OT: Patent Advice

[stephenmarklay]

I am in the process of developing a product. It is carry bag with a specific purpose. A good analogy would be a bike travel back (obviously not that).

I have a prototype now and a revised version should be done today. My plan is to sell this by word of mouth locally and get production figured out and try to understand logistics etc.

After that I will go larger scale but it looks like production will happen locally.

My question is whether or not to visit a patent attorney now to perform a patent search (my preliminary search showed nothing). I think I can apply for the patent after the search on my own to save money. The other option is to get some flow of money and see what the response is before hand. It seems like this would be ok for the short term but some inherent risk.

Thoughts?

[Mike748]

I'm not a patent atty but I work with patents alot. I'm assuming you mean a utility patent not a design patent.

In the US you have one year from the time you first make/sell/offer an invention to file a patent so there's no harm in waiting, although it will delay issuance even more which gives your competition longer to get up to speed and knock you out commercially. You can't enforce a patent before it grants which is usually at least 2 years after filing. If you are out of money by then you lose.

You could file a provisional which is cheaper and easier but has the same time problems as waiting.

Have you considered what value a patent will give you? Will the product be profitable enough to cover the fees? Will you have the financial resources to defend it if someone with deeper pockets infringes? Is broad enough coverage available to keep others from copying?

[markie]

One thing you can do is a google patents search to look for similar or identical intellectual property to your own. With a "new" invention that would be a good place to start. A keyword search should give you useful hits, then focus on the patents claims. It is kind of fun.

I am not a patent expert, but my old job required me to develop new products that were patentable. An ip search was an early step in our process.

[biker72]

You could file a provisional which is cheaper and easier but has the same time problems as waiting.


Any idea what this might cost? I haven't dealt with patents in a number of years but they used to be quite expensive.

[markie]

http://www.google.com/patents?q=Carry+bag&btnG=Search+Patents&output=html_text

Here's a link.

[sc53]

Hey Stephen, my brother is a patent attorney lives in Cincy. PM me for his email contact. He's also a cyclist and member of the forum!

[David Kirk]

I have gone through the patent process and have a patent. It was for a product that I developed while at Serotta and we pursued the patent for two reasons - the first was to help protect us and the idea and the other was so that we could brag about the patent in advertising.

I'm not sure it was money well spent frankly. It may have discouraged others from copying the idea but that is hard to tell. It may also have been good advertising but that too is very hard to tell for sure. Getting the patent was very time consuming and very expensive and it's hard to tell if it was money well spent.

In the end I think the real value of a patent is to discourage others from copying your idea. But should they choose to copy your idea you will need deep enough pockets to defend the patent with time and lawyers. If you won't generate enough income from the idea to justify the upfront cost or to defend it should anyone choose to try to get around the patent then you should think hard about how well a patent would serve you.

If I were to do what I did over again I'd have spent the thousands we spent on the patent on advertising instead to get our brand well linked to the product. It would help sell the product and make it less attractive for someone to try to steal the idea and suffer the bad will in the marketplace.

Good luck.

dave

[MattTuck]

Wow, an off topic thread that I'm a semi-authority on....

Apply for a provisional patent immediately. It is cheap and pretty straightforward. It does one important thing, it establishes a date at which the idea was "invented", ie. establishes a priority date. Yes, it is true that you can apply much later, even after you start selling the product....


BUT, it is cleaner and better to just establish a valid and official priority date via a provisional. Much harder to argue later on that you invented it on xyz date because you have some emails or notes. Put it in writing through official channels.


I spent 4 years doing patent searches and invalidating patents by finding that an idea had been discussed/written about earlier than the guy filed for the patent. There are 300 Million people just in the U.S., there's a good chance someone has come up with your idea already.

Protect yourself.

[stephenmarklay]

Matttuck- so is it ok to file a provisional patent before I get the into the expense of hiring a patent attorny to do s search?

[MattTuck]

Matttuck- so is it ok to file a provisional patent before I get the into the expense of hiring a patent attorny to do s search?

You do not need to provide claims or prior art in your provisional application. I'm not a patent attorney, so i can't say exactly what the best practices are for filing a provisional application.

I'm sure googling something like "best practices for provisional patent application" will give you some tips.

[David Kirk]

What is a 'provisional patent'?

dave

[MattTuck]

What is a 'provisional patent'?

dave


Think of it like PatentLite.

It describes the invention, so it is more of an invention disclosure. You have to file a formal patent application within a year of the provisional. the provisional allows you to write 'patent pending', and locks in a 'priority date' for later patents. It doesn't require the same kind of legal work (drafting claims, prior art search, etc.) as a formal patent application, and it has a cheaper filing fee, especially for a small entity like yourself.

The best way to think about it is probably as a place holder, that discloses the invention and puts a 'stake in the ground', but that requires the more formal process within a year.

[swithouski]

I'm a IP Patent Paralegal (not attny). Everything Matt Tuck said is right on. I will add that even with a provisional you still need some sort of claim and/or depictions. However, these can be very rudimentary and basic and if/when you decide to file for a patent you can make changes to the provisional.

* provisionals are cheap as in $100 give or take. def worth it imho. say down the road in 6 months u decide either which way $100 in the long run is not much money.

[David Kirk]

Think of it like PatentLite.

It describes the invention, so it is more of an invention disclosure. You have to file a formal patent application within a year of the provisional. the provisional allows you to write 'patent pending', and locks in a 'priority date' for later patents. It doesn't require the same kind of legal work (drafting claims, prior art search, etc.) as a formal patent application, and it has a cheaper filing fee, especially for a small entity like yourself.

The best way to think about it is probably as a place holder, that discloses the invention and puts a 'stake in the ground', but that requires the more formal process within a year.

Cool - thanks for explaining that.

I learned something today.



Dave

[biker72]

Think of it like PatentLite.

It describes the invention, so it is more of an invention disclosure. You have to file a formal patent application within a year of the provisional. the provisional allows you to write 'patent pending', and locks in a 'priority date' for later patents. It doesn't require the same kind of legal work (drafting claims, prior art search, etc.) as a formal patent application, and it has a cheaper filing fee, especially for a small entity like yourself.

The best way to think about it is probably as a place holder, that discloses the invention and puts a 'stake in the ground', but that requires the more formal process within a year.
Sounds like what we used to call a disclosure.
We had company issued notebooks,(before computers), and were told by the patent attorneys to document and date every entry. They claimed that even though I could have written the information in the book yesterday, it was much better than not having anything at all.

[stephenmarklay]

Thank you so much. I do have a detailed drawing and I did do a best effort search and found no similar product. So the provisional patent sounds perfect. Thank you so much for this information.

[slowgoing]

Do yourself a favor and talk to a patent attorney before you do anything. It will be money well spent, even if you don't retain him/her to prepare an application. There are all kinds of laws/rules/requirements and advantages/disadvantages that you need to consider before you do anything. These are not the kinds of things you want to learn about after the fact.

[rockdude]

I patented a technology that most of you use and all of you know about. Sold it to a $20 billion dollar company. Other companies started using the technology with the primes it was cheap to be sued than license the Technology. The company I sold it to made a judgment that it was too expensive to fight the fight against a handful of very large corporations and sold the patent to another company. Three other large companies have owned It, all walked away from the cost to defend the patent.

What I learned in the patent business is, (and this lesson applies to alot of thing) the guy with the deepest pockets wins. For example, if Nike likes your invention and thinks it cheaper to fight it in court than pay royalties then they will and you better have big bucks to fight it. Even small patent case can cost a couple million.

I am not saying a patent is not a good idea you can license it or sell it , but keep in mind it could become worthless if you don't have the money to defend it.

[Dekonick]

I have gone through the patent process and have a patent. It was for a product that I developed while at Serotta and we pursued the patent for two reasons - the first was to help protect us and the idea and the other was so that we could brag about the patent in advertising.

I'm not sure it was money well spent frankly. It may have discouraged others from copying the idea but that is hard to tell. It may also have been good advertising but that too is very hard to tell for sure. Getting the patent was very time consuming and very expensive and it's hard to tell if it was money well spent.

In the end I think the real value of a patent is to discourage others from copying your idea. But should they choose to copy your idea you will need deep enough pockets to defend the patent with time and lawyers. If you won't generate enough income from the idea to justify the upfront cost or to defend it should anyone choose to try to get around the patent then you should think hard about how well a patent would serve you.

If I were to do what I did over again I'd have spent the thousands we spent on the patent on advertising instead to get our brand well linked to the product. It would help sell the product and make it less attractive for someone to try to steal the idea and suffer the bad will in the marketplace.

Good luck.

dave

DKS? It was worth it! :beer:

[Chance]

DKS? It was worth it! :beer:
Doing the bike may have been worth it but it sounds like obtaining the patent was not. These are not one and the same. Since the bike design was not extremely successful and production ceased shortly after introduction the patent was immaterial (relative to life of a patent). Other companies would have not been able to copy the patented portions of the design within the time frame before it became a non-issue. If sold any patent can have value but realistically if Serotta (who owned the patent) didn’t want to continue building the bike it’s highly unlikely other companies would buy it from them in order to manufacture the design themselves.

As Kirk implied perhaps investing additional funds in marketing could have done more good than investing the same amount on the patent.

Most patents are a failure in that they don’t return their investment or provide useful protection. It’s risk versus reward. Odds are against the patent being beneficial but if the project is a huge success the patent can be of significant value. Otherwise it can be a waste of money.

There will be a financial gamble regardless of which way Stephen decides to go because the future success of the project is unknown.

[stephenmarklay]

Thanks for the logical summary of this. The provisional patent sounds like a win win in that it buys me time. Based on what rockdude said it may be best to just use the time wisely and hope it gets me a leg up.

[weaponsgrade]

One thing that I don't think has been mentioned yet is a design patent. A design patent protects the way something looks and a utility patent protects what something does. Generally, design patents are much cheaper than utility patents, get examined much faster, and can issue faster.

Here's an example of a design patent:

http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO1&Sect2=HITOFF&d=PALL&p=1&u=%2Fnetahtml%2FPTO%2Fsrchnum.htm&r=1&f=G&l=50&s1=D638,854.PN.&OS=PN/D638,854&RS=PN/D638,854

[stephenmarklay]

It looks like even with a provisional application there is a bit of detail such such as format form drawings, descriptions etc.

Are online services safe and useful for this or should I inquire with patent attorney even for this part?

[weaponsgrade]

Not sure what u mean by online svcs but if ur referring to invention promotion companies or bargain basement places i'd be wary. I think if ur willing to do the research a provisional is something u can do on ur own. Lots of free drawing tools avail like sketchup. It depends on how far u want to go to protect. If ur on a limited budget a provisional yourself might be the way to go. There are downsides but while the provisional is pending u can see what the mkt response is. If people love it u can take the next step. If not u can abandon and u won't be out too much.

[stephenmarklay]

That's my general thoughts after reading everything too. I did the research but I wonder if have an attorney help with the Provisional is worth it. I am not sure the amount of time I would have to spend crossing the T's and dotting the i's wouldn't be better spent with an attorney. I called a local firm and next week an attorney will call. I would get 1/2 free and then decide.

Not sure what u mean by online svcs but if ur referring to invention promotion companies or bargain basement places i'd be wary. I think if ur willing to do the research a provisional is something u can do on ur own. Lots of free drawing tools avail like sketchup. It depends on how far u want to go to protect. If ur on a limited budget a provisional yourself might be the way to go. There are downsides but while the provisional is pending u can see what the mkt response is. If people love it u can take the next step. If not u can abandon and u won't be out too much.

[bicycletricycle]

patents are valuable if you have the money to defend them, if you are planning on selling the idea to somebody bigger than having the patents can add value because they may have the horsepower to do so.

[stephenmarklay]

Thanks for the advice everyone. I have a plan on this now. I am going to do much of the provisional application (drawings and description) myself and then have a patent attorney locally review it. The attorney comes recommended by an attorney I know.

We had a great conversation, and it sounds like his rate (flat rate for this) is very reasonable. He said the longer he spends on it the closer in form that it will be to the final patent if I should go that way.