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How Can I Prove I Am Patent Pending for a Provisional Patent?

In the US, provisional patent applications are kept as confidential documents, away from public availability. There is no publically accessible database in which you can search or verify provisional patent filings. This is to protect and preserve your rights while your product is still in the beta/development phase. It also allows you to let the provisional patent expire without having lost your patent rights since the subject matter of the provisional was never published.

If investors ask for proof, simply show them the records of your provisional application, which includes a filing receipt. Be sure that the disclosure is done under a Non-Disclosure Agreement. About 2-4 weeks after you file your provisional patent application, you will receive an official notice from the USPTO. You can also show this Official Notice to investors.

In the mean-time, you need to have virtual patent marking putting the public on notice that you are patent pending and, if you are selling your product, in your product packaging materials, you should reference your virtual patent marking that you should place on your website immediately. If cost is an issue, please let us know and we will give you this product at a discounted rate.

When you file your US non-provisional, you will reference your US provisional Patent Application No. to claim priority. During the filing, your attorney will submit a request for the USPTO to send a copy of the provisional patent application to the International Bureau.

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If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Can I Use a Video Recording of a Concert in My Documentary?

When using a recording of a concert, there are actually several copyrights at play. Copyright law is interesting, so bare with me. First, there is the copyright that belongs to the composer of the music. This copyright covers the “musical composition” – think of it as the ‘musical notes on a piece of paper.” No matter who plays these notes or who records music using those notes, they would need to account to the composer.

Next, there is the copyright that belongs to the performer of the musical composition. Because every rendition of music can be considered a work of art in itself (taking those musical notes on a paper and transforming them into sound), the performer of the music composition is granted a copyright on their performance of the musical work.

Finally, there is the copyright of the actual recording of the performance. This is where the ‘record and production’ companies come in to play. They take music performances and produce them into something tangible, like a digital sound/video file (mp3, CD, music video, concert recording, etc.).
Sometimes, the music composer is also the performer and the recorded… but that is rare. If you obtain a copy of the recording, with permission from the recorder, you are only receiving ONE of the THREE copyrights you need to make a distribution or a derivative work therefrom. Firstly, you should make sure if the recorder of the performance had permission from the Performer of the work AND the Composer of the work to record the performance. If so, then you need to make sure that the Recorder had permission to not only record the performance of the musical composition, but to also Replicate and Distribute it to You.

Let’s say the Recorder does have a license to record and distribute from both the Performers and the Composers. Then, should you intend to produce derivative works of the performance or musical composition (ask, do you plan on changing the arrangement of the song?), then you need seperate permission from the composer of the work to change his musical composition!
But there is an exception

Educational Use – since you are making a documentary, the law may provide an exception know as “fair use”. If you are only going to be taking excerpts of the performance, and not playing the entire thing, and using it for educational purposes, then you might be able do so without obtaining permission from the composer/performances – ASSUMING that the recording of the work that you use was obtained with permission to begin with.

To rely on the “fair use” exception is a recipe for trouble, however… it is typically used as a defense once you are being accused of copyright infringement. I would recommend trying to locate all the parties (don’t worry to much about the Dancer) and tell them you are making a documentary under the fair-use exception and see how they react. In the documentary, you may be using photographs, background music, video exceprts, etc of Third Parties… you’d need to notify those third parties as well.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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What Is a Trademark, Service Mark, and Patent?

A trademark is what you use as a source identifier of the product or goods you offer to the public. When consumers see your products or goods, they instantly recognize your brand as the source of those goods.

A service mark is very similar to a trade mark. Except it doesn’t apply to products or goods, it applies to services. Often times, these to terms are used interchangeably.

A patent is right to exclude others from making using or selling an invention.

While a trademark/service mark protects against others using your NAME/LOGO/SLOGAN/DESIGN associated with your products or services, a patent protects others against making using or selling copies of your products or services under ANY mark.

Patent law is complicated, and every inventor’s situation is unique. SmartUp can connect you with a licensed Patent Attorney who will give you a free consultation and answer your specific questions.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Can I Get a Patent on My Idea?

Any person who has invented or discovered a new and useful process, machine, article of manufacture, or composition of matter may obtain a patent for it. This also includes any new or useful improvement on a past invention. Laws of nature and theories are not patentable. You do not need to have actually constructed or used your invention to get a patent on it. Having a good idea of how your invention is made and used is sufficient.

In general, the basic principles of patentability could be based on two questions:

Is the invention useful? and Is the invention new?

You may obtain a Patentability Opinion from a Patent Attorney who will determine if you’re your invention qualifies for patent based on the nature of its subject matter and its comparison to a Prior Art search.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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What a Startup CEO Should Know about Patent Protection

Our new patent laws grant the first inventor to file for a patent priority to any patent rights available to that invention.  Before, our laws allowed an inventor to prove his date of conception to gain priority to the patent rights, even if the inventor was not the first to file for a patent on the invention.  Now, the only factor that is considered when granting priority to patent rights is the filing date of the inventor’s patent application.  The inventor with the earlier filing date wins the rights to the patent, even if another inventor can prove that he or she came up with the invention first.

In view of our new patent laws, provisional patent filings have become the primary way an inventor can prove he or she was the first to come up with an invention without actually going through the expensive patenting process.  Detailed Explanation of New Patent Laws

Provisional Patent

A provisional application for patent serves as an official notice to the Patent Office to hold the inventors place in line for a patent.  From the filing a provisional patent application, the inventor has one year to follow with a formal, non-provisional filing not to lose his or her spot in line.  During that one year period, the inventor can continue to work on improving the invention, gain investment, and best of all, promote the invention as “Patent Pending” without fear of someone else filing for his or her patent rights.

The provisional patent application was created as an inexpensive means to reserve patent priority to the invention while, for example, accumulating the resources to file for a formal non-provisional patent.  With the new first-to-file standard, corporate entities have the economic resources to quickly file for patent protection.  A provisional filing puts the startup/solo-inventor on equal ground.

Qualifying for 75% reduction in Patent Fees ($65 for a Provisional Patent!)

Do you qualify for micro-entity status? Well, if you have to ask…. you probably qualify!  Here are the requirements:

  1. You are an individual or small business (a small entity),
  2. Less than 4 filed patent applications (provisional don’t count),
  3. Your income is less than $150k a year (that’s three times the median household income for last year), and
  4. You don’t assign your patent rights to a non-micro entity.

Watch out for requirement #4.  If you end up licensing or assigning your patent application to a larger business, you may no longer qualify for this entity status.  That may not mean that you’ll have to account for the difference on the fees you’ve already paid, but it may mean that any subsequent fees continue your patent examination will go up.

Seek a Consultation from a Patent Attorney

SmartUp™ is an organization committed to promoting the development and progress of inventors, entrepreneurs, and start-ups across the nation.  To show our commitment, every Patent Attorney affiliated with SmartUp™ agrees to provide you with a free consultation – you don’t pay a dime.  Get one free here: Free Consultation with Patent Attorney

 

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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What if My Idea Is in Development, What Can I Disclose?

You’ve been working on a novel technology. Due to the positive impact of my technology, you get new connections and they are willing to collaborate with you all the time. Since you have not filed a patent on it yet, you are concerned of protecting your IP and scared of disclosing any of your secret recipe to new people.  However, you’ll need another 1-2 years to fully accomplish the project.  What do you do?

If you are a university faculty or student. The first thing that comes to mind is what your agreement is with the University.  Often times, the university will require its faculty to assign intellectual property rights to any invention to the university.  The reason that, since they’ve provided the facilities, materials, and funding (in the form of salary or otherwise), they are entitled to the intellectual property that is discovered or created under their wing.

So, being a student or faculty at the university, the first thing you need to do is to make sure you’re not required to sign your rights to the university.  And if you are, there may be some compensation scheme in place that’s worth exploring.

If you’ve crossed that hurdle, or aren’t part of a university (and neither are your collaborators), the next question you need to answer is: Should I keep my idea secret or should I file a patent application?  You can keep a patent application from publication, but that’s not always recommended.  Read this article here to find out why.  You should keep your idea secret if you believe that it’s hard to reverse engineer.   If that’s what you decide, you should make sure all of your disclosures under strict Non-Disclosure Agreements (NDA), detailing the involvement of trade secrets in the disclosure.  You should also document every instance of interaction and disclosure of you idea that you make, with the receiving party signing the NDA.  You should not make any disclosures outside of the NDA.

You can also enter a collaboration agreement with the folks that are under NDA.  The agreement can specfiy that you (or your business entity) will own all of the rights to the inventions, its iterations and derivations, including the contributions made by the collaborators.

If you make disclosures that are not under NDA, you 1) immediately forfeit your international patent rights and 2) have 12 months from the time of your first public disclosure to file for patent protection in the US alone.  If you are not ‘done’ inventing, then you should keep things a secret until you finish.  If there is novelty in what you have come up with thus far, you can file a provisional patent application – which provides you patent priority for 1 year without disclosing the subject matter of your patent to the public.  Within that 1 year, you must submit the provisional patent application for examination or forfeit the patent priority date you’ve established by the provisional.  Learn more here.  You can file provisional on each increment of your discover, and then time them together in a non-provisional patent filing (so long as the earliest provisional is still within the 12 month date).

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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What Are the Risks of a Patent Publication?

Now, when you file a non-provisional application, you have a choice of whether or not you want the application to be made available to the public for review (i.e., published).  If the application is published, but you are not granted a patent, the subject matter of your application enters the public domain.

If you choose not to publish the application, and your application is not granted patent, the subject matter of your application does not enter the public domain. However, if you choose not to publish the application you and are granted a patent: 1) you are forbidden from filing international patent protection in most countries; and 2) you will only be able to collect royalties on your patent from the time of patent grant, whereas if you had opted to publish your patent application at the time of filing, you may be able to collect royalties from infringes from the date of your patent filing date.

If you are interested in more detail related to your situation it is best to speak with an attorney.

 

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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What Is Required in the Specification of My Patent Application?

If you’re trying to write a patent application on your own,please take caution – it has been my experience that almost all of the inventors who attempt to prepare and file their own application end up never obtaining any patent rights and inadvertently forfeiting their invention to the public domain.  Use this guide as an outline of what you’ll need to know in order to have a licensed professional prepare and file your patent application.

A utility patent application is comprised of three primary portions (excluding all of the paperwork involved):

  1. Drawings
  2. A Specification
  3. Claims

This article discusses the requirements of the 2nd element – the Specification. In the US, a specification must consists of at least the following parts:

  1. Background;
  2. Brief Description of the Drawings;
  3. Detailed Description of the Invention; and
  4. An Abstract.

International patent applications require two additional parts:

  1. A Statement of the Technical Filed of the Invention; and
  2. A Brief Overview of the Invention.

1. The Background

The Background portion of your application should, generally, describe the state of the art at the time of the inventions conception.  It should present the problem that being solved by the invention. The drafter should be careful never to disclose the actual invention in the background section, as anything disclosed in this will be considered by the patent examiner as “Prior Art.”  Prior Art, in turn, is what the examiner will use to reject your application for ‘lack of novelty’ or ‘obviousness’.

2. Brief Description of the Drawings

This section should provide a brief, one sentence description for each Figure (referred to as a “Figure” or “FIG.” within the specification) that is submitted with the patent application.  This section should not discuss the labels or elements of the figures.  The drawings are required to show all elements that the patent application claims as the invention.  Even in the case of software patent applications, the drawings should present Block Diagrams of the system architectures or wire-frames of the user interface.

3. Detailed Description of the Invention 

The Detailed Description should answer two very basic questions: 1. How does a “person having ordinary skill in the art of the invention” (PHOSITA) make the invention, and 2. How does a PHOSITA use your invention.

Though you never need to have made or implemented your idea or invention to obtain a Patent, you still need to have a concept of how your idea or invention is made.  You are required to disclose the best way you envision making it.

The portions of the invention that may be easily derived by the PHOSITA need not be disclosed in detail in your application.  In other words, if you invented a solar powered car, you wouldn’t need to disclose how to put together the automatic windows – since that portion is already well-known in the field of your invention.  Here are some questions that your specification should answer:

  • What problem does your invention solve?
  • How does your invention solve the problem?
  • What’s new about this solution?
  • Does your invention perform a method or process? If so, describe the method step by step.
  • If your invention does something that’s been done before, but in a different way – what’s the difference?
  • Does your invention yield unexpected results?
  • What is the best way you would make your invention? (You never actually had to have made your invention, just tell us how you envision your invention being made.)
  • What components make up your invention?
  • How do you put the components together?
  • Is there a method of putting the components together? If so, describe the method, step by step.
  • Is there a special reason why are they put together that way?
  • What are the components made of?

For more information on the drawings check out our Drawings Article.

 

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Design Patents and Trademarks for Product Designs

Let’s say you came up with a novel design for a boombox or a watch.  Although this newly designed boombox or watch may be ‘inventive’ from the utilitarian standpoint, a utility patent may not protect the physical design of your product as it would protect the corresponding function.  This article considers protecting product designs that may be functional, but also have novel design aspects that may be protected in a design patent.

Do you need a design patent?  Well – how easily can a competitor emerge selling the boombox or watch with a similar design?  Would you like to be  protected from those knock-offs?  A design patent will protect your design and any ‘substantial similar’ designs like it.  The protection will last for 14 years.

In addition to securing a design patent, I would also explore protecting your product designs with a trademark.  Most people know that trademarks can protect a brand name, logo, and slogan… but, in practice, a trademark can protect most anything that identifies a source of a product or service.

When your customer picks up your newly designed product, will he immediately be able to identify that the product belongs to your brand?  As an analogy, consider this: When you look at a Lamborghini,  a Ferrari, or a BMW – you’d be able to recognize that those designs to belong to their respective manufacturers even before you saw the emblem or any marking on the vehicle.

This is where trademark law applies for product designs.  Like a design patent, trademark protection on your design will enable you in preventing competitors popping-up and selling “confusingly similar” designs.  Unlike a design patent, Trademark protection lasts for as long as your company is actively selling the product (for the lifetime of the product!).

Ideally, for unique designs, you should apply for both a design patent and a trademark.  It’s fairly inexpensive.  If you could only afford one, then start out with a design patent since those are much faster to obtain than a trademark on your design, and will allow you protection up-front as you build your brand.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Who Should I Assign My Patent Rights To?

In order to transfer patent rights from an inventor (Assignor) to an entity (Assignee), the inventor must sign an assignment agreement. Upon execution, the assignment agreement become a legally binding and enforceable contract.

With the assignment, each inventor transfers the patent rights embodied in the patent or patent application to the Assignee. In turn,the Assignee has the right to make/use/sell the invention, or file subsequently patent applications claiming priority to the subject matter disclosed within the assigned patent application. Upon assignment, the inventors will no longer have any rights to the invention.

Having the application assigned to the entity who will be making/using/selling the invention may be recommended. If the rights are not assigned to an entity, then they remain with the inventor. In the case of multiple inventors, the rights remain with the inventors jointly. This means that each inventor may use those patent rights without the consent of the other inventor. This creates problems, friction, and is a recipe for conflict.

To prevent the conflict, the inventors may form an entity together. The each inventor may have a stake and voting rights in that entity. Then, the inventors may assign their patent rights to that entity. In turn, the patent rights will be controlled by a single resolution of the entity. Such resolutions may be collectively enacted by a vote of the members of the entity (e.g., the inventors). Additional details about how a company can control patent rights can be found here.

 

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Who Should I List as an Inventor in My Patent?

Legally, an inventor is anyone who has contributed to the conception (not the realization) of what is claimed as the invention you wish to protect. So, if an employee conceived of Feature 4, but you only wish to Patent Features 1-3 and 5, the inventor does not need to be listed in the patent application. In general, however, it’s good practice to list everyone that has made a contribution to the conception of the invention.

Scenario One
When a first co-founder provides all of the ideas for the invention, and the second co-founder performs the steps in making the ideas into a developed app, the patent application should only list the first co-founder as an inventor.

Scenario Two
If the founders conceived of the ideas for the invention but hired employees/contractors to develop the app, only the founders should be listed as inventors.

Scenario Three
If an employee provides an idea for the invention, but his employer provides all of the resources and financial support in realizing the invention, the employee must be considered an inventor. However, in this scenario, the employee may be obligated by Employment Contract to assign his patent rights for the invention to his employer.  In this instance, the employer may be considered an ‘assignee’ of the invention and will own all of the rights to the invention. The employee’s listing as an inventor will merely be a formality.

You can read our latest blog article on assignments here: Who can be considered an inventor on my patent application?

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Difference Between Patentability Search Opinion and a Non-Infringement Opinion

I.  What Is The Difference Between Patentability Search, Opinion, And A Non-Infringement Opinion?

In a Patentability Opinion, a patent attorney provides his professional opinion as to whether your invention is Patentable. He will commission a search of patents and publications disclosed throughout the world and determine whether, in view of the existing public disclosures, your invention is patentable.

In a Non-Infringement Opinion, your patent attorney will provide his professional opinion as to whether your invention (even if patentable) may infringe on the patent rights of others. It is important to understand that these are too different assessments.  Here is why.

Even if your idea is patentable, you may still be prohibited from making/using/selling your patented invention!  How is this possible?  This can be understood with the following example:

  1. Inventor 1 invents and patents a chair. For the sake of this example, let’s assume the patent is valid and has not expired.

Later on, Inventor 2 invents an armrest for the chair.  Inventor would like to know if his armrest is patentable, so he commissions a patent search.  The patent search did not reveal any chairs with an armrest, so Inventor 2 properly concluded that his idea is patentable.  Inventor 2 files a patent application and the United States Patent and Trademark Offices grants him a patent!

Now, let’s update the facts in our example:

  1. Inventor 1 invents and patents a chair.
  2. Inventor 2 invents and patents a chair with an armrest.

Having a patent, Inventor 2 is finally ready to bring his invention to market! In the process of manufacturing the chairs with an armrest, Inventor 2 gets a Cease and Desist letter from Inventor 1, stating that, stating that Inventor 2’s chair with an armrest infringes on Inventor 1’s patent!  How is this possible?  After all… inventor 2 received a patent for his chair with an armrest!

To answer this question, it is important to understand that a patent right is only a right to exclude others from making/using/selling your patented invention. It is not an affirmative right to engage in the making/using/selling of your patented invention.  Why?  Well, going back to our example, in order for Inventor 2 to make his chair with an armrest, he must inherently first make a chair.. and the chair is patented by Inventor 1!

To resolve this issue, Inventor 1 and 2 may engage in a licensing deal wherein Inventor 1 licenses, for a fee, the rights for Inventor 2 to make a chair.  However, the licensing deal is completely voluntary, and Inventor 1 can simply refuse to allow inventor 2 to make a chair, thereby preventing inventor 2 from making a chair with an arm-rest!  Inventor 2 would then be forced to design a chair that does not infringe Inventor 1’s patent… which may be very difficult!

II.  Making Sure Your Invention Is Both Patentable And Does Not Infringe Any Third Party Patent Rights

STEP 1: THE PATENTABILITY OPINION

  1. First, conduct a patent search to see if your invention is patentable,
  2. You patent attorney will review the search results to determine if your invention is different from other patented inventions, and
  3. Based on the results, your patent attorney will determine if your invention is patentable.

STEP 2: PRELIMINARY NON-INFRINGEMENT ASSESSMENT

  1. The Patent Search will reveal prior patents that are similar to your invention.
  2. These prior patents may not disclose your invention completely, but contain portions of your invention.
  3. During your patent attorney’s review of the search results, he will ‘flag’ such patents.
  4. Upon your request, the patent attorney may then assess whether the portions of your invention that are covered in the patent present a potential infringement issue.
  5. If a potential infringement is detected, the patent attorney must then engage in an in-depth review.

STEP 3: IN-DEPTH NON-INFRINGEMENT OPINION

  1. The patent attorney will order the full-file history of the patent at issue.
  2. The patent attorney will spend time to review the full-file history, to see what representation and characterizations were made by the inventor during the examination process.
  3. The patent attorney will assess case-law to determine how these representations and characterizations may be interpreted by the Federal Courts in charge of determining patent infringement.
  4. The patent attorney will then apply the interpretation in assessing the scope of patent protection that may be available for the patent at issue.
  5. The patent attorney will then compare the scope of the patent protection with your invention and provide a non-infringement opinion.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Do I Need a Patent Search?

Most of us like to feel that we were the first to have conceived of our great idea.  Before investing the time and resources into applying for a patent, it is good to know if there are any other patents or publications disclosing something similar to your idea. Ultimately, this information will help you and your Patent Attorney decide if pursuing a patent is a good decision, or if designing around may be needed.  Please note – a patent search is not the same as a clearance search (see My Article about the differences).

Typically, the importance of filing a Provisional Patent outweighs the costs of conducting a professional Patent Search.  This is due to both relatively low costs of Provisional Patent filings and the time sensitive nature of Provisional Patent protection.

Think of it this way – if you only had, for example, $600 to spend, what would you prefer to get with that $600?

1. You can spend that money on filing for a provisional application for patent and gain legal priority to any potential patent rights for your innovation, as well as “Patent Pending” status on your innovation; or

2. You can spend that money to determine if your idea will be patentable in the long run.

For provisional patent applications, we recommend approach (A).  Firstly, provisional applications are never examined for patentability.  Rather, they are reviewed by the patent office for formalities, and then stamped with a priority date.  The longer you delay filing for provisional patent protection, the less likely you are to be the first one to file for patent protection on your innovation – and if you’re not the first inventor to file, you may lose your chances of getting your innovation patented.  As such, a patent search may only further delay and increase the expenses associated with filing provisional patent applications.  It’s not a bad idea to perform a quick ‘knock-out’ search on Google’s Patent Search tool – this will give you a good idea if anything similar to your idea has been patented or patent pending.

Formal, non-provisional patent applications, however, are more costly and resource intensive than provisional patent applications.  For that reason alone, it is usually wise to invest in a professionally conducted patent search prior to undertaking the expenses of non-provisional patent filing.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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When Should I Submit Patent Drawings?

The standard for submitting drawings in a provisional patent application is rather simple. Ask yourself, are these drawings necessary for “one of ordinary skill in the field of my invention” to understand what it is that I am trying to patent. If the answer is NO, then you don’t need drawings in a provisional at all. If the answer is YES, then you could submit ANY type of drawings – whether they are non-formal sketches, or expertly drafted figures.  What about when drawings ARE required for a formal patent application?

For the regular patent application that follows the provisional patent, there is a requirement for formal drawings. There are a number of requirements to which these drawings must adhere. You can look through the MPEP (manual of patent examining procedure) Section 608.02 for some of those requirements.

Lastly, if the drawings you submit with your regular (non-provisional) patent application don’t conform to the formal drawing requirements, you will NOT loose your priority date (so long as they were initially filed within a year). The patent office will give you a chance to correct your informal drawings. Here is the catch: If those drawings that you resubmit show some concept that was not understood from your provisional patent application, you may likely loose your priority date to those new concepts.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Patent on Newly Discovered Material

How would an entrepreneur go about patenting a newly discovered material? Say if they were to discover a room temperature superconductor, a discovery that would affect life as we know it.

The first question you must ask is whether this superconductor exists in nature, or whether you had to create a special environment to foster its existence. If you simply dug a hole into the earth and found a new superconductive material, that may not be patentable. However, if you combined known elements x, y, and z to create this superconductor, then nearly everything may be patentable.

For example, there may be some process that you went through to make this discovery – that process may be patentable. There may be some process you went through to have isolated this superconductor from other naturally occurring elements that naturally accompany this semiconductor – that process may be patentable. There may be some environment you have created to foster the discovery of this superconductor – that environment may be patentable.  Essentially, any man-made procedure, device, or system that led up to this discovery may be patentable – and any procedure, device, or system that results from this discovery may be patentable. If by combining elements x, y, and z, you discovered this superconductor, it may even been that you are entitled to a patent on the superconductor itself!

When dealing with matters so interesting, its always best to consult a patent attorney.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri