Everything you need to know about patents!

This is GOLD everyone...from my good friend Ron Reardon who is a registered Patent Agent. Enjoy!

1. Should I file a patent application?
There are several situations where you should not make the investment in a patent application:
• If your invention will sell for less than 1 year
• If your expected 20-year profit on selling/licensing your invention is less than $10,000
• If your Business Plan calls for keeping the invention a Trade Secret instead, e.g. a formula, a process of making (examples of Trade Secrets include the formula for Coca-Cola®, the ingredients for Kentucky Fried Chicken®, the process of making Tootsie Roll® Pops)
2. What is the difference between a patent, a trademark, a copyright and a trade secret?
• Patents protect either the functionality or the ornamental appearance of an inventions
• Trademarks protect a word, logo, phrase, sound, or smell that identifies the source of goods or services
• Copyrights protect an artistic work in a recorded medium
• Trade Secrets protect important business information not known to others.
3. What are the different types of patents?
• The two major categories of interest for inventors are Utility Patents and Design Patents
o Utility Patents cover the way the invention works and have a term of 20 years from the date of filing, if maintenance payments are made at 3.5, 7.5 an 11.5 years from the issue date
o Design Patents cover the way the invention looks and have a term of 14 years from the date of issue; there are no maintenance payments
4. What is a Provisional Patent?
• There is no such thing as a Provisional Patent!
• A Provisional Patent Application is a filing that allows you to state “patent pending” for up to 1 year from filing, but it is not examined at the Patent Office and never becomes a patent, and it does not give you any issued Patent rights
• A Non-Provisional Patent Application must be properly filed within 1 year of the filing of the Provisional Patent Application to start the process of potentially getting a patent for the invention
5. Which application should I file, a Provisional or a Non-Provisional?
• This decision depends on several factor and should consult with a Patent Agent/Attorney before deciding
• Some of the factors are:
• Is the invention market ready, or still under development?
• Do potential companies/investors require an issued patent (or at least a published patent application) prior to licensing/investing?
• What is the expected market life of the invention?
• In the Business Plan what is the role of “patent pending” versus “patented”?
6. In addition to filing a Utility Patent Application, should I also file a Design Patent Application?
• If the exterior look of your invention is novel and is important to protect, filing a Design Patent Application can be advantageous since a patent allowance for a Design Patent Application is generally easier and faster to obtain, which allows you to state “patented” while the Utility Patent Application is still being prosecuted at the Patent Office
• The coffee cup sleeve used at Starbucks® and other coffee shops has both a Design Patent for the appearance of the sleeve, a Utility Patent for the structure of the sleeve, and a Utility patent for the method of making the sleeve
7. When should I file only a Design Patent Application?
• If there is no novel and non-obvious functionality, but the outward appearance is, then a Design Patent Application should be considered
• The first Transformer® toy received a Utility Patent. All the Transformer toys after that received Design Patents
• All the Star Wars® toys received Design Patents
• Most kitchen products receive Design Patents.
8. What should I do prior to having a patent application filed?
• Do your own free patent search (e.g., www.google.com/patents)
• Get an innovation assessment done
• Find out if your invention can be made, and, if so, at a competitive price
• Make sure that you have the four essentials for success:
• A good idea
• The right team
• A thorough plan
• Appropriate funding
9. Should I file my own patent?
• While you are qualified enough as a surgeon to remove a splinter from your finger, if you require surgery you need a health care professional
• This analogy applies to “pro-se” (do it yourself) patenting
• If your invention has significant revenue potential, it is wise to hire a patent professional
• If you still want to file your own patent, buy and read the book “Patent It Yourself” by David Pressman
10. What does it cost to get a patent?
• The cost to get a patent depends on many factors: the type of patent, the field of the invention, the complexity of the invention, the number and type of claims, the ease or difficulty of patent prosecution, the Patent Office fees, the Agent/Attorney fees, etc.
• A patent is just one piece of the multi-piece innovation journey puzzle; be sure to estimate all your costs prior to taking the first step.