Main differences between a utility patent and design patent

After receiving a lot of emails asking for more information on design and utility patents, I decided to write a short article which I hope answers some of your questions.

The United States Patent Office offers two main types of patents: utility patents and design patents. If you’re considering patenting your intellectual property, invention, or idea, it’s important to understand the difference between a utility patent and design patent. A utility patent is used to protect the function or goal of an invention, while a design patent is focused more on the method of achieving that goal than the goal, itself.

Utility patents

These are the most common types of patents and, while they’re more expensive than design patents, many people believe they offer better invention protection. Utility patents can provide protection for the function of an invention, as well as similar other variations, such that other competitors who are considering similar products will have a difficult time creating a similar product or invention without infringing on the patent.

Unfortunately, as well as being more expensive, these patents also take longer to procure than design patents. While the patent is in the process of being filed, which is generally a couple of years, a provisional patent can be issued for temporary protection, allowing you to use “Patent pending” when discussing your invention, which offers a very basic, fundamental level of deterrence for competitors.

Design patents

Design patents cover the appearance of a product or the specific design, rather than the function, goal, or utility of an invention. These patents are cheaper and quicker to procure than utility patents, but they do not cover any functional aspects of the invention. It’s also more difficult to patent variations on design than it is to patent variations on function.

Filing for both types at once

It’s possible to have a situation where you’ll want to file one of each type of patent. These situations might be for new inventions that achieve a novel goal by novel means and have a unique design. One relatively famous example where patents of each type were filed for the same invention was for the iPad.

Contact us for more assistance or a consultation on patenting your design or invention.

How to Find a Good Patent Attorney: 5 Tips

You think you’ve created a great product and want to patent it. Going through this process yourself could become very difficult and confusing. You might end up becoming frustrated and giving up on the patent process or even get rejected. Hiring a patent attorney could be the answer, however you want your attorney to effectively guide you through this process. Nothing could be more frustrating than paying an attorney who doesn’t know anymore than you do. Below are 5 tips on how to find a good patent attorney.

Research Do your own research on the patent process beforehand. You won’t be an expert after reading a book or two but you’ll have an idea of what your potential attorneys will be discussing with you. It might help you gauge how well they know what they’re talking about too.

Be Particular – Decide what skills you want your attorney to have. Do you want your attorney to have patent knowledge only? Or knowledge of other intellectual areas in addition to patent knowledge? You may need their assistance with your product after the patent process is complete. Be picky! Chances are you have put a lot of work into this product. Don’t choose an attorney because they are the cheapest or most convenient. Experience and knowledge is important. The patent process can be tricky.

Interview – Many will go to great lengths just to find a good physician or dentist. They’ll spend days, or even weeks, interviewing potential doctors. Do the same when finding a patent attorney. You will be working with this particular individual on something you care about. Ensure your ideas, work ethic, and morals are compatible. Your potential attorney should be willing to understand your product just as much as you do. They shouldn’t be making claims that are obvious about your product. Your product should be presented as unique and specific.

Rejection – Many patents are rejected two or three times before being accepted. Talk about how you and your attorney will make changes to the patent in order to be successful. It’s necessary to have a plan and an attorney who knows how to describe and present your product in the event of failure.

Fees – Obviously when searching for an attorney you’ll consider potential fees. Keep in mind, the patent process costs an average of $5,000. As stated before, don’t choose an attorney because of low costs. The most knowledgeable attorneys might charge accordingly.

Finding the right patent attorney will take work. It doesn’t have to be a painful and daunting process. Follow these 5 tips and you may be happy with your decision. We can also help you find a good attorney. We work with some of the best patent attorneys world wide and can find you a suitable match.

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Top Three Mediums for Marketing Your Invention

If you have a niche product or service, the potential for profits is great. However, simply obtaining a patent doesn’t guarantee sales. In fact, less than two percent of patents issued ever made real money, according to idearights.com.  How can you effectively market your innovative idea? Consider the following top three mediums for marketing your invention.

  1. Online Marketing. Think beyond just setting up a basic website. Draft a complete Internet marketing strategy that includes search engine optimization, social media and e-mail.  Think strategically about your website. Design content that will attract potential customers, corporate partners and search engines. Have a “conversion” strategy and implement a method to track it. Consider Pay-Per-Click advertising to quickly generate traffic. Google AdWords and Microsoft adCenter are popular choices. Target specific social media sites and actively participate. Remember, an abandoned social media page can hurt your reputation. Lastly, integrate your various strategies. Have “like” buttons on your blog pages, so your followers can post links to your website from their social media pages. Post links to YouTube video from your social media page.
  2. Test the Market with a Preexisting Platform.  An effective strategy to get your product noticed is to test its marketability. Doing this will get you noticed and help you determine how “sellable” your product is. Craigslist and eBay are probably the easiest and fastest ways to get your products listed and attract potential customers. You can also set up a “store” through sites like Cafepress that allow more customization in the layout. You’ll still have to drive traffic to your “store,” but the e-commerce infrastructure will already be in place.
  3. Find a Partner. The easiest way to market your invention is to license it to an established company. They will facilitate marketing, production and sales, and you’ll get a percentage of the profits. Licensing deals vary, but generally the inventor gets to keep all the patents and rights. Search online for invention contests. Many companies actively seek new inventions to sell. Work your local network. Join business clubs, Chambers of Commerce or other organizations that will help you make the right connections. Cold-calling is sometimes effective, but having a personal connection can go a long way in getting your foot in the door.

When you do get to pitch your idea, be sure you make a good impression with professional designs. Contact us for your patent drafting needs.

Do you know the difference between a utility patent and design patent?

One of the common questions asked by those looking to patent an idea or invention is: What is the difference between a utility patent and design patent? It is a good question and the answer is an important one to understand for all patent or would be patent holders.

First, it’s helpful to know the definitions of both types of patents. A utility patent is defined as an invention that is useful or that has beneficial or practical utility. In other words, it must have a use or function in the real world. Some examples of this might be machines or tools, whether they are mechanical, hand-operated or electrical. This also includes functional improvements on machines or processes.

So what is a design patent? A design patent is anything that improves the style or fashion of an already existing invention. That is to say anything that doesn’t change or improve the function of an object, but does change the look or style. Some examples of this might be a design that simply changes the shape of an existing object. This also includes non-obvious ornamental designs.

How do you tell the difference when considering which patent is right for you? The following are a set of good questions to ask yourself.

  • Are you trying to patent the way something looks, or the way something is used?
  • Does your invention already exist in the marketplace in some form? If so, is your improvement one of usability?
  • If your improvement is not one of usability, does it improve the design and look of the invention?

Remember, some inventions may qualify for both types of patents. You can always contact us for more information. We can put you in touch with an attorney and help to get you started on the right path. We work closely with some of the best IP law firms in the United States and internationally.

Finally, a good short hand way of remembering the difference between the two types of patents is to think of eye glasses. If you had invented bifocal lenses, your invention would require a utility patent, since these lenses change the way eyeglasses function. However, if you had invented the Coke-bottle style of eyeglass frames, that would require a design patent, as they change the way glasses look but do not affect their usability.

How to protect your idea or invention

How to protect your idea or invention from someone else stealing it?  Oh, sure, you only told a few people about it…(just friends and a couple of co-workers and the mailman?).  You’ve no need to worry.  None of those people would do such a thing.  These are nice upstanding citizens! Besides, you thought of it first. Everyone knows it.

Well, here’s some news big dreamer, there very well could be some people on this earth who have more drive, albeit evil thoughts, than you!  As brilliant as you are, haven’t you heard the old saw, “The early bird takes the worm?”  You certainly would not be the type to steal another person’s idea.  Your mother taught you better!

In the face of greed and opportunity, some people will not think twice about stealing your idea.  If they act nonchalant when you tell them, don’t be surprised what can happen after they get home and get on the phone to their attorney brother in law who knows someone who knows someone.

So just keep talking about your great idea.  Feel around to see what people think.  Make a homemade prototype in your basement and see what the mailman thinks.  Yup…keep talking and doing absolutely nothing about actually seeing your brilliant idea through.

What you don’t know is that the mailman is tired of delivering mail and his feet hurt cause he’s got bunions.  After he patent’s his idea (your idea), maybe he’ll send you a letter from Hawaii complaining about sunburn and weak drinks.  In the meantime you can jump around all you want screaming that someone stole your idea, and get a really good lawyer (not your brother-in-law) who can hopefully prove it.

Contact us instead of spouting off your idea to everyone!  Try to get your invention off the ground and patented properly.  Sure, most of your friends are just like you.  They, too, will think you have a great idea and wish they would have thought of it. Most of these people though, are too busy (like you?) to go off and try to patent your idea before you ever will…..or would they?  Take your rickety patent drawing to us, and we will take your idea, and put it right into your hands. Then, someday soon, you can go right to the mailbox and start picking up checks.

USPTO to Update Rules of Professional Conduct

USPTO to Update Professional Conduct Rules

New rules will correspond to the ABA and most state bar requirements

WASHINGTON — The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced last week its proposal to update the USPTO Code of Professional Responsibility to conform to the Model Rules of Professional Conduct of the American Bar Association (ABA), versions of which have been adopted by 49 states and the District of Columbia.

Specifically, the proposed rules will streamline practitioners’ professional responsibility obligations, bringing USPTO obligations in line with most practitioners’ state bar requirements. The package also proposes to eliminate the annual practitioner maintenance fee.

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To get an idea of the proposed changes, view this comparison chart of the ABA Model Rules of Professional Conduct and the proposed USPTO Rules of Professional Conduct.  More information regarding the package is located on the USPTO’s website at: www.uspto.gov/ip/boards/oed/ethics.jsp.

The USPTO is seeking public comments on the proposal for a period of 60 days, ending December 17, 2012. This proposed rule package adopts most ABA provisions wholesale or with minor revisions and codifies many professional responsibility obligations that already apply to the practice of law.

The USPTO requests that comments be sent either by email to:

or by regular mail to:

  • Mail Stop OED-Ethics Rules, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, marked to the attention of William R. Covey, Deputy General Counsel for Enrollment and Discipline and Director of the Office of Enrollment and Discipline.

Cooperative Patent Classification System Published by USPTO and EPO

Far in advance of the estimated January 1st 2013 launch, the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO) recently published a new classification system meant to speed the patent granting process for applicants to both Offices.

The Cooperative Patent Classification (CPC) system and finalized CPC definitions are now available. The CPC is a joint USPTO-EPO project aimed at developing a common classification system for technical documents in particular patent publications, which will be used by both offices in the patent granting process.

The CPC system, which includes approximately 250,000 classification symbols based on the International Patent Classification (IPC) system, will enable users to conduct efficient prior art searches and incorporate the best classification practices of both the U.S. and European systems. It will also enhance efficiency through work-sharing initiatives designed to reduce unnecessary duplication of work.

The CPC definitions will be available for every CPC subclass and contain a description of the technical subject matter covered in the subclass. Eventually, each CPC subclass will have a corresponding CPC definition that will be continuously maintained. The CPC-to-IPC concordance will help users find the relevant IPC area on which the CPC is based.

Detailed information about the new classification system, including downloadable sections, CPC definitions and concordances, can be found at the official CPC website.

 

U.S. Patent and Trademark Office Seeks Public Comment on Proposed Fee Decrease

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced in September that it is taking further steps to implement the most significant reform of the U.S. patent system in more than a century, and is asking the public for comments. 

The Office published a Notice of Proposed Rulemaking (NPRM) in the Federal Register on Thursday, September 6, 2012, seeking public input on proposed patent fees, including reductions to fees for new procedures and programs created by the broadly bipartisan Leahy-Smith America Invents Act (AIA) that allow robust reviews of issued patents, and provides discounts to individual inventors and small businesses.

Fees are currently set by statute. The AIA directed the USPTO to set these fees on a cost-recovery basis and to seek public and stakeholder input in setting those fees, a change widely supported by businesses, entrepreneurs, and educational institutions.

The proposed fees are at least 22 percent lower for a routine patent process—i.e., filing, search, examination, publication, and issue fees—than the current fee schedule. The current proposed fees also are lower than those originally proposed by the USPTO in February 2012. The Office acted on extensive public feedback solicited in writing and at public hearings held by the Patent Public Advisory Committee in Alexandria, Virginia, and Sunnyvale, California.

With the publication of the NPRM, the USPTO opened a 60-day comment period (through November 6th, 2012) in which the public can provide input on the latest proposal. Following the comment period, the Office will prepare the final fee-setting rule, which would go into effect no less than 45 days after it is published in the Federal Register. Further information about the NPRM for proposed fees may be found at: http://www.uspto.gov/aia_implementation/Proposed_Fee_Schedule.pdf.

The proposed fees continue to keep the cost of entry into the patent system low, making it easier for innovators to acquire venture capital, begin hiring, and moving their goods and services to market. The proposed fees also will enable the USPTO to implement a discounted fee structure that provides 75% savings on many patent fees for micro entities, primarily individual inventors and small entrepreneurial ventures. Also included in the proposed fees is an expansion of the existing 50% discount for small entities.

The AIA granted the Office fee-setting authority in order to give it the ability to set fees that reflect the costs of the services it provides, while ensuring it has the financial resources needed to reduce the backlog of unreviewed patent applications, reduce patent pendency, and perform its core missions efficiently. This new authority was widely supported across the business, innovation, and education communities.

New rules and procedures mandated under the AIA went into effect on September 16, 2012, including three new administrative trial processes. Under the AIA, those reviews must be completed by the Patent Trial and Appeal Board (PTAB) within one year of filing. The proposed fees introduced in the NPRM reduce the cost recovery fee amounts that were effective on September 16, 2012.

The public is welcome to review and provide comments to the USPTO regarding these proposed fee schedule changes.

The AIA will hopefully restore the U.S. to its position as the global leader in intellectual property, empowering businesses large and small to enter the global market with innovative goods and services that will create U.S. jobs, increase U.S. exports, and grow the U.S. economy.

Will the 2012 SHIELD Act STOP the Patent Trolls?

Patent trolls, technically referred to as non-practicing entities (NPEs), are people who file outrageous patent lawsuits that often threaten the viability of the firms they attack.  Patent trolls are major thorns for America’s small tech companies, and combined to cost some of those companies over $29 Billion dollars in 2011 alone.

One Oregon Democrat, Representative Peter DeFazio decided to bring this costly and underhanded matter to the attention of Congress. In late July, DeFazio and Representative Jason Chaffetz (R-Utah) introduced legislation into the U.S. House of Representatives called the Saving High-tech Innovators from Egregious Legal Disputes (SHIELD) Act [PDF].

The bill is designed to discourage NPEs from filing frivolous lawsuits by requiring the Patent Troll to pay the defendants’ legal costs if their suit is unsuccessful.  The key language of the bill seeks “To amend chapter 29 of title 35, United States Code, to provide for the recovery of computer hardware and software patent litigation costs in cases where the court finds the claimant did not have a reasonable likelihood of succeeding, and for other purposes.

Why is this helpful?  Julie Samuels, an attorney who focuses on intellectual property issues at the nonprofit Electronic Frontier Foundation explained that, “Patent litigation has been called ‘the sport of kings’ because of the high cost.  It can cost tens of millions of dollars to defend a suit…while big companies might be able to afford the fees, smaller companies can’t and are left having to pay up and settle.”

Hopefully the 2012 SHIELD Act will turn the thorn on Patent Trolls for good. Rep. Chaffetz said, “The SHIELD Act ensures that American tech companies can continue to create jobs rather than waste resources on fending off frivolous lawsuits.”

Patent Protection and Sales Bans: Does the Consumer Lose Out?

A company has the right to protect its innovation through the patent application system and rigorously defend any infringement through patent prosecution, but is there a gray area that jeopardizes a consumer’s right to a competitive market?

 

Take the recent litigation by Apple vs. Samsung  into account, where Apple alleged that Samsung’s Galaxy Note Tablet contains their technology and styling, and you could find an argument for consumer choice. When technological advances create a situation where the consumer market demands a synchronized approach to product usability, is it fair that an ongoing prosecution can effectively remove a brand from the market by stopping sales?

 

In this fast-paced world, is it viable to expect a consumer to spend days relearning a completely different user interface every time they happen to change brands? With the current fines levied on Samsung, there’s no doubt that Apple has had prior cause for complaint to protect its patents, but how will ongoing litigation effect consumer choice if a sales halt is called?

 

What may be the biggest cause for consumer alarm is the idea of a product monopoly, which could create elevated prices in the market. Patent protection and prosecution, with competitive consumer choice in mind, can therefore become a minefield for any company with a consumer-focused public image to maintain.

 

In the technology field, patent prosecution is widespread, so it is essential that patent designs are detailed and all-encompassing to create a clear route to prosecution should an infringement occur. Whether the route for prosecution should also entail a sales ban is something that savvy inventors and businesses need to discuss with their patent attorneys going forward in this consumer-lead market.