through as far as I can take it. I'm not a greedy person and I know I want to help people, including myself, but mainly victims of tragedy. I want to be more than even I can imagine myself being and for that I think I need divine intervention. Thanks for your help and keep on dreaming.
Angela,
These are good questions. One reason you feel confused is that there is not one simple answer. As others have pointed out, patent examiners don't even give you clear answers. The best I can do with limited information is to share what I think may be some of the issues here. First, when you say you see other similar products to yours, I am not sure where you are seeing them, e.g. uspto.gov website, on the market or somewhere else. If you are seeing similar patents, first look to see if it is a design patent or utility patent. A design patent has a "D" before the number. If these are design patents, then (ask your friendly atty about this) you can probably "design" your own version as long as it is somewhat different. If it is a utility patent, then look at the claims of the patent. Now, that said, I always advise inventors to have a patent search done and to ask for an attorney's opinion as to the patentability of the item. One other point I must make, even if you have a patent, it is no guarantee that you wont face competition. A patent is a tool--sometimes not even that effective--nothing more.
One other strategy that many inventors dont think of is to buy an existing patent. If you see another very good patent and the current inventor is not doing anything with it, they would probably happily sell it. If you will be spending $3000 to $5000 on a decent patent anyway, why not speed things up and just buy someone elses. One note of caution: before you do, have a qualified attorney review the patent you are considering for acquisition.
If you are seeing the similar items on the market ,the item may be in the public domain and you would need to spend your time and money worrying about competition rather than patents. Then you need to figure out if the market needs another widget and then figure out how to differentiate it with customers.
I hope this helps.
Best wishes,
Tamara
Thank you so much Tamara. Like I said before you are a trusted source and a wealth of info. I never thought of an acquisition before. I came across a site quite by accident actually, it is freepatentsonline.com. There is a D before one of the application numbers but there are eight that don't have any letters at all before them. There are lots of fields of search so I will spend some time searching them out but not to much because I know If I am to move forward with this I am going to have a professional search done . I do believe my product will serve some of the same purposes but not all. The medical and health and beauty community would both be served well by my product. I did notice that some of the patents are over twenty years old and some are nearing that. What say you on that subject? Sorry I've been reading a historical romance novel and the lingo just seems to jump out at times. Anyway, is it difficult to find venture capitalists interested in start-up ideas? And how would you pitch something like that ?
Thanks Again
What if I make some of my idea and try to sell them. Then someone else thinks it's a good idea and tries to make and sell them before I have my business in order.
HI Phyliss. That is a fantastic question. I would ask Tamara if I were you. After you make your product known to the public, I believe you have a certain amount of time to file for your patent, but after that specified period of time, it's fair game. I may be wrong but I think I remember reading this somewhere in my research. I'm sure Tamara can set us both straight though. Please let me know what you find out.
Angela
Phyllis,
that is a very common, and valid concern. Our system prides itself on competition and once your product is on the market, you are definitely opening yourself to competition. A couple points to consider: first, most companies won't copy your idea until you have proven it is viable and are selling it. There are many products that don't actually sell as well as one might expect. Second, Angela is right. In the U.S. you have a year to file a patent. However, you would still want to note the date you invented your product because our country bases litigation on "first to invent" not "first to file". Third, a provisional patent application and trademark is often a very good option for your situation. You can lock in a filing date and have a year to promote your product. If you feel it makes sense, you can then file a utility patent application within that 12 month window but the patent office treats it as though you filed it on the date of your provisional application. plus your trademark will also offer you some modicum of low-cost Intellectual Property protection. If your product does not do as well as you had hoped, you can then make the decision to not file the more expensive patent. One other point: once you show your product publicly absent a Patent application filing, you instantly lose your overseas patent rights. That is usually not a major issue as few inventors can afford overseas patents as well as US patents and the US market is huge. We have a discounted Provisional Application and Trademark program under programs.
I hope this helps.
Best wishes,
Tamara
Regarding market research - My suggestion is, if it is at all possible, try, to get a small number of your invention made and go out and try to sell it.
Market research is great in theory but there is nothing like getting people to put their hands in their pockets to see if they really will buy it.
I met a guy at a trade show last year, he told be, everyone had claimed to love his invention and wanted one. He took out a home equity line of credit and had 10,000 items made in chinaat a cost of $250,000.
Six months later he still had 9,800, no space in his garage and a sizable monthly payment.
Of course the economy tanking didn't help (for any of us) but I couldn't help but wonder if he had spent less money to have a smaller run made closer to home he might have done better.
He might have had a smaller or even no profit margin for the the initial run, but he would have had a better idea if anyone was going to buy he brilliant invention.
Dash,
Thanks for the comment. It really does take a lot of thinking and working through different scenarios before making a decision doesn't it ? I appreciate all the responses and when I have something of interest to share I will.
Angela
I was signed up for this teleconference and had my two children sick that day and time got away from me. I am so sorry that I missed it. Anyone who listened and heard it I have a few questions. By filing a provisional patent application:
1. Does anyone know how much it costs to have a provisional patent application prepared and filed?
2. Also, pretty much if I am understanding this right, a provisional patent application will only give you a date. That is all. It will give you a date that you need to file your patent by, but it will give you protection and coverage to disclose your idea publicly without anyone taking your idea for that one year?
I guess I am not sure which way to go to stay protected with your idea?
Also, Just FYI. If you go on the patent website they have an Inventor's Assistance program. If you are an independent inventor or a small business then they only charge you 50% of the filing fees with the patent office. Something good to know!!
Thanks
Samantha
Hi Samantha, If you're still interested in viewing the webinar recording we just made them all available on our new free Mom Invented Community site. You can view them here: http://members.mominventors.com/videos.html (you must be logged in to view them, but again, it's free to sign up)
I agree 100% with your article. I have met too many inventors that have spent way too much money on patents having done no market research. When they were ready to market or sell their idea many of them realized there was no market at all.
I personally love provisional patents and I think the 1 year deadline is actually useful for getting inventors to take action. Sometimes we all need a deadline to get us to act.
great Info, Thank you. What I hear you saying is that before all else market research should be conducted first?
My next question is: What is the best way to conduct the research ? and
Does a provisional patent filing protect your invention while conducting market research?
Thank You
Angela,
Good questions. First, there are several ways to conduct market research. The approach I like best is the one you "invent". That is because your product is unique so you know (or have an idea) who your target customer is better than anyone else. In the big picture, you have primary and secondary research. See what data you can find about your target demographic. Use Census figures, google, and data provided by trade publications that serve your target industry. If you don't know what these publications are, ask the trade association or a retailer who you know is in this industry which publications they read. Once you gather all you can this way, figure out what new questions you need to ask or to validate. Then come up with low-cost ways to do this. You can create local focus groups, conduct intercepts, etc. This is addressed in my book.
Regarding the protection of a provisional application. Keep in mind that the provisional application is not a patent, it is an "application". It holds your date and stipulates the date of your claims. So it makes it possible to show your invention publicly without losing your patent rights. And, in theory, if you show someone and they go copy your invention, they would do so knowing that there is a risk. Because if you then go file and are issued a patent, your file date is actually before the date you showed the invention publicly. But this protection is also only there if you ever actually file and are issued a patent.
A provisional application is no guarantee that you will ever be able to be issued a patent. Now, there is much more to this answer that could be said and I am sure there are many nuances about these statements that could be parsed and I am not a patent attorney. However, the other reality that must be understood is that very often the assumption that a patent offers this end-all be-all protection to inventors is simply wrong. A patent is nothing more than a tool. It may be useful... and it may prove worthless. So understand that you are entering a competitive market space and you need to think about how to win in the market both with and without a patent to protect you. Research and planning, including a business plan, are the two best recommendations I can offer.
Best wishes,
Tamara
Thank you so much for the valuable information in which you disburse so generously and in such abundance too. It's absolutely wonderful and I happen to think your a pretty awesome person for sharing such a gift of knowledge. Moving forward with caution and common sense is a prerequisite for any venture it's true, but collecting as much information as possible so as to make as an informed decision as you can is imperative. Thanks Again.
Angela Groce
Great article. I agree that the Provisional Patent is a great jumping off point! I think it is a great idea for all the reasons you mentioned. I always knew it was the way to go for me (when I do it) but your #2 reason I never thought about for some reason. Filing a regular patent too early could mean that it doesn't actually reflect the most evolved designs and drawings...so true!