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Steve O'Donnell, Ph.D. Registered Patent Attorney

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Patents are limited legal monopolies. In exchange for teaching the public how to make and use your invention, the government grants an you a period of exclusivity when you can stop other from making use of your invention.

I like to work closely with my patent clients and help them determine what may be patentable and what isn't. I also help them decide if a patent is something they really reed. I personally handle or oversee every aspect of my patent files. This is not a patent mill that might pressure you to file an application or to buy an expensive marketing plan. I want to make sure that every client gets the personalized attention they deserve at every step of the process.

Below I've compiled some of my most common questions about patents and the patent process. Contact me for more.

A patent is property carried to the highest degree of abstraction—a right in rem to exclude, without a physical object or content. Oliver Wendell Holmes
  • What can a patent protect?
    Basically, patents will protect new and useful processes, machines, manufactures, or compositions of matter. Those are what people usually think of when they think about patents. There are also design patents which cover the 3D structure or ornamentation of an object, and plant patents that protect certain asexually reproduced plants.
  • Can I patent my {app, video game, device, workflow, improvement, etc}?
    The only way to be sure is to try.

    You might be surprised at just what can be patented. For example, if your team has created a first-person shooter and it uses a unique way of changing weapons or a new character design UI, both of those elements may be separately patentable. In other words, patents can cover more than widgets, and the invention doesn’t have to be life changing to be considered useful.

    Improvements to other inventions might also be patentable on their own. For example, although you wouldn't be able to patent toasters generally, but you might be able to patent a method of more accurately determining exactly when toast is done before it is ejected.
  • How do I know if my invention is really new?
    That's actually a lot more work than you might think. We can perform an in-depth prior art search, analyze it, and have a high confidence that your invention wasn't already patented, but that doesn’t mean that someone hasn’t already been selling basically the same thing. 
  • What can I do to protect my invention before I have a patent?
    A wise man once said even a fish wouldn't get into trouble if he kept his mouth shut. So, do that. 

    Selling your invention or even showing your invention can bar you from getting a patent in some circumstances so I always recommend filing an application before marketing if you think there’s any chance you’ll want a patient.
  • What if I have to show my invention to investors before I file a patent application?
    The best thing to do in that situation is to get a non-disclosure agreement in place between you and the investors. Showing your invention without one could hurt your patent rights. Honestly though, potential investors don’t like to sign them so don’t be surprised if they don’t.

    In most situations, filing a patent application is the better plan. Having an application filed indicates that you’ve thought ahead and are serious. It also gives you some protection so you can speak more freely about your invention without a non-disclosure agreement.
  • What's a provisional patent?
    Provisional patent applications are a kind of abbreviated patent application. The requirements aren't as strict and they usually just take a fraction of the time to prepare that a regular, or non-provisional would take. They're also cheaper.

    The downside is that they don't get examined and can't become a patent.

    They're used to hold your place in line at the patent office. Up to a year after filing a provisional application, a person can file a non-provisional application and claim the filing date of the provisional (provided that both describe the same invention). This lets you market your invention without jeopardizing your rights. It also establishes your date of invention so we don’t have to worry about someone else filing an application for something similar.

    Depending on the situation, sometimes a provisional is exactly what's needed, sometimes they're unnecessary.
  • I don't have, or can't build, a prototype. How can I have one made if I can't show it?
    The patent office won't require a prototype (unless maybe you have something like a time machine or perpetual motion device). Often a prototype is useful to work out manufacturing kinks, but as long as you can describe you invention in sufficient detail to allow someone else to make and use it, you won't need a working model. 

    Of course, sometimes a prototype is needed to show something works are intended or so interest investors. I have a few contacts who can help, but depending on what the invention prototyping can be absurdly expensive. 3D printers tabletop and injection molders
  • My invention relies on some existing technology that I really don't understand. Could I still get a patent?
    That might not be a problem, but it will depend on the specific facts. 

    For example, say I have an idea a windshield wiper that turns on when it starts raining (seriously, why don't we have that?) that can be built with off-the-shelf components. You don't necessarily need to know, or even explain, how the water sensor or motor works in order to patent my idea. 
  • What is involved in the patent process?
    Very generally, after we discuss some preliminary things, the inventor would provide me with as detailed a description as possible, along with any drawings or photos I'll need to understand the invention. What's needed can vary based on the invention. The disclosure might require no more than a few sentences, or I might have to drive to your shop and have you walk me though your invention before I'm comfortable working on it. 

    After that, I draft the application and have the required illustrations prepared. It's not an easy process and it might take a week or two, or a month or two, to get the application ready. Then, I file it along with some other necessary materials and we wait. 

    The wait can be significant. It's not unusual for it to take 1.5-2 years to hear back from the patent office. Usually, the first thing we get is an initial rejection, at which point we decide how to respond. Hopefully we can get past the initial rejection and then within a few months (and payment of an issue fee) we receive the official copy of the issued patent. 

    Of course, there are scores of other paths an application can take, but this is probably the most common. 
  • What can go wrong?
    Patents don't necessarily issue just because we file the right paperwork. The examiner has to go through the application, compare it to what is already patented or published, and determine if the invention is patentable. 

    The examiner might find another patent that already discloses your invention. In that case, we can try to argue around that prior art, or tweak the application a bit so it overcomes the reference. 

    The examiner might find a patent that describes part of your invention and another patent that describes another part and say that it would be obvious to combine those two patents. Again, we have the opportunity to change their mind, but our best efforts sometimes aren't enough. 
  • What does Patent Pending mean?
    Once we have a non-provisional or provisional application on file, you can start marking your invention as PATENT PENDING. That puts the public (and potential infringers) on notice that we've filed something. That by itself can be enough to make someone think twice about taking your idea since they might not want to develop a product they won't be able to sell once a patent issues.

    After a patent issues, you'll want to change PATENT PENDING to something like US Pat. 1,234,567. Notice is very important in infringement cases because it's evidence that the infringer knew of your patent and purposely ignored it. Willful infringement usually results in larger awards to inventors.
  • What about those places that advertise on daytime tv?
    Be careful with those. Do a lot of research before you start sending money. Not all are quite as upstanding as they may appear to be. The US Patent and Trademark Office has a page on avoiding invention promotion scams that I suggest you read before you start writing checks. 
  • What if I get a patent and someone infringes it?
    As a patent owner, you have the right to go after someone for making, using, offering for sale, or selling, or importing the patent invention and obtain an injunction and monetary damages. 

    Patent rights are civil, meaning it's up to you to find them and take them to court. It's also not cheap, which is why relatively few patent cases go all the way through to a judgment. Rather, it's more common for out of court settlements to resolve patent disputes.

    The first thing to do is determine if there’s really an infringement. Sometimes it’ll look like infringement at first glance, but when we go through the patent closely, we discover that the other party is doing something different. If there is infringement, we may decide to reach out to the other party with a letter and try to resolve things amicably. The damages can be pretty painful, so if we can show them exactly why they’re infringing and that we’d win in court, many parties will want to settle.
  • How do I license my invention?
    Licensing would be where you would let someone else practice your patent in exchange for something, usually a percentage of sales. For many small inventors, licensing may be the best way of making money from a patent. The trick is in finding someone willing to license your invention. 

    It's helpful if you know someone in the relevant industry, but if you don't, we can send out inquiry letters and see if there is interest. Trade shows are also great places for meeting potential licensors. The best way of attracting investors is usually by being successful. If you’re selling as many widgets as you can make people are going to want to help grow your business because there’s a good chance they’ll make money on the deal. If you don’t have any sales it’s more difficult to convince someone to invest in your market-tested idea.

    When you do find someone, you definitely want an attorney with an intellectual property background review or draft the licensing contract to make sure that you're being treated fairly. 
  • What does it cost to get a patent?
    That's going to depend on a few factors, the biggest being how complicated the invention is. An application for a better zipper is going to take much less time than say, an MRI machine or a biotechnology product. 

    Complexity of the invention isn't always the same as complexity of the field. Meaning, some inventions that could be made in a high school metal shop can actually be more difficult to draft than a biotechnology application.

    Applications for fairly simple inventions might be as low as $3500. However, an average mechanical non-provisional patent application will probably be in the $6000-$8000 range. Something like a computer method or bacteriological invention may be in the $8000-$10,000 range. A provisional application typically is 60-70% of the cost of a non-provisional application. 

    After I do some initial research I will give you a price for the application and discuss payment so you can most accurately budget for the cost and not be struck with an unexpected bill. 

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