It’s just that the law firms, boutiques, or their likes practicing patent law are focused on serving bigger mostly corporate clients rather than individual inventors.
When it comes to an invention which is more about an idea and less about technology, you don’t need PhDs spending hours reviewing the art let alone attorneys.
In addition, firms charge more money per hour for small clients than those bigger corporate accounts that generate vast volumes. You can’t really blame them as that’s how business works, but it’s unfortunate that there are few options for individuals and small businesses.
There are alternative, smarter ways to work with attorneys thanks to the internet.
It won’t be easy to find them because the internet search usually shows heavily advertised service first, which can be cheap but not necessarily a better deal. At all times, make sure that you’re working with a patent attorney/agent who’s registered with the USPTO.
There’s utility patent, which is basically what you think patent is. And there’s design patent, which is somewhat unpopular but got the attention when Apple sued Samsung for infringing its design patent.
These two types likely cover all your needs. If you want to protect the cosmetic features of your product, consider design patent. For all other cases, you’ll be thinking a utility patent.
To add, if your design feature has a utility in it (i.e. when your new design serves a function), then you will probably have to go with a utility patent.
You found nothing like yours in your Google Patents search, and you might feel ready to patent your new idea. It’s not that simple.
First, your invention should be new in a sense that people don’t know it yet.
Even if nobody really patented an idea, the idea might be known to many as a common sense or to a small number of people known as experts or scholars. It doesn’t matter how many people know it.
When you go into detailed analysis, it gets more complicated. Let’s say your company is the first to sell a mouse pad made of bamboo and you want to patent it.
The bamboo is obviously not a new material; it’s not even a man-made material. Clearly, it’s not something you can consider an invention.
Similarly, a mouse pad is not a new thing. It’s been made of many different materials and widely used in personal computing.
Now, a mouse pad made of bamboo? Let’s further assume nobody on the planet Earth ever made or used a mouse pad made of bamboo. Is it new then?
Unfortunately, it’s not. The law will not only look at the things that already exist but also guess what can be done with existing technology and skills. I mean bamboo is a sturdy and hard material that can be easily shaped into a small plate. The law will likely say that your new idea of making a mouse pad with a bamboo was obvious. Basically it’s saying that “we don’t need an inventor to do that.”
Second, you have to fit your idea into certain categories that can be patented.
The law provides a short list: process, machine, manufacture, or composition of matter. If you think about it, it’s pretty broad. In the above example, we discussed a bamboo mouse pad as a manufacture, which we concluded not patentable.
However, you may have a ground-breaking manufacturing method to process a raw bamboo tree into a large plate that can be easily cut into any shape of mouse pads. Well, that might be a patentable “process”.
We can go further. If you designed and made a machine for the processing of raw bamboo trees, you may patent the machine as long as it satisfies other requirements. As you can guess, inventors often patent a manufacture, the process of making it, and the machine that performs the process at the same time.
Lastly, your idea has to have a purpose.
This is usually not a concern because the law doesn’t ask for a good one. If you can find a single use for your invention, that’ll be fine. The use doesn’t have to be new or better than others. In fact, even if your method of processing bamboo turned out to be too expensive to make economic sense, it still has a utility in the eye of the law.
Maintaining registration calls for both administrative and executive action.
Administratively, you need to file with the USPTO a showing that you’re still using the mark after 5 years of the registration, and every 10 years, you need to file a request for renewal.
On the business side, you must continue using your mark at all times, even after the registration. This requirement is often overlooked because your staff who handles trademark typically has no saying in continuing/discontinuing a product line.
You need to monitor your registration status and enforce your trademark rights yourself.
Trademark Status and Document Retrieval (TSDR) service offered by the USPTO is a good place to start. The USPTO recommends every trademark applicant to check TSDR regularly.
The USPTO does not enforce registered trademarks for the owners. It’s your obligation to monitor infringing activities in the market and take actions to stop them. Often it involves writing a letter to notify the wrongdoer and ask for compliance/compensation, but you may need to bring a lawsuit if there’s a dispute.
Patent clearance search is called a Freedom-To-Operate opinion because it reveals others’ patents that are blocking your way. It requires searching and analyzing patent documents in the country where you do business.
Even if you invent something new, it is often based on other’s previous works.
For example, you get a patent on a new cap design for plastic bottles, which reduces the cost of production. Even though you have rights to the new cap design, someone else might have patent rights to the bottle’s body design. Without the body, you won’t be making a good use of the cap. Furthermore, even if you design an entirely new bottle (both the cap and the body), the method of making bottles out of plastic might have been patented. These are blocking patents because without infringing them you can’t practice your right.
You can search through patent documents via Google Patents (a free service by Google at https://patents.google.com).
Once you identify a potentially blocking patent, the scope of the patent needs to be analyzed.
1. Claims determine the scope.
Patent applicants are required to stipulate in the Claims what exactly their invention is about. All other parts of patent application help you understand the claim.
2. The scope will be construed by the courts.
What the patent owner believes does not matter. Nor does what you or your attorney think matter. When there’s a patent lawsuit, the court may side with either your attorney or your opponent’s attorney.
However, a legal opinion formed by a qualified attorney in your favor is helpful. For example, let’s say someone sued you for patent infringement and is being awarded for damages. If you can prove that you relied on your attorney’s advice that there’s no infringement, you may shield yourself from the penalties for willful infringement (i.e. knowingly violating someone else’s right). The penalties can increase the damages up to three times.
3. Patents do expire, so you should check the dates.
Most patents expire after 20 years from the filing date. So, if you find an old blocking patent, that might be actually a good news. Once the patent expires, you know for sure that’s in the public domain.
Blocking patents bar you from not only selling but also importing.
Often you rely on production facilities overseas and feel that blocking patents are not your problem. But if foreign products infringe U.S. patents, they can’t be imported into the U.S. Of course, the other way around is true.
You can design around, get license, or challenge the patent’s validity.
When there’s a blocking patent, there are still things you can do. You can design around, meaning you find other ways to achieve the same outcome; you can get a license if the patent owner is willing to let you use the invention for a reasonable loyalty; or you can argue before the court that the patent is not valid.
Patent is an expensive but smart way to protect your business.
Getting a patent is not a quick and easy process. It usually takes years of prosecution (though you can claim “patent pending” from the moment you file the application) and thousands of dollars. However, the reward is a government sanctioned monopoly. Yes, MONOPOLY.
Patent is a deal you make with the public.
You discloses something other people don’t know, and in exchange other people can’t use it for a limited time period (about twenty years) unless you allow them. It’s a win-win. You don’t have to worry about someone else stealing your idea, and the others can learn and improve your invention.
It’s not a contract.
Although the exchange of knowledge and a monopoly right is between you and the rest of the society, there’s no contractual relationship between you and the society. Instead, the United States Patent and Trademark Office (“USPTO”) issues a patent to applicants who discloses their knowledge in patent applications which meet certain requirements. Moreover, if someone infringes your patent rights, you don’t go to the USPTO (nor to a law enforcement agency) but to courts.
It is absolutely necessary to find out if there is anyone using your mark prior to your use. A clearance search is often performed through proprietary services, which often search not only state and federal registrations but also common law trademarks. Typically, a better service costs more; but depending on your situation a simple Google search may suffice.
Typically, a clearance search provides lists of all current state, federal, common law trademarks that are identical or similar to your mark. Unless your mark is very unusual, you will face a number of identical and similar trademarks in use. Even if there is an identical trademark registered and used, it does not necessarily mean that you can’t use the mark; however, it is also true that even if there is no identical trademark, you might not be able to use the mark. At the end it all comes down to whether your use of the mark would infringe other trademark owner’s rights.
Getting a trademark, you can either “do it yourself” or hire a professionals. DIY option describes not only filing directly via TEAS at USPTO.gov but also using commercial services under $100.
Let’s compare these two options.
Do it yourself
Professional Help
Mark
Your choice of wording and design
Likely a better wording and design
Registration
online trademark search/registration
via your representative
Cost
USPTO fees + $100 commercial service fees
USPTO fees + up to $2,000 attorney fees + design cost
Trademark registration is not too complicated.
Nonetheless, mistakes can cost your time and money. If you are not going to hire an attorney, you should read and watch everything on USPTO’s Trademark Basics before you proceed. On a side note, even if things go smoothly while registering trademark, lawyers can improve the strength of the registered trademark significantly and designers will give your logo/design a professional look.
USPTO offers an online application form through TEAS (Trademark Electronic Application System).
There are various forms including TEAS plus, TEAS RF (Reduced Fee), and TEAS regular application types. Latter forms are subject to higher fees but offers some flexibility to applicants. Assuming you don’t make any mistake in filling out the form, you can save up to $100 by choosing TEAS plus. TEAS forms are web-based, guided, multi-page forms that anyone can learn the process as-you-go.
There are mainly two types of trademark, a standard one and a stylized one.
A standard one (called a standard character mark) establishes your trademark rights to the written words of the mark whereas a stylized one (called a stylized/design mark) to the expression of the words in a certain way.
For example, “Coca-Cola” is a brand name of a certain soda drink, registered to the Coca-Cola Company. But you more often see the name in a particular style as shown here.
Nowadays, the use of stylized logos and designs is very common because it effectively sets apart the company/brand from competitors’.
A common choice is Standard Character.
Although virtually all companies use at least some design/style elements in their trademark, still most of the companies register their trademark in a standard character format. Why?
They don’t want their trademark right to be limited to a specific design. In fact, if you registered your brand name in a standard character format, any style/design of that registered name can’t be used by your competitors.
Also, once registered as a stylized/design mark you can’t change the design or style of the mark. Companies often update their design and style elements to modernize them.
Thus, it’s is a rule of thumb that a standard character format affords a better protection.
A Styled/Design Mark works a bit differently.
Let’s say IPfever registered a stylized trademark: After a few years, a website devoted to teaching Japanese language and culture dubs itself Japanese Fever, “JP fever” in short, and starts using this logo:.
Do you see any problem? Although they changed a letter, they look too similar. There’s likely an infringement case.
However, if IPfever were registered as standard character, it would’ve been a different story. Because “fever” in Japanese Fever can be considered as a descriptive word for passion and enthusiasm for Japanese culture, it likely has a leeway.
But it should be noted that stylized/design marks have their own limitation. If Japanese Fever , I say this one differs in style so much to escape from a potential trademark infringement claim.
You have to choose, but choose wisely.
You might say you would just register both standard character and design marks. Problem solved? Well, it’s not that simple.
You can’t claim “the coffee house” trademark for your coffee house because that’s what people call any coffee house. It’s reserved for everyone. But you may register this stylized/design mark.
You probably need to disclaim rights to the words, (meaning that others can literally use the same name) but it still protects you from something like this knock-off.
So, figure out what’s the strength and weakness of your mark, and then choose wisely.
When there is problem with your trademark application, the Office will issue an OA. There could be multiple instances of OA per application while many trademarks get registered without any.
Sometimes, a simple change to your application can fix the problem, so the only thing you need to is agreeing with the change. But often you must rebut the rejection with legal arguments. This provides you of an opportunity to clarify and strengthen your application (and the trademark), but a wrong response could render the trademark unenforceable or nominal.
You must understand the reason for rejection clearly and respond to every issue to the full extent. You might find it helpful to review similar OAs and corresponding responses from another applicants on the TSDR (Trademark Status & Document Retrieval), which is open to the public and FREE. Although you can borrow their legal argument and logic, you must apply them to your facts.
Sometimes it’s not a good idea to proceed with responding office actions. Use free consultation to figure out whether it’s a good idea or not. You may also get a rough idea about cost and timeline.
