Some people mistake a patent as a comprehensive protection for a certain idea or product. Well, a smartphone is said to be covered by 250,000 patents. It should tell you how narrow a patent can be.
Does that mean it is easy to get patent?
For a surprise to someone, the answer is “yes,” but I didn’t say it’s cheap.
For a product development, creative steps are essential even if you are imitating another product. You don’t know how they built it, so you re-create the manufacturing steps after reverse-engineering. In so doing, you’ll have to go through trials and errors, and then you end up with a better, or sometimes worse, article.
Well, if the difference is on the better side, you might want to get it patented. Even if it’s on the worse side, you can still get a patent. I know it goes against your intuition, but legally speaking, “utility” means that it has a use, not necessarily a beneficial one.
So, a minor tweak in manufacturing process and a tiny new feature in your product can be patented.
Why then, do people speak so highly of patent?
To get a patent, you will need help from patent professionals. And they are expensive.
While it is easy to say that patent grants you exclusive rights in certain steps or features, disputes regarding the steps and features will be always very technical and to the minute details.
A patent has to be very clear as to what extent the patent owner has exclusive rights. And for that, patent law has developed in a way that having a law degree will not quite make you cut out to be a patent practitioner. An attorney with an engineering degree can sit for a patent bar administered by the United States Patent and Trademark Office, which has notoriously low pass rates. The result: it costs many thousands, even up to hundreds of thousands, of dollars to secure a patent.
It is not to say there is always positive correlation between cost and value. But, in reality, you wouldn’t invest in something unless it justifies the cost. Issued patents are there because at least someone believed the value would exceed the cost.
How do you measure the value of a patent?
There are many factors including the size of potential market and consumer demand, but most patent professionals agree that it essentially depends on how difficult it is to “design around.”
Let’s say you make a new product that goes viral. Consumer demand skyrockets, and you have legally sanctioned monopoly, assuming you got the patent. Your competitors would look at your product, and the first thing they would think about is how to make a similar item that is not infringing your patent right.
We call it designing around a patent. If your competitors can easily design around your patent, the value of your patent is, of course, not so much.
Patent practitioner tries to make your patent hard to design around.
To get a patent, you will need to explain your tech to the extent anyone has ordinary skill in the art can reproduce the tech. Further, you will need to claim what exactly is the scope of your patent right.
The scope sets the boundary of your patent right, so it tells others if their products would infringe your patent. Further, others will try to find out if they could design around your patent.
It is a critical aspect of patent prosecution because you, as an inventor, can claim the boundary of patent right.
Of course, you have to persuade the USPTO, or the patent examiner, that your claim is not overreaching. Overreaching patent scope might unjustifiably call a common practice in the industry patent infringement. So, when you claim broadly, the USPTO will be reluctant to grant a patent.
Last words
So, the real question is if your invention would make a “good” patent that is worth of your money.
Patent protects inventor’s exclusive right to an invention, but at the same time it aims to promote further advancement of the same technology.
These are conflicting goals for which patent provides a comprehensive exclusivity that is also clearly defined.
If you are considering patenting your invention, you should first understand the limitations which define the scope of your patent right.
Patent limitations
It is often said that patent protects an idea or more specifically a product. However, technically, a patent is a document that claims rights to a certain combination of characteristics included within the idea or product.
Let me illustrate with a hypothetical whitening cosmetic product. In your patent, you claim rights to a product
that includes whitening ingredient A and
moisturizing ingredient B
in a solution.
Anything that includes all three of limitations above can infringe the patent unless the patent owner allows it.
I said “all three”, so if one sells a product containing ingredients A and B but in a solid form instead of a solution, your patent can’t stop it.
Overcoming limitations
To avoid a situation where your right is limited in a way that can be easily designed around, your claims need to be as less limited as possible.
For example, you can claim rights to a product
that includes whitening ingredient A and
moisturizing ingredient B.
This can protect anything that contains A and B at the same time. However, on the other hand, if there was anything that contains A and B at the same time before your invention, your invention is no longer “new”, which is a requirement to get patented.
Not convinced? Let’s say your ingredient A is extracted from apple and ingredient B is glycerin. You can easily find a beauty tip suggesting an addition of glycerin to apple juice for a homemade facial mask.
Hence, in all likelihood, you will claim something like
a solution
that contains no less than 0.2% of whitening ingredient A
and no more than 5% of moisturizing ingredient B.
Well, let’s say in the nature you will not find an apple that has so much enriched with the A.
Design around
Now you have clearly defined patent claims. It’s time for your competitors to find a way around it. We call it a design-around.
For example, your competitor can market a product that contains 0.19% of whitening ingredient A. As explained above, this does not infringe your patent.
Patent sounds pretty useless now? Well, not so fast. There should be an assumption that if A is less than 0.2%, the product will not have adequate potency to brighten skin complexion.
The same goes to ingredient B. You should set the numbers in a way that, for example, if you have more than 5% of B, the solution will be too sticky to be easily applied on skin.
Conclusion
Getting a patent is easier than you think, but getting a strong patent is harder than you think.
In fact, when you apply for a patent, the patent examiner at USPTO will find something like homemade facial mask to say your invention is not new, during a process called Office Action. You can overcome the argument by adding limitations such as 0.2% and 5%.
In so doing, you may end up with a weak patent unless you anticipate ways to design around and make it harder for your competitors.
I help many clients who received cease and desist letters stating their products infringe some patent rights. By the time they come to me, it’s about ruling out frivolous claims, mitigating damages if not frivolous, and reducing costs related to settlement and litigation.
What if you can avoid all those by doing these simple things before launching your product?
You will hear many patent practitioners tell you against DIY if not all. And there are many good reasons. However, if you are in a situation where you simply cannot justify spending legal fees, you should be able to file an application yourself if you have enough time.
First of all, what is patent?
Patent is a right given to an inventor of a thing (or a way to do things). When a patent is granted to the inventor, then, he or she can legally exclude others from making, using, or selling the thing (or the way to do things).
Patent has been there for the entire history of the U.S. as it is written in the U.S. Constitution:
[The Congress shall have power to] promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.
U.S. Constitution Section I Clause 8
As such, it is fairly well defined by the statutes and regulations as well as case laws, which means businesses can rely on them more than anything when it comes to guarding them against copycats.
When should you get one?
Patent recognizes not only the first person who thought of it, called the inventor, but also the first person who brought it to the patent office. In other words, you want to be the person who first filed a patent application. If two people thought of the same thing, the first one to file a patent application will likely get patent right.
If you are certain that no one will think of the same thing, you can sit on it until the right time to file. In this case, it is important not to disclose it to anyone, including by using it in the public.
If you have to disclose it or publish it or others will soon catch up, you’d better hurry up.
Patent is an exchange.
The government essentially let you have a monopoly for a limited time when it grants a patent to you. Instead, you will disclose your invention to the extent that other people with ordinary skills in the same field can understand and use your invention.
For a limited time period, which is usually 20 years, you will enjoy the government sanctioned monopoly, and after that, it should become a level playing field.
This allows many others to continue to make improvements based on what you have made. So, the government can “promote the progress of science and useful arts” as written in the Constitution.
Now, how to get a patent?
Getting a patent is a burdensome process incurring significant monetary expenses. Your application is unlikely to get examined in a few months (unless you get prioritized examination), and most applications stay untouched for more than a year. Thus, the patent law allows you to claim “patent pending” status to warn others against infringement of your potential right.
You probably have seen “patent pending” mark somewhere. In fact, it is a great marketing phrase because many people associate patent with innovation and being desirable.
The patent pending status can be obtained when a patent application is filed, including provisional applications. What is provisional application? Essentially, they simply claim that you have invented a thing. Your provisional application will not be examined by the USPTO. Instead, a non-provisional application should be filed within a year from the provisional filing date if you want to get it examined and thereafter potentially patented.
A provisional application is not only a great first step toward getting your invention patented but also a great money saving option. For one, you do not need legal expertise to file a provisional because it will not be examined (although you need to be very careful about what is included in your provisional). When a year has passed from filing a provisional, you can then reevaluate your options, including entirely dropping the plan to patent it. If you do not file a follow-up non-provisional, the provisional application will never see the sunlight (i.e. will not get published), so you do not need to worry about premature disclosure to the public.
From here on, we will focus on filing a provisional patent application because for non-provisional, you definitely need an expertise, and if you already have one, you are certainly not the target audience of this article.
How to file a provisional patent application
As a provisional application is never examined, you only need to file literally any writing. Your experiment note or a journal entry about your invention can work for this purposes.
However, when the serious time comes and you file a non-provisional, the examiner will review your provisional and see if there is any new matters introduced in the non-provisional. If you want to claim the early filing date (of provisional), there should be no new matter.
New matters are often associated with improvements and undisclosed specifics of the invention, but oftentimes, the examiner will simply reject anything that was not in the original provisional application.
Therefore, although provisional applications need not to be perfect, they need to be thorough. To be as thorough as possible, you should definitely check out how issued patents look like.
Find a model patent (preferably an issued patent)
I suggest you use Google Patents to find a patent that was examined and granted (i.e. an “issued” patent). All non-provisional applications get “published” at some point, but not all of them get patented.
Preferably, you want one in the same field as your invention. For example, if you have invented a better rocking chair, you can search “rocking chair” in Google Patents. Then, choose “Patent Office—US” and “language—English”.
From the search result, “Gliding rocking chair and ottoman” as shown below was filed relatively recently (in 2010).
Now you see “Download PDF” button in the blue box. This allows you to download a full image of the published application. As you can see on the “Status” line, this application was never patented but “[a]bandoned”.
Well, many patent applications get abandoned but all non-provision applications are published. So, you may want to see only patented cases. Go back to the search result and choose “Status—Grant”.
Now, I found “Rope rocking chair” filed in 2016.
Required parts of a provisional application
Download PDF and you’ll find the followings:
Abstract
This part is a summary of your invention, but it is not required in provisional.
Drawings
Not always required, but if your invention is a physical thing, you’d better have them prepared. A picture can say more than a hundred words. Also, if you don’t have a drawing in a provisional application, getting drawing included in a follow-up non-provisional can be tough.
If you have 3D CAD image, you want to produce more than one view. If you absolutely can’t draw, take a picture of your prototype and make it black-and-white as a last resort.
Specifications
Find the following headings: Technical Field, Background, Summary, Description of Drawings, and Detailed Description. You need all of them.
Write as if you are explaining your invention to your peers, so they can make it themselves. Not the investors or customers. This is important.
Claims
You won’t need claims in your provisional.
File the application with the USPTO
Everything can be done online. The USPTO has utilized electronic documents for a long time, and although its Electronic Filing System may look very outdated, it works alright.
Note, the system is not fool-proof, meaning you can submit an incomplete application without any warning. On the other hand, it will check your electronic files for compatibility.
Access the EFS using the following link. You can use it as unregistered eFiler without registration.
Simply write down your name and email address, then choose “New application/proceeding” as below.
Provisional is only available for utility patent, so choose “Utility”.
Utility patent is what we usually think a patent is. On the other hand, design patent protect non-functional ornamental features. Learn more about design patent here.
Logged-in Page
The first step is providing a set of basic information, collectively called “Application Data”. This is actually very important, so be careful and double check. Also, Application Data Sheet is a required part of any patent application.
If you choose Web-based ADS, you don’t need to get a PDF form elsewhere. When you select Web-based ADS, the page will be populated with additional boxes.
The following boxes must be filled.
Inventor information
It’s about who invented the invention. Easy.
Next, your contact info.
Check “An Address is being provided for the correspondence information of this application” to see the all blanks. This form is interactive, so you often need to check some items to see the entire form.
Because you are probably an inventor/applicant, you will write down all the same information about yourself in the corresponding fields. By the way, if you want your company to have the patent right, you can simply substitute your company for the applicant.
Next, you will provide information about your invention.
Just name your invention in a few words. As you’ve seen, “Rope Rocking Chair” was fine.
You probably want to check “Small Entity Status Claimed”. You will get 50% discount on your government fees, if you are not a company with 500 employees or more.
If you’re gross income is less than a certain limit specified on Micro Entity Status Gross Income Limit | USPTO, you may qualify for Micro Entity Status, which gives additional 50% discount. Eventually, you will pay only 25% of the standard government fees.
To get Micro Entity discount, you need to upload an additional form called “Certification of Micro Entity Status”. You can find a current form on Forms For Patent Applications Filed On Or After September 16, 2012 | USPTO. You can upload the form with your application parts as explained in the later part of this article.
Skip some boxes, and you will find Applicant Information. This only applies if you are not filing the application in your (inventor’s) name. This happens when you want your company to be the patent owner as an assignee of your right to the patent as the inventor. Check “assignee” if you fill out this part.
Now, sign the form.
Two slashes (“/”) are required parts of your signature. Do not forget them.
If you don’t fill out every asterisked (*) blank, you can’t save and continue. See if you forgot one in case of some error messages.
Upload your application
After hitting “Continue” on your ADS page, you can see the progress of your application on the tab on the top, moved from “Application Data” to “Attach Document”.
Find “Choose File” button. You can access files on your computer from here. After selecting a computer file, you can choose Category and Document Description accordingly. To add more files, you hit “Add File” button.
You can have all your parts in one pdf file. It actually asks if your document contains multiple documents. If you hit “yes”, you can set page ranges for individual categories for each part of your application.
Required parts (find SB/16 form in the link provided above)
Optional part (if you qualify Micro Entity Status)
Entity Status Correspondence—Certification of Micro Entity (SB/15)
Your “Drawings” and “Specification” are your word documents printed or saved in PDF form. You should prepare these in the same format and style as the model patent you found in Google Patents.
Make sure you select correct “Category” and “Document Description”, and hit “upload and validate”. If there is no error in the files, you can hit “review”, then “continue”.
Your progress bar will move to Calculate Fees tab.
Calculate fees and make payment
Make sure you select Small Entity or Micro Entity Status, whichever is appropriate for you. The selection is not automatic.
Once you choose your status for the fee calculation, you will choose “provisional” as shown below.
Now, all you have to do is make payment online. Although you can submit the documents without paying right now. Your application is officially filed only when the correct fees are paid.
Payment process is just like any online shopping.
After you make payment, make sure to view and save your filing receipt using the button available on the right side of the screen. The information available on the filing receipt will be used to communicate with the USPTO regarding your application in the future.
Obviousness is a very common reason for rejection.
A grant of patent without a single rejection is quite uncommon. One of the reason is that most applicants want to claim broadest possible for the greatest protection of law.
Broadening the scope of claims.
To maximize the scope of your claim, you don’t want to include unnecessary details in your claim. Let’s take a look at an example (from a real patent). You don’t have to read it through, just scheme.
[an excerpt from US8143982B1, bold added]
always easier to understand the claims with drawings
1. An accessory unit, comprising:
a hinge span, the hinge span including a first magnetic element suitable for magnetic attachment to a host unit having a display; and
a flap portion pivotally connected to the hinge span, the flap portion comprising:
a plurality of segments all but one of which are substantially the same size and wherein one segment is wider than the other segments, wherein each segment includes a pocket that is about the same size as the corresponding segment,
a rigid insert incorporated into each pocket, the rigid insert providing support for the associated segment, and
a folding region between each of the segments arranged to allow the plurality of segments to fold with respect to each other, wherein a first segment is located at a first end of the flap at the hinge span and includes a magnetically attractable element and wherein a second segment is located at a second end of the flap opposite the first end and includes a plurality of magnets, wherein in a first folded configuration the flap portion forms a triangular structure when the first and second segments are folded one atop the other such that at least one of the magnets in the second segment magnetically attract the magnetically attractable element in the first segment, wherein the first and second segments that are folded one atop the other and magnetically attached to each other form one side of the triangular structure that is about equal in width to a second side of the triangular structure each of which is narrower than a third side of the triangular structure.
[end of claim 1]
What’s claimed?
By looking only at highlighted words, you can figure out that it has two main components, a hinge span and a flap portion, and the flap portion has three sub-components, a plurality of segments,a rigid insert for each segment, and a folding region between each of the segments.
What do you make out of it? Well, it’s iPad Smart Cover by Apple.
Let’s look into the details.
A hinge span is described as follows: including a first magnetic element suitable for magnetic attachment to a host unit having a display.
It doesn’t say a magnet or a tablet PC. Instead, it says a magnetic element suitable for magnetic attachment and a unit having a display, respectively. If it said a magnet, someone can make a cover with a lodestone instead of a magnet and avoid infringement. The same thing goes to the tablet PC.
But, why not just an element suitable for attachment? I think that would be the track which leads to the obviousness trap. Granted it would expand the scope, it also eliminates an outstanding element from the invention. Every cover has some element for attachment.
On a side note,
what about a unit having a display? Why not a unit having a flat surface? Well, Apple is an electronics company, and it probably wouldn’t make a cover for your photo frame. In that sense, a display pretty much is everything that needs to be covered in Apple’s patent.
Infusing non-obvious elements into claims.
Skipping forward to the bulky section, a folding region, can you guess why in the world it is so long? Well, you guess it’s important, right?
This is the section that makes this cover distinct from any other cover design within people’s mind (at the time of invention, of course). It describes how the segments of a cover fold and magnetically bind together to form a rigid stand that can support a host unit. So, you have to describe it fully.
By the way, a cover that folds into a stand is not an invention by Apple. Search Google Patents “US8960421B1” and you will see a prior patent filed by Incase Designs Corp. that has almost identical folding functionality.
Let’s take a look at a claim by Incase Designs [excerpt from US8960421B1].
1. A cover for an electronic device comprising:
a rectangular front cover comprising first, second, and third panels between a first edge and second edge of the front cover, wherein the first panel is closer to the second edge than the second and third panels, the second panel is between the first and third panels, and the third panel is adjacent the second panel,
between the first and second panels is a first hinge, and
between the second and third panels is a second hinge;
a back cover, coupled to the front cover, which will retain the electronic device in the case; and
[It goes on, but let’s stop here.]
So, a flap portion of Apple patent can’t overcome an obviousness rejection by itself despite the elaborated manner of how segments fold and get attracted together to form a stand; that’s where the magnetic element for attachment comes into play. This magnetic element obsolete a back cover, which is listed in the Incase Designs’ patent claim.
Here’s an important question: if Incase Designs knew a way to make a cover without a back cover, would its claim include the back cover element in the claims?
The fact that Incase Design included the back cover element in the claim supports the non-obviousness of replacing a back cover with a magnetic element.
You can read more about this in “Including an unnecessary element in the claims.”
How to deal with an obviousness rejection.
After a careful thought and drafting an application, you can still get a rejection based on obviousness. In this case, you can try again, or get help from patent attorneys.
Patent Specification in your application is the body of your application.
Your patent claims will be read in the context of the specification. Therefore, the specification should include all the information necessary to figure out what you claimed in your patent claim(s). Roughly speaking, it should be an all-inclusive manual for your invention.
It’s part of the deal you’re making with the public.
You’re disclosing your invention to the public, and in exchange you’ll be granted a monopoly for a limited time. To ensure fairness in this deal, you’re required to fully and comprehensibly disclose your invention without hiding anything.
You should focus on making the invention available to the public.
If you want to hide something from the public, you’re free to do so by opting out from disclosing it, in which case you shouldn’t claim it either. However, you shouldn’t attempt to hide even a minute detail of your claimed invention because it can invalidate your patent retrospectively.
For example, let’s say you know two ways to make your invention. You know one works better than the other, but you don’t want people know about the better one. If you disclose the other one only, the patent will be held invalid.
If you don’t claim it now, you may lose it forever.
You may be tempted to include everything you know in your patent application because it would make sure you disclose adequately. Be careful when you include something in your disclosure which are not claimed. Filing a patent application is considered a publication. If you publish something, you will have a year to file a patent application for it. After that, you can’t patent it.
There’s much more.
Although you can learn a lot from the patent applications you found during your clearance search, it’s still not a perfect guide for your specification. To understand your claim, one must read the specification. For this reason, asking an attorney who reviewed your claim(s) to review your specification could be a lot less time-consuming than you think. You don’t need to pay for the separate availability retainer in that case. Just talk to the lawyer who reviewed your claim(s).
Patent claim in your application defines your invention.
And it will determine the scope of your legal rights. In other words, it will tell the others what can be done and cannot be done without infringing your patent right.
Read the claims written by professionals.
By the time you start drafting your application, you probably read at least a number of patent applications. And if you did with care, you would’ve noticed the peculiar but consistent writing style. In fact, you must follow a specific set of rules created by the USPTO when writing claims.
Pay attention to details including punctuation and spacing.
You shouldn’t worry about plagiarism. Use the wordings and grammar (including all formalities) that you see in the patent applications that are granted. Don’t be creative and get rejected.
What about the substance?
Patent applications often have multiple claims, and a claim likely has a multiple components.
The wordier the better?
No. If you include a non-essential component in your patent claim, your competitor can avoid infringement by making a product without the component.
Then, as little as possible?
That’s another no. If there is an alternative material or device which you left out, it could lead to an easy design-around for your competitor.
There’s much more.
To be honest, it is not an easy task to write a good claim. For example, patent law distinguishes “comprising” and “consisting.” If you say your fuel additive consists of chemical A and chemical B, you are telling that there’s no other chemical than A and B. “Comprising” is, on the other hand, open-ended.
Should you know all these technicalities? Well, if you want to become a patent practitioner. Otherwise, it’s more efficient to have a patent practitioner take a look at what you wrote. If your invention is not too complicated, the review shouldn’t take too long.
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.
