Anyone here know anything about patents?

[Inferno0032]

Looking to get one. I know I've often seen "Patent Pending" on things that are already commercialized, how far into the patent process do you actually have to be in order for your idea to be "protected." I've heard from a few law students who said that one solution for temporarily protecting ideas is to draw pictures, write down technical details, take pictures if you have a prototype, and mail it to yourself, and don't open the envelope. It then becomes a federally dated document as long as it's still sealed, and can be used to argue someone else's patent in the event they filed one in the meantime, but don't really like the idea of relying on the USPS to protect an idea

Currently a college student, have a rudimentary proof-of-concept prototype done, and don't think this is the best time to shell out the potential $XX,XXX which may be necessary for a full patent. I'm sure you guys have some quick info I could go off of.

 

[darkxshade]

I've just patented the method to answering your question. Anyone that helps the OP will be SUED!!!

 

[dullard]

To protect your idea, you need to at least file a provisional patent. The provisional patent is only a couple hundred dollars (more if you use an attorney).

The catch is that the provisional patent only lasts 1 year and you lose protection if you don't file for a full patent ($xx,xxx) within that year.

Mailing yourself ideas is a start, but it is a weak start. For example, in some areas patents are first-to-file (most of the world) and in others it is first-to-invent (the US is a good example). Simply having a letter that proves you were the first-to-invent is useless in a first-to-file country. Secondly, to prove what is in the letter, you must open the letter. If you don't do it carefully, you just invalidated any proof. At a bare minimum send yourself two letters.

Also remember that the vast majority of patents do not make money and in fact you lose your $xx,xxx. Of those patents that make money, half are thrown out in court if challenged. Thus, file a patent at your own risk. Of course, if you have a great idea, not filing it would be a much greater risk.

The biggest suggestion that I'd have is to get a good NDA written (non-disclosure agreement). Do not tell ANYONE anything about your idea until they sign the NDA. Most people with a great idea spread it to the world shopping for potential buyers. Without the NDA and without the patent, you just gave your idea away for free. With many NDAs signed (as many as people you talk to), you can see if your idea has commercial value. If so, then file a patent or sell your idea to someone with that NDA.

 

[Inferno0032]

I've just patented the method to answering your question. Anyone that helps the OP will be SUED!!!

Touche, but since everyone on ATOT is a top-end lawyer on the side for shits and gigs they will find a hole in your patent and find a way for you to have to pay them for helping me. It's how they pay for their multiple hot wives and mansions, and the Bentley out front.

 

[darkxshade]

To protect your idea, you need to at least file a provisional patent. The provisional patent is only a couple hundred dollars (more if you use an attorney).

The catch is that the provisional patent only lasts 1 year and you lose protection if you don't file for a full patent ($xx,xxx) within that year.

Mailing yourself ideas is a start, but it is a weak start. For example, in some areas patents are first-to-file and in others it is first-to-invent. Simply having a letter that proves you were the first-to-invent is useless in a first-to-file country.

You'll be hearing from my lawyer.

 

[Inferno0032]

To protect your idea, you need to at least file a provisional patent. The provisional patent is only a couple hundred dollars (more if you use an attorney).

The catch is that the provisional patent only lasts 1 year and you lose protection if you don't file for a full patent ($xx,xxx) within that year.

Mailing yourself ideas is a start, but it is a weak start. For example, in some areas patents are first-to-file (most of the world) and in others it is first-to-invent (the US is a good example). Simply having a letter that proves you were the first-to-invent is useless in a first-to-file country. Secondly, to prove what is in the letter, you must open the letter. If you don't do it carefully, you just invalidated any proof. At a bare minimum send yourself two letters.

Also remember that the vast majority of patents do not make money and in fact you lose your $xx,xxx. Of those patents that make money, half are thrown out in court if challenged. Thus, file a patent at your own risk. Of course, if you have a great idea, not filing it would be a much greater risk.

The biggest suggestion that I'd have is to get a good NDA written (non-disclosure agreement). Do not tell ANYONE anything about your idea until they sign the NDA. Most people with a great idea spread it to the world shopping for potential buyers. Without the NDA and without the patent, you just gave your idea away for free. With many NDAs signed (as many as people you talk to), you can see if your idea has commercial value. If so, then file a patent or sell your idea to someone with that NDA.

Exactly the info I was looking for, thanks alot!

I'm in the US as well, and does an NDA have to be something professionally written or could I, for instance, carefully write something up, possibly from guidelines or examples on in the internet or in law books?

Thanks again

 

[JS80]

Expect to "invest" at least $25k

 

[nanette1985]

I recommend http://www.inventorsdigest.com Decent folks who know their stuff and won't rip you off - this can be a very shady industry.

The main purpose of a patent is that it gives you the right (and the obligation) to sue someone who infringes your patent. Therefore, you want the top lawyers in your particular category. They know how to write the patent app so that you have the best chance to win in court.

If you're forming a company with the idea of eventually selling that company, then you need the best patent you can get - that's what your buyer will be buying.

Best of luck on your invention!

P.S. Learn the difference between a design patent and a utility patent.

 

[silverpig]

To protect your idea, you need to at least file a provisional patent. The provisional patent is only a couple hundred dollars (more if you use an attorney).

The catch is that the provisional patent only lasts 1 year and you lose protection if you don't file for a full patent ($xx,xxx) within that year.

Mailing yourself ideas is a start, but it is a weak start. For example, in some areas patents are first-to-file (most of the world) and in others it is first-to-invent (the US is a good example). Simply having a letter that proves you were the first-to-invent is useless in a first-to-file country. Secondly, to prove what is in the letter, you must open the letter. If you don't do it carefully, you just invalidated any proof. At a bare minimum send yourself two letters.

Also remember that the vast majority of patents do not make money and in fact you lose your $xx,xxx. Of those patents that make money, half are thrown out in court if challenged. Thus, file a patent at your own risk. Of course, if you have a great idea, not filing it would be a much greater risk.

The biggest suggestion that I'd have is to get a good NDA written (non-disclosure agreement). Do not tell ANYONE anything about your idea until they sign the NDA. Most people with a great idea spread it to the world shopping for potential buyers. Without the NDA and without the patent, you just gave your idea away for free. With many NDAs signed (as many as people you talk to), you can see if your idea has commercial value. If so, then file a patent or sell your idea to someone with that NDA.

That's mostly good, except for two points:

1. I believe it has to be registered mail. Regular mail doesn't cut it.

2. "idea" patents aren't worth much at all. You have to have a prototype working in order for it to be worth something. The reason being that something rarely goes straight from paper to a working version without any changes. Since the patent protects what's on the paper, what you produce might not be protected.

 

[Inferno0032]

I recommend http://www.inventorsdigest.com Decent folks who know their stuff and won't rip you off - this can be a very shady industry.

The main purpose of a patent is that it gives you the right (and the obligation) to sue someone who infringes your patent. Therefore, you want the top lawyers in your particular category. They know how to write the patent app so that you have the best chance to win in court.

If you're forming a company with the idea of eventually selling that company, then you need the best patent you can get - that's what your buyer will be buying.

Best of luck on your invention!

P.S. Learn the difference between a design patent and a utility patent.

Thanks for the info, and could you elaborate briefly on the fundamental between design and utility patents?

I would like to form a company, but do not (at this time) have the intention to build it and sell it, but that doesn't mean it's out of the option.

My uncle (whom I'm not close with at all) is a patent lawyer in the Bio Chem industry, I'll contact him as well, and see if he can find some good lawyers in my particular patent category.

 

[Inferno0032]

2. "idea" patents aren't worth much at all. You have to have a prototype working in order for it to be worth something. The reason being that something rarely goes straight from paper to a working version without any changes. Since the patent protects what's on the paper, what you produce might not be protected.

I have a working prototype, but that's not to say there will be various small revisions which will subsequently take place, but the fundamentals are there, and that should mostly be protected under the original patent, correct? If someone tried to patent something with the same fundamental "core" and made some small changes, that probably wouldn't win in court as a sole patent, right?

 

[dullard]

I'm in the US as well, and does an NDA have to be something professionally written or could I, for instance, carefully write something up, possibly from guidelines or examples on in the internet or in law books?

The internet is filled with good NDAs. It is just a short paper stating that the person won't steal your ideas and won't tell others of your ideas. In the most strict sense, ideas can't be patented once the public knows about it. The NDA makes the communication private and not public, thus you can talk freely about your idea. A lawyer should be able to draft one up for ~$100 (maybe less if you sweet talk one).

I have a working prototype, but that's not to say there will be various small revisions which will subsequently take place, but the fundamentals are there, and that should mostly be protected under the original patent, correct? If someone tried to patent something with the same fundamental "core" and made some small changes, that probably wouldn't win in court as a sole patent, right?

The original patent should be both broad and specific. Suppose you invented something that was 5 feet long. You want a patent claim that claims everything from say 5 inches to 50 feet long. That is a broad claim. If you only claimed something that is 5 feet long, then anyone else could come along and build it 5.1 feet long. Claiming a broad range protects your idea.

But, broad claims are most likely to be thrown out in court. You want specific claims as well. You also want to claim that item as being 5 feet long. A good patent attorney will claim multiple specific versions. Those specific claims combined with your broad claim help set up a picket fence of claims to protect your idea.

Of course anyone can improve on your idea (and patent those improvements). If someone does make or sell that idea in your patented countries then he/she/it should legally pay you a licensing/royalty fee for using your core (but no fee is needed for solely using their improvement). If you don't get your fee, then the patent gives you the right to sue. You might lose, but you might win.

But, that brings us to the real key about patents. They simply are the right to sue someone. If you don't sue or can't sue (ie, not enough money to hire an attorney, and we are talking the $x,xxx,xxx range) then a patent isn't of much use to you. If this is a possibility, then you either need big balls or a strong company backing you up.

Sometimes a trade secret is better than a patent (no patent fees, no lawsuit fees). Think about that if it applies to your idea.

 

[Paperdoc]

A sealed letter to yourself is a common old tale, but just about useless legally. It is now recognized that it is not too difficult for a skilled person to tamper with a sealed envelope and alter its contents, so the seal and date lose their value quickly. Besides, in a first-to-file system, it does not matter what someone else claims to know when. It matters only when the first description of the device is filed formally with a patent office.

An NDA document can be useful, but recognize its limits. The reason for it is the concept of "absolute novelty". That is, you can file a claim to a Patent on a device design ONLY if the design has never been disclosed to ANY member of the general public, unless you can demonstrate that the information was kept secret from the rest of the public. (Of course, the design cannot be something already known to the public.) So a formal contract called a Non-Disclosure Agreement is a legal document to establish that the recipient of the information understood that it is secret and must be kept secret. You still have to ensure that the info actually has been kept secret. If someone were to challenge the Patent on the basis that one of your contacts had violated the NDA and made a public disclosure, you'd miss out on the Patent and find yourself pursuing the indiscreet party for damages in civil courts.

All of this brings up a vital point. Patents are matters of civil law. There are no enforcement police. A Patent defines very clearly what you own and don't. Armed with that you could hire a lawyer to sue someone who has violated those ownership rights and ask a court to award damages. You pay all of the costs for lawyer and courts, and hope to collect enough from the offender to pay all the bills and give you extra to compensate for money you should have received for use of your intellectual property. If you can't afford the process, or believe the violator will never be able to pay up, you may not be able to enforce your rights in a truly practical sense.

Depending a great deal on the nature of the device, some people are much better advised to spend what money the have to invest in making some product and marketing it like mad so that they actually do get cash for the product. Especially for something that may have a limited lifetime in the market or may be easy to duplicate with alternative designs, sometimes making a lot of money as the first and dominant product in the market, and then abandoning the market to copiers, is smarter.

I caution you about another important aspect of Patent systems, called Freedom to Operate. It is quite amazing how many brilliant designs already have been patented but have never been commercial success stories. The result is that most of these designs, already protected by patents, are completely unknown to you. So it is always possible that your design may violate an existing Patent you never knew of. One of the important functions of any Patent search, whether preliminary or thorough, is to detect those pre-existing Patents so you can avoid violating them. Having good information that you are NOT violating an existing Patent is the Freedom to Operate.

 

[Sho'Nuff]

<--------------- Patent Attorney

OP: PM me if you have questions. Not a good idea to get your info off a forum.

 

[SphinxnihpS]

It seems RegusPatoff would be a go to guy at ATOT. Is he still around?

 

[Dirigible]

<--------------- Patent Attorney

OP: PM me if you have questions. Not a good idea to get your info off a forum.

PM soxfan. Lots of wrong info here.

Edit: to be clear, this thread has lots of bad info. PM soxfan to get the real dope.

 

[chusteczka]

You have already been provided some great information. I have gone through the steps similar to your situation. Here is my recommendation.

This summer, either go to your library or purchase through Nolo.com the book Patent it Yourself by David Pressman. Read the first few relevant chapters.



Read through the patent process.
http://www.uspto.gov/patents/process/index.jsp



Search for your concept through previous patents on the USPTO website.

http://www.uspto.gov/
http://www.uspto.gov/patents/process/search/index.jsp
http://patft.uspto.gov/netahtml/PTO/search-bool.html

First look through the drawings to see if each patent is close to your idea. Then read the claims of these patents, observe how similar concepts to your idea are described.


Learn the difference between a Utility Patent and a Design Patent.



Read about the different types of patent claims.
http://en.wikipedia.org/wiki/List_of_patent_claim_types

First, learn about the Means-plus-Function claim type since it is the most logical method of writing a claim. Then learn the Jepson claim type since it is relatively easy and logical. Then learn about the Markush claim type since it most used in practice by U.S. attorneys as a technique to better protect the claimed aspects of the invention through confusion.


Do what you can to start writing your own claims. The book referenced above by Pressman provides excellent advice for how to start. Take some digital pictures of your prototype (keep these secret). Also make some rudimentary drawings if you can. At some point, you will need professional drawings either hand drawn or by Auto-Cad. You may have the ability to create these yourself.

Then prepare the rest of the application, again the book with guide you. Assuming you proceed with a utility patent...

When you have this initial work done, put everything together for a provisional application. For a provisional application, you may write more claims than necessary. I like to write a short and concise set of claims followed by a more verbose set of claims that claim the exact points as the short and concise set, just more thoroughly described.

Now that you have a provisional application prepared you can either submit it to the patent office yourself or send it to someone you trust for review, such as your patent lawyer uncle.

Once your provisional application is submitted, you have one year to submit the formal application. You will want to provide your provisional application to a patent attorney or agent to clean up for you quickly so they have as much of that year to work on this as possible.

Get started reading that book in the first week after classes end. This work will take all summer to complete. Good luck with it.

You may have a strong desire to discuss this with other people. I advise against it. You may say you have an idea that you are working on but do not provide more information than that. The topic of patents get people excited. Your friend or family member may take your idea and excitedly discuss it with others. There are many qualified people out there that upon hearing of your idea, can act on it faster than you are able.

 

[Sho'Nuff]

An NDA document can be useful, but recognize its limits. The reason for it is the concept of "absolute novelty". That is, you can file a claim to a Patent on a device design ONLY if the design has never been disclosed to ANY member of the general public, unless you can demonstrate that the information was kept secret from the rest of the public. (Of course, the design cannot be something already known to the public.)

OP, are you contemplating filing for a U.S. patent, one or more foreign patents, or both?

If the former, the "absolute" novelty concept mentioned by Paperdoc is irrelevant, as the U.S. does not follow an absolute novelty standard (unlike Europe, Japan, and much of the rest of the world). In the U.S., you have one year from the date you first publicly disclose your invention, sell it, or offer it for sale, to file a U.S. application. If you want to seek foreign patent protection, you should at least file a U.S. provisional including claims before publicly disclosing your invention, selling it, or offering it for sale. You would then need to file a PCT or corresponding foreign apps within 1 year of the filing date of the provisional. Note that this is only a valid approach in countries that are a party to the Paris Convention (most countries of economic significance)

NDA's have a much broader purpose than simply hedging against running afoul of the absolute novelty standard in foreign countries. In the U.S., an NDA is (if drafted correctly), a legally enforceable contract between two parties. As such, either party may sue the other party for breach of that contract or pursue other potential remedies. Also, do not be fooled into thinking that there is a "one size fits all" NDA. I've seen hundreds if not thousands of different NDA's, and most were drafted with an eye towards protecting information disclosed under specific circumstances. Make sure that you read any NDA you are asked to sign, and understand all of its provisions before signing.

Of course, like my signature says, nothing I post here is legal advice, and you rely on it at your own risk.

 

[Sho'Nuff]

First, learn about the Means-plus-Function claim type since it is the most logical method of writing a claim. Then learn the Jepson claim type since it is relatively easy and logical. Then learn about the Markush claim type since it most used in practice by U.S. attorneys as a technique to better protect the claimed aspects of the invention through confusion.

With all due respect, you should not dole out advice when you have no idea what you are talking about. Jepson and Means-Plus Function claims are riddled with nuanced legal issues. And with the exception of certain area of the chemical arts (pharmaceuticals come to mind), markush claims are not the most used in practice by patent attorneys.

As to your remark about "confusion," 35 U.S.C. 112 second paragraph requires the applicant to particularly point out and distinctly claim that which they regard as their invention. In layman's terms, the claims have to be clear, else they will be objected to during examination and won't be allowed until they are clear. Recitation of alternative elements (a markush group) does not render claim language unclear.

 

[Sho'Nuff]

To protect your idea, you need to at least file a provisional patent. The provisional patent is only a couple hundred dollars (more if you use an attorney).

Provisional applications are often misunderstood, even by practitioners. To be clear, a provisional patent application ONLY has value IF it sufficiently describes and enables the invention CLAIMED in a later filed NON-provisional application that claims the benefit of the provisional application filing date. If the provisional does meet the written description and enablement requirements for the subject matter claimed in the non-provisional, the claims of the non-provisional are not entitled to receive the benefit of the provisional application filing date.

This is not to say that provisional applications do not have any value as a strategic option. But you should not fool yourself into thinking that you can file a shoddy provisional and expect to receive any benefit from it.

 

[dullard]

This is not to say that provisional applications do not have any value as a strategic option. But you should not fool yourself into thinking that you can file a shoddy provisional and expect to receive any benefit from it.

You are speaking to the choir. My employer loves to file shoddy provisionals (no claims, little relevant text, and lots of irrelevant text) and then we have a nightmare when it comes to filing the full patent.

 

[Inferno0032]

Mr. Soxfan has a PM

Thanks for all the info guys!

 

[chusteczka]

With all due respect, you should not dole out advice when you have no idea what you are talking about. Jepson and Means-Plus Function claims are riddled with nuanced legal issues. And with the exception of certain area of the chemical arts (pharmaceuticals come to mind), markush claims are not the most used in practice by patent attorneys.

As to your remark about "confusion," 35 U.S.C. 112 second paragraph requires the applicant to particularly point out and distinctly claim that which they regard as their invention. In layman's terms, the claims have to be clear, else they will be objected to during examination and won't be allowed until they are clear. Recitation of alternative elements (a markush group) does not render claim language unclear.

You are incorrect in thinking I have no idea what I am talking about and I would appreciate you being more careful when you say such things. Such an irresponsible statement on your part can perceptually invalidate my effort put into what I offered. I mentioned to "learn" about the various types and provided a brief description of their use. Then I provided a URL to provide better written information on the material. I fully stand by what I said and do not wish to get into an argument about it.

Means-plus-function is a method that can be used within the Jepson and Markush claim types. The U.S. patent system mainly uses Markush claims because the description is not perfectly clear and does "muddle the waters" by talking circles around a subject in "lawyer speak". Many claims are written in the Markush style that are not as clear as they would otherwise be if written in the Jepson style.

The European patent system focuses on Jepson type claims since they are straight forward in describing the novel aspects of the invention in relation to prior art. Jepson type claims are easier to understand but the method makes it easier for the patent examiner to declare an innovation as "obvious" over the prior art.

It is important for someone writing their own application to know about the various methods of writing claims to help with understanding them.

 

[chusteczka]

Allright, you are correct that I do not know the theory of writing claims as well as I need to. I am an independent inventor, neither a patent attorney nor a patent agent. My mentor, co-inventor, and now business partner is a successful inventor with numerous patents from the European system. The struggle we continue with through the last 13 years is the main difference between what he knows from Europe with the focus on Jepson type claims versus the style used in the U.S. From our perspective as independent inventors with a background in the European system is that the U.S. system of writing claims is very confusing. The claims are not straightforward and talk in circles with confusing "lawyer-speak" in an apparent effort to make simple concepts difficult to understand due to ambiguity. I thought I read something somewhere that had labeled these type of U.S. claims as the Markush type. I had that link to the various types of claims available since I need to reread it myself since I am again preparing a few more patent applications. The methods of writing claims in the U.S. system is a weak point for me and it is one I could use more education on. However, I believe any other independent inventor attempting to write their own claims will run into similar difficulty. I tend to think of it as U.S. lawyers creating their own job security to perform a task that would otherwise be very simple without their involvement in the first place.

Soxfan and I have different perspectives. His is from an expensively trained attorney and mine is from an independent inventor seeking to minimize costs. My writeup above contains the exact lessons it took me several years and numerous patent applications to learn. No attorney will provide such useful information. Everyone has their own methods and some may find my advice useful while others will not.

It is possible that my post incorrectly summarized the different types of claims due to my inexperience in the theory behind this. However, I firmly stand behind the other aspects and methods that I discussed that an independent inventor may take to pursue their project.

 

[Sho'Nuff]

You are incorrect in thinking I have no idea what I am talking about and I would appreciate you being more careful when you say such things. Such an irresponsible statement on your part can perceptually invalidate my effort put into what I offered.

My apologies if I struck a nerve. I'm sure you had good intentions. But as you admit in a later post, you are not a U.S. attorney, you are not familiar with U.S. patent law, and you don't understand the implications of the claims you are suggesting that the OP learn about. Respectfully, that does not imply that you have a good foundation from which to provide guidance on U.S. patent practice.

Many claims are written in the Markush style that are not as clear as they would otherwise be if written in the Jepson style.

You might be correct. But do you know why few U.S. patents contain claims written in the Jepson format? Two words. Prosecution Disclaimer. In layman's terms, the preamble of a Jepson claim is interpreted as admitted prior art. Case law and history have proven that such admissions are not desireable in an enforcement action in U.S. court. U.S. patent law is filled with such nuances. This is but one example of why it is not sufficient to simply understand the mechanics of writing patent claims. You have to understand the implications of the claim language and format that is used.

It is important for someone writing their own application to know about the various methods of writing claims to help with understanding them.

I agree that it is important to be aware of the options available. But as explained above, understanding the options for drafting claims goes far beyond mere mechanics.