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30DodgePanel

Filing for a patent ?

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Ok guys, I know many of you are good with your hands to the point of making it right at every level. My question is, have any of you ever went thru the riggers of the US Patent process and are you willing to offer advice ? I have several things I'm working on, 2 are in the final draft stages and ready to submit but I wanted to see if anyone on here had any insight as to how to "speed up" the application process. Anyone know of any shortcuts or time saving methods that the US Patent office will still recognize without turning it into a 3-10 year deal ? I would like to submit them and get quick responses so we can get moving on the marketing end of things but I first want to be sure our ideas are fully protected. Thanks for any input in advance.

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Benefits of AACA Membership.

I have a few patents but all through an employer that did all the legal stuff. Even with a big company and a lawyer the process normally took 2 years minimum. I heard numbers of $10,000 dollars to get a patent through the system with a lawyer and that was 10 or more years ago.

You can start using your idea as soon as you file but if it is rejected you loose coverage. Depending on the idea your competition may not have to change much to get around your patent anyway. If you decide not to patent but still manufacture, there is a legal patent publication that is fairy obscure, but if you publish your idea it will keep someone else from patenting your idea. The company I worked for used it all the time for ideas that they wanted to use but didn't want to pay the cost of patenting.

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If you send me all the specs and drawings I can give you some advice. :D....................Bob

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I have a few patents but all through an employer that did all the legal stuff. Even with a big company and a lawyer the process normally took 2 years minimum. I heard numbers of $10,000 dollars to get a patent through the system with a lawyer and that was 10 or more years ago.

I filed for a patent just about ten years ago when I had my own company. You're numbers are spot-on. I paid the patent lawyer just about $10K and it took just about two years.

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What about sending yourself a certified letter with a patent attorneys notary on every page in the packet showing the many illustrations of the idea? Would or could that be protected in anyway ? I've heard this is an option many times over the years but have yet to find anyone who has actually done it. Thanks for everyone's input. For those who would like to see the idea just email me at clickhereforvirus@dreamon.com and I'll be happy to share ;)

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Before you get into the mechanics, look into the patentability and the alternates for protection. To be patentable, the invention must be new AND not obvious to "someone skilled in the art." For the first criterion, you can research the USPatent Office site. Reference the related existing patents to show you are aware of them, and how your invention differs from "prior art." I do not think you get off the launch pad without this homework done.

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There is Intellectual Property Law that would maybe protect your invention without a patent. Just remember that once you put your invention out there without real patent protection it will no longer be a secret and will be subject to the public domain. Anyone that figures it out, copies it, or improves upon it will then become your competition in the market.

Assuming your invention is patentable (not everything is - an important part of the process is a patent search), if there is ANY potential for market success, you should at least consider the possibility of patent protection and using a patent attorney to guide you through the process.

On the other hand, some very successful inventors (think TV infomercial type products) almost never bothered to patent their inventions. When they thought they had come up with something that had real mass marketing potential, they brought the product to market FIRST and really pushed the marketing so as to sell a ton of them before any competition knew what hit them and could react with a competing product. By the time there was a competing product, they had the money in the bank and had moved on. Years later their main selling point is that they were the original _______ (blender, juicer, grill, kitchen gizmo, etc., etc.)

Thing about that strategy is that you have to be fundamentally ok with boom and bust type success and the fact that your invention will almost definitely get copied. This is probably not the best approach unless you know that whatever you've invented will have overwhelming success in the market. Then again, if it's ultra successful and it's likely nobody else will come up with something similar while you're working on yours, getting a patent could be well worth your while.

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Great advice guys... I was hoping to skip some steps and jump to the marketing end but I'm obviously in need of some homework before I go much further. We really need to create more income for the family so I was hoping the process would go much quicker but if it takes time then we will just have to be patient. Jim thanks for the link to the database, so what is the key when searching criteria without risking anyone stumbling onto our idea ? I fear that when I enter a search into any database it is stored with a possibility of being stolen. I can only say that all major home improvement and every paint store world wide are the potential clients and a company like Weyerhaeuser would be the major distributor once the machining for the assembly process is established.

Edited by 30DodgePanel (see edit history)

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Yup, Did that once. The patent ran out a few years back. Your getting good advice here and I'm not sure I can add much except to be patient. There are millions of patents that have gone nowhere so the first step is a search. Many things have been re-invented. My Idea never went to mass production but a very good company had an exclusive it and paid enough to cover the costs at the time. Dandy Dave!

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You search for a few key words not the whole idea. You will probably get a bunch of hits and you will have to sort through them. It may take a few searches.

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Thanks again for all the help gents !

This will take some time but I am pretty thorough and would like to understand this process completely myself regardless if I use an attorney or attempt it on my own.

I would at this point like to know more about the "Intellectual Property Law" that Scooter Guy touched on and the "Legal Patent Publication" that Jim Bollman mentioned. Are these two in the same just labeled differently ?

I believe I have found a very, very helpful guide that I posted below from the US Patent website that seemingly is a good guide for a novice or someone who simply wants to study the patent process if I decide to go that route. I believe the idea I have falls under the "Utility Patent" simply because it's an "article of manufacture".

I'm receiving my prototype this week. I will make changes to it that only I know the outcome of the final product. The prototype I'm having made up is only an outline. So far I have my cost down to .45 cents per unit and the item will sell for $2 and virtually ever man on this board will own one someday (where have we heard that before) so the margins are good from what I can tell but any input into the financials on this is appreciated as well.

post-69994-143142191776_thumb.jpg

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One thing I want to make note of:

I've literally searched hundreds of hours so far searching the patent database and still have not found anything that matches my idea. Is there a quicker way of doing this for the novice ? I understand attorneys know the secrets but I can't afford an attorney at this point.

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Quote,

" So far I have my cost down to .45 cents per unit and the item will sell for $2 and virtually ever man on this board will own one"

if it is a beer can opener, your too late. :D

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I am really not qualified to speak to much more on intellectual property laws or offer any legal advice. I will say that it seems that perhaps I was a bit off and that intellectual property law is really no different than patent law to the extent that patents seem to be one way to legally protect your intellectual property which is a design for a product in this case. Intellectual property seems to be nothing morethan the overall umbrella under which a patent would fall

I would highly recommend hiring an experienced patent attorney to help you through this and make sure that you've dotted every "i" and crossed every "t." You absolutely MUST have an exhaustive patent search done as step #1. Without doing that and knowing FOR SURE what the outcome is you are wasting time and effort (in my opinion) and are spending money developing a product you may NOT be able to patent. A good patent attorney will do this search for you as quickly as possible and, I suspect, probably more comprehensively than any of the rest of us could ever do from home. I wish you the best, but It seems like you're making the process 10x harder by trying to do this yourself without really knowing how to do it.

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So you have searched the patent data base. Good. Hopefully there is no foreign art - that counts too, since technical professionals are required to be aware of what goes on in their field around the world.

Now you need to list the closest relevant patents as references to show you are aware of prior art.

And you need to be able to explain how your thing differs.

And how it is not obvious to someone skilled in the field. "No one did it before" is not by itself evidence of this.

If you get to an interview with a patent examiner, he will have done his own search and have likely a challenge on whether other work reads on it.

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I don't know anything more about publishing of ideas to keep others from patenting your idea other than that is what the company I use to work for did with a couple of my ideas that they didn't want to spend the money on, but thought they may want to use.

Like regular lawyers use para legals to do a lot of the grunt work, patent lawyers also have para legals that went to school on patent law. If you can find one not attached to a lawyer you might get some cheaper help. I'm sure it is a para legal or a law clerk doing the patent searches not the high buck lawyer.

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So you have searched the patent data base. Good. Hopefully there is no foreign art - that counts too, since technical professionals are required to be aware of what goes on in their field around the world.

Done-Nothing in the foreign or international database.

Now you need to list the closest relevant patents as references to show you are aware of prior art.

Done

And you need to be able to explain how your thing differs. And how it is not obvious to someone skilled in the field. "No one did it before" is not by itself evidence of this.

Done

If you get to an interview with a patent examiner, he will have done his own search and have likely a challenge on whether other work reads on it.

Ready for the next step. Next I will submit my Application fees for Design is $70 and $45 for Utility , both amounts are for Micro-Entity.

Thanks for summarizing for me bkasmer.

Then once I submit the Design Patent I will be able to sell under "Patent Pending" , correct ? Or do I need to submit the Design and Utility together ? I believe the Design Patent is the measurements & figures with artwork portion showing the item - and Utility is the explanation of the Design of the item, is that incorrect ? I'm just going to go ahead and tackle this on my own step by step according to the US Patent office website and other sources of material.

Any recommendations and/or feedback, criticism are welcome.

EDIT: There is one other item I found "similar" but the patent was filed for in 1988 and the date of patent is 1990, the term was 14 years but I show no evidence that any maintenance was followed up by the inventor., Even so, mine is different in shape, size, material, and the ergonomics so I believe I can prove how mine is different enough to gain patent. Will I first be in touch with an Examiner or an Assistant ? Just curious...

Edited by 30DodgePanel (see edit history)

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Do some research on obtaining a Provisional Application (commonly called a Provisional Patent tho this is technically incorrect). It costs much less, $100-150 or so, and establishes your filing date, giving you one full year to file for the actual patent. Again, this is all layman's explanation so consult with an expert or do some thorough research. My understanding is that you can use this to get to work and shop the idea around before you lay out the cash, possibly finding someone to simply license the idea to, so you don't have any out of pocket expenses. Personally, I prefer licensing because I'd rather have 10%, 25% or 50% of $10-million rather than 100% of $0. Good luck, and as said, do not reveal any more info about your idea publicly or ideally to anyone not involved and you might also want to find or create a nondisclosure agreement that you would have anyone you plan to discuss the idea with in advance, so they cannot use your idea in the event you meet with a company but they decide they don't want to product, only to go and make it themselves afterwards.

I also HIGHLY recommend watching the movie Flash of Genius to anyone who considers themselves an inventor with the intention of selling or licensing a product. Here's the trailer for the film, it's based on a true story:

Edited by MarrsCars (see edit history)

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There is one other item I found "similar" but the patent was filed for in 1988 and the date of patent is 1990, the term was 14 years but I show no evidence that any maintenance was followed up by the inventor., Even so, mine is different in shape, size, material, and the ergonomics so I believe I can prove how mine is different enough to gain patent.

Sounds to me like you may have a serious problem in that someone else already "invented" the widget, or if you are successful in arguing the 'different size, shape, material, and ergonomics then anyone can adjust those minor factors and get around your patent. And you cannot re-patent something that someone else already patented. You can manufacture and market their idea without compensating them if they have let their patent lapse, but you cannot get your own patent on their idea.

The second issue with any patents is there are many countries that do not care about patents and will manufacture and sell anything in most any country that they can make a buck on without paying you a cent. If you want to challenge them you will need to hire attorneys and try, repeat try, to stop them through the courts if you can catch them at it. Even if you are successful in one case (doubtful) the same guys can just change the name of their company and go right back at it. Every internet web seller, local flea market and street corner discount shop in most every country is full of this kind of stuff. How many Rolexes would you like - they are only $20 each or 3 for $50. Step right up.

My point is that you really do need to find a good patent attorney and have a heart to heart talk with him or her to see what your costs are and whether you would have an honest chance at making good on your idea without your own large staff of corporate attorneys, given the realities of manufacturing and marketing around the world these days.

Oh, and that thing about mailing it to yourself? That is a myth. Anyone can mail themselves an envelope either empty or stuffed with a dummy paper and certify it and register it and whatever else they can pay for at the post office and simply leave one side of it unglued. Then they can put anything they want into it after the fact and glue the side up. Then, Bob's your uncle, you have a certified letter with your after the fact idea in it. A patient person can mail themselves such envelopes a couple of times a year and over the years build up a collection of them. Then all they need to do is keep up with new patents that have been issued and pick out some likely profitable ones, make their own drawings of that other person's idea, slip them in an appropriate year's envelope and they now claim to have been the first one with the idea having mailed it to themselves under certified and registered US mail.

Edited by Kimo (see edit history)

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Agreed that this is a really Sticky Business. It is tough to get a licencing agreement even with a good company nevermind the fly by nights. If the item is small and easy to make, and you can do it yourself in your garage or basement, jump in and do it yourself. The toughest obsticle you will have is advertizing. Getting your idea to market and getting joe public to know it is out there. My Idea I could not do on my own so I was at the mercy of a large company. Out of a fairly large group one guy shot the idea down. I was a little Nieve at the time and was not savy enought to relize that I think the guy wanted a Kick Back to agree to produce it. He did not actually say it but now that I am older and wiser everything is 20/20. Dishonest business men will want to be in on the take and will screw the inventer out of evey nickle they can. The companys lawer also told me that they never did a licensing agreement. They only bought the patent. They did offer me what I thought was a very low price for the patent and I did not sell it. If it went to production I know it would have been a hit. That experiance soured me from pursuing any other patients or ideas. It is expensive to get a patent, and maintain it, and it is hard to keep it maintained without a profit from it. My two cents worth from real world experiance.

If interested, look here to see what I did. http://www.google.com/patents/US5931453

Public info now. I bet most of they guys on here have at least two or three of the tools in their tool box of the company I delt with. The tool they produce is of very high quality and that is why I wanted to deal with them rather than some cheep knockoff version. Dandy Dave!

Edited by Dandy Dave (see edit history)

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You guys are bringing up some great points of consideration exposing many questions and answers. Good stuff...

I have already made up my mind to do all the work myself so I agree Dave, the toughest part will be the marketing aspect. Like anything else, there must be a good plan, strategy and model in place first before any kind of marketing pays off. Once that's finalized I will then approach each distributor or retail chain but this is where it gets "real sticky" as you say and the potential is high for my idea to be stolen from a more powerful interested party who wants a piece of the action, which in turn leads me right back to the very reason I need patent coverage.

I have run the numbers for the amount of time per unit to produce. I believe I can produce 4800 pieces minimum weekly, that's after the initial up front cost of $1000 for upstart tools and equipment needed to achieve those numbers but I feel I may even be able to improve on production figures by 20-30% once I have the manufacturing system in place. At first all the work will be done in house with minimal overhead such as: tool maintenance and electricity used which will be cost averaged into the equation after the first month of production, then I'll have my annual cost template to follow at that point. Then if I hire help or farm out any part of production that will obviously dramatically change the plan but this will all depend on demand which is all hypothetical bs at this point. My main concern is the first order (s) and making sure I can fill them accordingly, then if any growth takes place adjust as needed. However, again, this all depends on patent coverage from what I can tell. Without a patent the risk of it being compromised is a risk I'm not willing to take.

As for "re-patenting an item that already has a patent".

This is where the real answers will come from the rebuttal of the examining officer who will have the authority to accept or deny my claim. History shows that several or do I dare say thousands of items, although similar, do have the ability to become patent protected with the right changes. What those changes are and how they are perceived by the examiner is that delicate balance I need to find currently. Without it, there will be no success.

I love the advice and feedback you all are giving me, it helps in many ways I can't explain at this time. Thanks

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Once that's finalized I will then approach each distributor or retail chain but this is where it gets "real sticky" as you say and the potential is high for my idea to be stolen from a more powerful interested party who wants a piece of the action, which in turn leads me right back to the very reason I need patent coverage.

I don't mean to rain on your parade but I see a lot of possible issues here.

First, you've apparently uncovered that something quite similar to your product was granted a patent in the not-to-distant past. This is potentially a major issue and something that (at least in my opinion) should be signaling you to drop everything and check into it before you spend another dime on your product with the intent to patent it and bring it to market.

You seem to be want to do everything yourself come hell or high water rather than using a patent attorney. You've mentioned that the services of an attorney are cost prohibitive, which I can understand, but I think you're taking a huge risk. Knowing that, plus the quote from you I've included in this post leads me to ask this: if you can't afford or don't want an to use an attorney to get the patent, how in the world do you expect to protect the patent without one if you believe it has a high potential to be stolen?

Having a patent gives you the right to defend your idea/product/design, but does not guarantee any sort of action would ever be taken by the government (patent and trademark office, for example) to actively stop anyone from stealing your idea or selling their own version (even an exact copy) that infringes on your patent. A copy-cat product simply would not be able to be patent, but that doesn't mean that others won't try to copy your product and sell it themselves. Keeping track of that sort of thing and going after those that exploit your invention is your problem. Personally, I don't see a one man operation having a very good chance in that kind of situation. An attorney isn't necessarily a golden ticket, but think of it this way...would you be more inclined to take a cease and desist from an attorney seriously or from the inventor himself? And if that someone didn't stop, what would you do about it?

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