The Law Office of Mark Wisnosky
 
 

Intellectual Property Law for Small Businesses
 
 
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Contact for free initial consultation:
mark@wisnoskylaw.com or phone: 858 663 7794

Types of Patent Applications:

What are you going to do with a patent?

Are you ready to file?

Can investment in a patent have an ROI?

 

Patents

Before applying for a patent, you should have a clear idea of what you are going to do with it, whether you have developed the idea sufficiently to file an application and whether the costs of filing make business sense. Once you 1) know how you are going to use the patent, 2) can describe the invention sufficiently such that it could be made (in patent parlance, it is enabled) and 3) have enough data to convince yourself that you can access a market for the invention that is large enough to justify the costs and efforts involved, then you are ready to file. Give me a call or send an email and we can get started.

Call me, too, if you need help deciding whether you are ready to file. It is better to talk to me too early than too late. You should definitely call before marketing your idea. A patent application must be filed within one year after selling or even attempting to sell your invention. If a year lapses before you file an application, then your rights to a patent are lost. There are similar risks to losing your rights to a patent based upon publishing the idea or disclosing it publicly. So plan to call a patent attorney early in the process.

Types of Patent Application

There are several types of patent applications that can be filed, a few of which are described below. An integral part of the service is to decide the best filing strategy. This should be based on factors including costs, urgency to get an issued patent, global strategy for manufacturing and marketing, etc. I draft patent applications that can be filed either as a provisional US application, a non-provisional US application, A patent cooperation treaty (PCT) application or after translation, if necessary, a foreign application. My responsibility in preparing a patent application is to do it properly and completely. The best strategy might require a series of applications, for example, a provisional application followed by a non-provisional US or PCT application. A thorough job on the provisional application means that there will be little work and only small incremental costs to file the non-provisional and/or PCT applications.

Provisional Patent Application - There are many common misconceptions around the Provisional Patent Application. The first is that there is such thing as a “Provisional Patent”. The Provisional Patent Application gives the applicant a “priority” date based upon the filing date of the provisional application. The priority date is only good for one year. After one year from the filing date of the Provisional Patent Application, the applicant must file a non-provisional application or the priority date is lost. A provisional patent application is not examined by the USPTO nor does it by itself result in an issued patent. A subsequent non-provisional patent application is required. Another misconception is that the Provisional Patent Application can be slapped together and should be very cheap compared with a non-provisional application. Some attorneys even offer steep discounts for preparing a Provisional Application. The problem with this is that the priority date of the Provisional Application only applies to the invention that is fully described and enabled in the provisional application. A thrown together application might not provide the priority date you had in mind.

US Non-provisional Patent Application – is a patent application that will enter the queue for examination in the US patent Office. The goal of the office is to complete examination within three years after filing.

A Patent Cooperation Treaty (PCT) application is one that is used if you are planning on filing applications in several other countries. If you are planning on filing in the US and just one or two other countries then direct filing in all the countries is generally more cost efficient than using the PCT. However if, as is often the case, you do not know how extensively you want to file, then a PCT application might make sense. Often a PCT application is filed after, but within one year of the Provisional application or the US national application. A PCT application can have an advantage of providing quicker feedback on patentability. It is even possible to select a foreign patent office to do an initial search report at a discounted rate compared with the cost of the US patent office. National phase applications are required generally within 30 months of the earliest priority date. These applications are in most cases just a forwarding of the PCT application to an attorney in the countries of your choice who then manage the translation and filing on your behalf. Part of the service of a US patent attorney is to have a network of foreign attorney associates selected to do these filings.

Design Patent – Not to be overlooked is the ornamental design of your invention. Some times the invention is not how a device works or a new feature but providing a known feature in an aesthetically improved package. Design patents are cheaper than utility patents. They are also easier to get. In some cases I recommend filing both a design patent and a utility patent. Design patents usually provide less protection than a utility patent. However in some cases the invention is in fact a design and a utility patent cannot be obtained. The breadth of coverage or protection of a design patent depends upon how big a change you have made from other designs. If you make just an ornamental tweak then the patent is narrow. If you make a grand scale change then the coverage is broader.

The type of application to file also depends upon what you are going to do with a patent, your readiness to file and the financial returns:

What are you going to do with a patent?

Are you going to manufacture a product yourself? Are you going to license the technology to others, to whom? Where are you going to manufacture? What is the value chain for your product? The value chain for your product (or even service) is the series of companies from designers to raw materials to manufacturers to marketers and retailers. Any patent attorney will try to get as broad coverage for your idea as possible, understanding what others are doing in similar value chain situations and at the same point or different points from you in the value chain will help provide the best patent coverage possible.

Are you ready to file?

To obtain a patent you must be able to describe the invention such that someone else on reading the patent, with a reasonable amount of experimentation, could make your invention. You do not have to make a prototype. Many patent applications are filed as soon as an inventor develops a clear idea of how to solve a problem. Further experimentation might prove this to not be the best path but the economics might be such that multiple applications are warranted. I have several clients who file a series of provisional applications as their research progresses and then file a non-provisional application within a year of the date of the first provisional. You should have drawings to describe your invention, including flow charts. They can be hand drawn. You should be able to complete a disclosure form (click this link for a disclosure form).

Can investment in a patent have an ROI?

Although there are emotional reasons to file a patent application, ultimately the question of whether to invest in a patent should be answered as a business decision. What is the return on investment for the patent? The patent is going to cost at least $10,000 per country over its life. But what is it worth? The expert source on valuation is still the book: by Smith and Parr "Valuation of Intellectual Property and Intangible Assets". The one-line answer is that a patent is worth the incremental profit that it enables over the patent's life reduced to a net present value. It is possible to estimate a current cash value for a patent and compare that to the costs for an ROI.

 
 
 
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