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Don't Forget to Patent Your Product

Posted by Isabel Fox | Oct 26, 2021 | 0 Comments

What Is A Patent?

A patent is an intellectual property right granted by the federal government for new and unique inventions.  The founding fathers considered patents so vital they gave Congress the right to grant patents in the United States Constitution. In fact, before the inclusion of the Bill of Rights, the only “right” mentioned in the Constitution relates to patent rights and copyrights: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”[i] The United States Patent and Trademark Office (USPTO) is empowered to issue patents to inventors if they can show what they've created is “novel and non-obvious” and has never been done before. The benefit of a patent is it excludes others from “making, using, offering for sale or selling” the invention, granting inventors a limited “monopoly” for their product.

What Types of Inventions Are Patentable?

For an invention to be patentable, it must meet the USPTO's criteria for being “novel and non-obvious.” The USPTO defines “novel” as differing from other similar inventions in at least one of its parts. In addition, a novel invention cannot have already been sold, publicly used, or patented by somebody else. This definition confirms why patenting a product as soon as possible is imperative - if the product gets leaked before an application is filed, it could be disqualified from later being patented.

“Non-obvious” is a subjective standard based on whether a person with experience in the field of the invention (commonly referred to as “a person having ordinary skill in the art”) would consider the product new, unexpected, and surprising. It's inherent in these definitions that the product must be manmade rather than naturally occurring, as natural, unaltered processes cannot be patented. A mathematical operation, a calculation method, or an abstract principle doesn't qualify, but an industrial process or application using the math or principle may be patentable. The best way to find out if a product is patentable is to speak to an experienced IP professional while still in the process of development. If a product is not patentable, it might be worthwhile to make changes to make it more likely to qualify for a patent.

How Patents Protect Inventors

Many consumer product start-ups have two objectives: build up the company and be acquired. It's essential to understand neither one of these objectives can be properly achieved without a patent. Say, for example, you have a great product and put it on Kickstarter without filing for a patent. Another party may reverse engineer your product, patent it, and cause you to LOSE your right to make and sell your own invention. As a result, you could be sued for marketing your own product and forced to stop selling it by a larger company that can bankrupt you with legal fees.

Another possible scenario would be if another company copied your product and sold it for one-tenth the price you charge, causing your sales to plummet. If your patent application was filed after your product went public, the patent could ultimately be invalidated, significantly weakening your case against the copycat company. Therefore, the best way to protect yourself against infringers is to file a patent application for your product BEFORE any public disclosure; including launching a product page on a crowdfunding site, marketing via print, social media, etc., and/or showing your product at a tradeshow or other public event.

Is There More Than One Type of Patent?

U.S. Code Title 35 empowers the USPTO to issue three different types of patents for qualifying inventions:

  • Utility Patents, also known as “patents for invention,” are the most common types of patents and protect an invention for twenty years. They're issued for such inventions as medical devices, tools, computer programs, consumer products, GMO's, and chemical compositions. Utility patents can offer broad protection against competitors and usually take two to three years from filing to issuance. Notably, the USPTO offers expedited options that can reduce the time to less than one year from filing to issuance. An invention must be operable and have real-world use to qualify for a utility patent. Maintenance fees are required for utility patents.
  • Design Patents are issued for a period of fourteen (if filed before May 13, 2015) or fifteen (if filed after May 13, 2015) years to protect the ornamental or decorative aspects of an invention. They are often easier to obtain than utility patents and do not have maintenance fees but do not offer any protection for the functionality of a product. Inventors often choose to file both utility and design patent applications to protect their invention's function and ornamental aspects.
  • Plant Patents are issued for new asexually reproducing plants, including seedlings, mutants, hybrids, and cultivations, and are the least common type of patent. The owner of a plant patent can exclude others from making, using, or selling the patented plant for twenty years without maintenance fee payments. One example of a patented plant is the Honeycrisp apple, developed by scientists at the University of Minnesota and patented in 1990.
Should I File A Provisional Patent Application?

An inventor's biggest mistake is making their invention accessible in a public forum such as Kickstarter without first applying for a patent. A provisional patent application allows you to lock in a filing date for your invention without providing detailed information and plans. As such, a provisional application can be filed in earlier stages of product development than a regular (“non-provisional”) application. It provides the same intellectual property protection as a full, non-provisional patent application for a year, so you can safely utilize crowdfunding and other public funding sources with less concern about your invention being stolen.

Filing a provisional application also allows you to use the “patent pending” mark for your fundraising and marketing while you finalize the details needed for a non-provisional patent application. The United States follows the “first-to-file” rule, so filing a provisional application makes you the owner even if somebody else invented the product first but failed to file a patent application (provided, of course, you didn't steal the idea from the other inventor).

It's important to remember that a provisional application only secures your filing date and will have no force unless you ultimately file a non-provisional application and receive a patent for your invention.

How Do I File A Non-Provisional Patent Application?

If you file a provisional patent application, you must file a non-provisional patent application within a year to retain the provisional patent application's filing date. You can also skip the provisional application and file a non-provisional application right away. A typical non-provisional patent application includes drawings and a specification, which is the text portion of the application. The specification provides a detailed description of the drawings and embodiments of the invention not explicitly shown in the drawings. The most important part of an application, which determines what is covered by any patent that issues from the application, is the claims. A standard non-provisional application usually has twenty claims, though applications may have more or fewer than twenty claims.

The patent process can be time-consuming, expensive, and complicated without the assistance of an experienced IP professional, such as a registered patent attorney or patent agent. Upon filing a non-provisional application, a patent examiner with expertise in the area of your invention will be assigned to review your application and evaluate the claims for novelty and non-obviousness. Patent examiners issue opinions called “Office Actions” that reject or accept the claims of a patent application based on previously existing inventions, known as the “prior art.” Applicants must reply to each Office Action and make claim amendments and/or arguments to overcome the cited prior art in case of a rejection.

The process of applying for a patent and going back and forth with the USPTO via Office Actions is called “patent prosecution.” It's not uncommon for the patent examiner to issue multiple rejections, thereby giving you the opportunity to persuade the examiner that your invention does not lack industrial applicability, novelty, etc. Office Actions can be complicated, and there are many nuanced rules regarding responding to the USPTO, so it is best to engage an experienced IP professional to help you through patent prosecution. The patent prosecution process may take years to complete, though the USPTO does provide a few avenues to expedite prosecution. One option is a Track One Prioritized Examination, which involves paying additional fees based on a sliding scale for the size of your company. Most fees involved in filing a patent application are adjusted by the size of the applicant, where a Micro Entity (e.g., a solo inventor) pays less than a Small Entity (e.g., a business with fewer than 500 employees), which in turn pays less than a Large Entity (e.g., a business with more than 500 employees).

Don't Market An Invention Without Getting Filing A Patent Application

The single biggest mistake a start-up can make is not filing a patent application. Filing a provisional patent application will ensure your invention has some protection while seeking funding on Kickstarter and other crowdfunding platforms and prevent others from stealing your idea after seeing it online. Without this protection, your entire investment of time and money can be lost. If you're an inventor, it's essential to consult with an experienced IP professional about applying for a patent.

How We Can Help

Gallium Law has significant patent experience. We would be happy to assist you in starting or strengthening your patent portfolio and increasing the value of your business. Please call us at 651-256-9480 or fill out this Contact Form to speak with us before it's too late.

*The information provided in this article is not legal advice and should not be relied on as such. The content of this article is for informational purposes only and is meant as a starting point in your search for answers to your legal questions.


About the Author

Isabel Fox

Isabel Fox is a registered patent agent and has been with Gallium Law since 2018. Her practice largely revolves around utility and design patent prosecution; including conducting patent landscape searches, drafting patent applications, and responding to Office Actions issued by the USPTO...


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