What’s a Non Provisional Patent?

by Chris Peil on March 31, 2015

CopyrightDespite having “patent” in the title, a provisional patent does not allow you to obtain one. It does not protect your invention from infringement and should only be used when your invention is first on the drawing table. A provisional patent merely files your invention so that you may claim “patent pending” rather than putting your idea in line to be examined.

Filing a non-provisional patent application is the only way to put your invention in the que to be examined for a patent. An exhaustive formula for your idea is required — ambiguity in any section of the non provisional patent application forces you to give up certain patent rights. Meticulous completion of the following sections is required for a non-provisional patent application.

Title the Invention

In your patent application, you will need to provide a title that is concise, descriptive, and definite. Your title will be associated with your invention and used to encompass the substance of the idea.

Federal Sponsorship

If your project has federal sponsorship, reveal the contractual rights by the United States government.

Disclose Related Applications

If you have previously filed patent applications related to your idea, you will need to reference them. This is your only chance to claim which patents have priority.

Background 

In this section, you will essentially be proving that there is a need in the respective art for your invention. Describe the art to which your idea pertains, identify what the art is lacking, and demonstrate the importance of your invention in improving the art.

Brief Summary

In your summary of the invention, you will describe the general essence of what your invention can do. You will describe what you think the idea’s unique qualities are and how it will solve the problems described in the background section.

Detailed Description

In this section, your description should be detailed enough for a reasonably educated person to be able to replicate your invention from scratch, and be able to use it. An acceptable and definite description will present elements including the invention’s structure, how components are connected, precise directions for making the invention, and what materials can be used. It should include the invention’s components and their structures. Be sure to also describe any variations of the invention and ways it can be produced.

Later adding details to your invention will require filing another application, severely delaying patenting (Source: http://www.ipwatchdog.com/2014/05/10/completely-describe-your-invention-in-a-patent-application/id=49497/). Failure to express all aspects of the invention can get your application rejected or later provide loopholes for infringement.

Drawing and Descriptions

Even if you patent does not require drawings, providing them is invaluable. Include drawings on the finished product in addition to showing how the individual pieces fit together, enlisting the help of a qualified patent illustrator. Include concise yet descriptive labels with the drawings.

Claims

In your claims section, you will describe the intellectual property you are striving to take ownership of. If you ultimately obtain a patent for your invention, the United States Patent Office will decide your patent rights.

Abstract of the Disclosure

In this section, you will provide a brief description of your invention for public knowledge (Source: http://www.neustel.com/patent-application/patent-application-parts.aspx).

Oath or Declaration

You will sign an oath declaring that you believe you are the first inventor and that the content provided in the application is original.

What Type of Patent Should You Choose?

by Chris Peil on March 13, 2015

Securing the rights to an invention or intellectual property means filing for a patent, but not everyone knows that there are currently six different kinds of patents available from the U.S. Patent and Trademark Office, or USPTO (source: uspto.gov). The two main patents granted by the USPTO are design patents and utility patents. Most people who apply for a patent will receive one of these, but they still need to know which one is appropriate for their situation.

What Type of Patent Should You Choose?

Utility Patents

A utility patent protects the functional aspect of an invention, making it more broad than a design patent. Utility patents are by far the most common patents granted by the USPTO. While they are more expensive than design patents, they do usually provide more protection since it can extend to different variations of an invention and makes it more difficult for competing products to avoid patent infringement.

Unfortunately, there are some downsides to utility patents. First of all, they are more expensive than design patents. The application fee for a basic utility patent is $330, which is in addition to $540 patent search fee and a $220 examination fee. On top of that, there are maintenance fees of $980 after three years (source: invents.com). It also takes between two and three years for an invention to receive protection from a utility patent, and that protection doesn’t extend to ornamental features of the invention.

Design Patent

While utility patents are the most common patents filed by the USPTO, design patents are the least common. A design patent protects the ornamental design of an invention and prevents others from selling the design for a period of 14 years. They are far less expensive than utility patents, and they are typically granted after one to two years. They are also not subject to maintenance fees.

The one major downside of a design patent is that it doesn’t protect the functional features of an invention. Therefore, it is very easy for competitors to design around such a patent by developing a product with a similar function and a different appearance. This of course also makes it difficult for a design patent to protect variations of a product.

Choosing a Utility Patent or a Design Patent

In most cases, a utility patent will provide all the protection that an invention needs as long as the inventor is willing to pay for it and wait up to three years for the patent to be granted. It protects an invention’s functional features, and it extends to cover variations of an invention. However, if the main feature of a product is its appearance, a design patent is all that is needed. This may be a better option for those who don’t like the idea of paying maintenance fees or waiting up to three years before receiving protection.

An inventor may want to apply for both a utility and a design patent if an invention includes unique functional and design features. This is a much more complicated scenario, and it is recommended that any inventor taking this path speak to an attorney before filing for any patents.

Blue Rocket Interview

by Chris Peil on July 23, 2014

Blue Rocket is a San Francisco company that produces custom mobile apps for its clients.  Their mission is to bring high quality custom mobile solutions to market that are unique and compelling, and they have produced a number of Top 100 mobile apps for their customers.  Early this month, I had the pleasure of being interviewed for their blog,  with the goal of providing their readership some information about intellectual property protection in the mobile app space.  Below are links to the interview, which was presented in two separate blog postings:

 

http://bluerocket.us/mobile-marketing-strategy/what-to-ask-your-ip-attorney-to-protect-your-mobile-app-part-1/

AND

http://bluerocket.us/mobile-marketing-strategy/what-to-ask-your-ip-attorney-to-protect-your-mobile-app-part-ii/.

 

Although I was addressing an audience in the mobile app industry, my remarks are really applicable to almost any other technical field.

Including Patent Strategy in the Product Roadmap

by Chris Peil on April 28, 2014

patent strategyPatent strategy is too often an afterthought – and that’s a mistake which can ultimately cost your company both in terms of future opportunities as well as revenue. Strategic IP development is a key element of building a successful product and company, and neglecting to consider patent implications can be a huge hurdle to your business success. Your intellectual property strategy should go hand-in-hand with the development process, with due consideration given to your IP portfolio at key points throughout your product development.

To understand what to do and why, let’s look at aligning your strategy with business objectives, including it in your product development, and when to get expert help.

Your Patent Strategy and Business Objectives Should Align

First, your patent strategy must be in alignment with your overall business development process. Before you move forward on developing a new product or building your company, ask yourself a few key questions to begin developing a patent strategy:

• How strong is our competitive position?
• Are there IP barriers to product development or business expansion, such as patents held by our competitors?
• Who might pay royalties to us for our patent rights?
• To whom must we pay royalties if something we want to do is already patented?

Companies that don’t take the time to ask these questions are both compromising the value of the IP they create, as well as exposing themselves to potentially company-killing lawsuits from competitors.

You can use your patent portfolio in a few ways: offensively, defensively or for marketing purposes – or a combination of the three. A sound patent strategy aligns your IP portfolio with your business objectives to help you maximize your potential.

Don’t Miss Out on Patent Strategy During Product Development

A reactive strategy to intellectual property can cause serious issues for your company. “Reactive” companies develop product first, then look at the patent implications after development is done. When you treat your patent strategy as an afterthought, you may:

• Miss out on getting a broader patent from the development process itself
• Fail to develop a strong, defensible patent – or even a suite of patents
• Be time-barred from filing claims

In other words, by treating the patent process as separate from the development process, you’re short-changing your IP portfolio. Worse yet, one of your competitors could file a defensible patent before you – which could effectively shut down your product or cost you millions in licensing fees.

All of these very expensive issues can be avoided if you are proactive about developing and defending your IP portfolio throughout your product development process.

So how do you proactively make sure you’re maximizing your IP potential?

Work with a Patent Strategist at Key Phases in Development

It’s important to integrate patent strategy into key phases of your product development process. Times when you want to include a patent strategist in your development process include:

• During initial product idea development
• Any time you have strategic discussions about new features
• When you plan to make announcements about upcoming features
• When you’re considering integrating your product with other companies’ products

During the initial product development, an IP strategist can help you identify where you need protection, and can help you develop a defensible patent portfolio. Additionally, a good patent strategist can help you determine when you may be moving into an area where existing IP may bar your entry, or when you may need to license an existing patent to move forward with your development process. The same applies when you have strategic discussions about new features – new features essentially carry the same risks and considerations from an IP standpoint as new product development.

Announcing New Products and Features

When you plan to make announcements about upcoming features, it’s important to consult your patent strategist before you make the announcement. Public disclosures can bar patent filings, so it’s vital to have your intellectual property protected before you make announcements about new products or new features.

Integrations with Third Party Products

When you integrate your product with other companies’ products, you face a new host of patent-related considerations and potential issues. If you’re thinking about adding integration or partnering with another company, your patent strategist should be involved in the process to make sure your IP is protected.

Partner with a Good Patent Strategist

Ultimately, IP development is a cornerstone of doing business today. Key development personnel, though, such as senior programmers, VPs of Engineering and CTOs – aren’t necessarily experts in patent law strategy – and even if they are experienced, they often don’t have the time to stay on top of this quickly changing field. To ensure you’re pursuing a viable patent strategy, partner with a good patent strategist. Let a legal expert be the legal expert, and let your key development personnel do their jobs to create a great product that will propel your company’s success to the next level.

» Part One

Adapted from The Entrepreneurs Manual, a book on entrepreneurship and startups by Richard White, published by Chilton in 1977.

The order for 10 units plunged our mechanic into a deep dilemma.  He couldn’t build 10 drilling rigs in his spare time and still search for proper work.  If he accepted the order, he might miss out on a safe job.  While he debated whether to return the order or not, another oil company (whom he had never demonstrated to) sent him a purchase order for 15 rigs, and so the mechanic’s company was born.

Of course, $8,500 wouldn’t have been nearly enough to build 25 drilling rigs without some sound money-leveraging principles. Here’s how our Okie made his money stretch:

  • He put an advertisement in the local paper requesting the cream of mechanics for top wages (75¢ an hour) provided that the candidates accept the following terms: (a) they would have to work 50 hours/week in a farmer’s barn (which he rented for $5/month); (b) they would be given only rent money and groceries until the rigs were delivered and payments were made; and (c) no interest would be paid on back wages. Five applicants for every opening showed up and he selected the cream.
  • Since this was a sizable order for both truck and hoist dealers, they agreed to supply him with 5% down and the balance when he was paid.  Of course no interest was charged.
  • He found several grocery stores which agreed to sell him all of the food his employees needed at 50% down, the balance when he got paid. Thereafter, every worker received a large sack of groceries each evening after work.
  • The scrap steel dealers drove a harder bargain. They received 25% down, 25% after two months, and the balance when he got paid.
  • Since excess inventories of paint, cables, chains, etc. existed, he rarely paid over 5% down and the balance when payments were received.

When the twenty-fifth drilling rig was delivered, his sock had dwindled down to $2,300. When he was finally paid, the company was in a cash-rich posture, a position which never changed until it was sold in the 1950s.

There were some problems which might amuse you.  The management organization consisted of just the mechanic for the first 15 months.  When government auditors came in to inspect the books, they were unhappy to learn that there were no books.  The record keeping system was very simple.  In the top right hand drawer of the company’s only desk, all unfilled orders were kept. In the upper left hand drawer, all unpaid bills were kept.  When an order was filled or a bill paid, it was pulled from the drawer and thrown in the wastebasket. “That way, we could always open a drawer and know what was coming in and what was going out.” All other records were kept in the mechanic’s head.

The auditors didn’t feel that this was an acceptable accounting system and give our Okie 30 days to develop proper records. He hired his first staff man, a cousin of one of his mechanics who was an educated man (he had finished high school and had once had a bookkeeping course). When the auditors returned 30 days later, they found a single sheet of paper which was a combined balance sheet, income statement, and miscellaneous additional items.  They were extremely unhappy and when they started to padlock the door, the president pulled out a dozen socks (filled with about $650,000 in cash) and told them to “take what you think is fair.”

When they took more than what the president felt was fair, he hired a qualified accountant, told him to leave his neckties at home, and to protect him the “next time those bandits come.”  The new controller was also given the following instructions: “Don’t put a penny in the banks. Put 10% of all cash into dimes so that we can melt them down for silver if we have to. Don’t keep any bills larger than a $5 bill because counterfeiters never work that low.”

For months, this controller was developing ulcers concerning himself about the vast amounts of unprotected cash he had to carry.  Then he started cutting out newspaper stories of holdups and left them on the president’s desk.  After several months and dozens of stories of how people had lost everything in holdups, the controller asked his president about the high risks they were taking with their bundles of cash. It was then that he learned that his president hadn’t read the newspaper clippings because he could hardly read. So the controller read him the clippings aloud, scared the president, and was allowed to place half of the company’s cash in five different banks. The other half had to remain in reachable cash.  When the controller retired 20 years later, he handed his replacement in excess of $4,000,000 in dimes, ones and fives.  The company had never been robbed.

From a production and service standpoint, this company also had unique problems.  For the first 250 units produced, the company never used anything but scrap steel.  This dictated the adoption of unique production practices.  Each rig was individuall y built built by a team that included one master mechanic and three apprentices.  Since the materials were scrap, each rig had to be engineered and built from supplies on hand. No records were ever kept and since serial number 131 was completely different from serial numbers 130 and 132, the field service people had to be extremely flexible and innovative.  However, since he only hired the best, this was never a real problem. When the Japanese government started buying all of the scrap steel that they could get their hands on, the prices rose so the Okie was finally forced to use new steel.

In the late thirties, the oil companies’ demands finally exceeded his master mechanics’ engineering abilities and he was forced to hire a real engineer. When the poor man first showed up to work, there wasn’t one blueprint or one written production instruction in the entire company (it now employed over 500 people: 1 accountant, 1 engineer, 1 woman who handled all the clerical jobs, 1 president, and 496 production mechanics). It took this engineer four years to convert the company to sound engineering control systems.

 

There’s yet  more to the Okie Mechanic’s story.  Stay tuned for “Does Anybody know who the “Okie Mechanic” Really Is? (Part Three).

For my inaugural blog post, I thought I would treat you to a story about a mystery man known as the “Okie Mechanic”.  I read his story in The Entrepreneurs Manual, a book on entrepreneurship and startups by Richard White, published by Chilton in 1977. Somewhat difficult to find, used copies sell on AMAZON for about a hundred dollars. Some say it is one of the best books ever written on entrepreneurship. But, I digress.

I ran across White’s book and the Okie Mechanic’s story when I was developing an inspirational talk on qualities of inventors and innovators, a speech which I have now given a number of times.

White used the story of the Okie mechanic as a case study to illustrate what’s possible, even under difficult circumstances, with a large dose of resourcefulness and perseverance.

What makes this a compelling story, is that, in the face of horrible handicaps, the Okie mechanic, with almost no education,  with a lot of common sense, innovation, and drive was able to build a quality company.

The Okie mechanic was an out-of-work oilfield mechanic looking for work in Oklahoma (the epicenter of the dustbowl) at the height of the great depression. For months, he had looked and looked and there simply were no jobs.

During the course of his job search, he realized that the then-common practice of building a permanent drilling derrick over each drill site was extremely wasteful and time-consuming. He conceived the concept of a portable drilling rig which revolutionized the oil industry.

He had handicaps that might lead you to believe that he wasn’t cut out to becomea successful entrepreneur. He could barely read and couldn’t write. He had no experience in either management or finance.

He had, before he was laid off from his job, managed to save over $400 (quite a sum, then, which he kept hidden in a sock. He watched his savings dwindle to $325 in three months while he searched for “respectable” work, and he then decided to risk $200 on his portable drilling rig concept. At this point the mechanic sold the International Harvester Truck dealer of Tulsa on his concept and borrowed a ten ton truck to demonstrate (the dealer couldn’t move his inventory and agreed to the loan if he received payment-in-full when the mechanic sold his rig). He rented (at $10/month) a 50-ton draw-works from a hoist manufacturer (balance to be paid when the rig was sold). He purchased useable scrap steel ($30 down and $70 when the rig was sold) and spent all of his spare time (the hours when he wasn’t standing in long lines looking for work) building his rig. It took him three months.

Even on his first demonstration, his propect, a  drilling manager, immediately saw the advantages of the concept and bought the demonstrator. Although the mechanic was thinking of asking for $7,000 (taking price he hoped would be at least $5,000), when the manager seemed so enthused, the mechanic raised his price to $10,000. When the manager didn’t balk, he then added $3,500 for the truck. He left the demonstration rig at the site and hitchhiked home to await his $13,500 payment. He felt that the $8,500 profits would hold his sock in order until he found “respectable” work. However, when the check came, it was accompanied by an order for 10 more units at $13,500 each.

There’s more to the story, which follows in the next blog post.

» Part Two