Patents 101

When people come into us, we give them a little bit of, kind of patents 101, and we tell them what it’s all about. And even with companies, even sometimes larger companies, we will actually do a presentation, and we want these people to understand what patents are all about. Engineers, for example, often are solving a problem, but they don’t think about a patent,and it’s such a mindset that people need to have to think in that direction, to present your idea, your invention disclosure, let’s say, to the people in your company, or even if you are working by yourself or with one or two other partners, always to think in that direction because people don’t automatically do it.

The Madrid Protocol

If I go with what is called the Madrid Protocol, I present my U.S. trademark, present it to Madrid, they go ahead, they make an international registration. Now the international registration, it means they review the form, make sure it qualifies as far as physically what’s in the application, that all the components are there.

Then it gets presented directly to each of those eight countries I selected, and I pre-pay for the government filing fee for those eight countries. And it gets presented and they come back to me individually later and if my mark gets registered with no opposition, there’s no further fees. I haven’t had to hire an attorney.

If one of my marks get rejected in one of my individual countries, at that time, of course, I have to hire an attorney and present it in that individual country. But once all eight marks are allowed, I only have to renew it through one place. Instead of having to go through eight individual places, I just file renewal and the fees with Madrid and the proof.

So it streamlines the paperwork and it’s a much more efficient way if I’m doing more than two marks.

Filing an International Trademark

Client comes in, he has his U.S. trademark he’s received or at least he’s filed for it, and now he wishes to file that trademark internationally. He asks me, what is the best way for me to get protection in the following eight foreign countries?

I say, you have two options. You can take your trademark, present it individually in each one of those eight countries, which means you hire an attorney. You get a translation made of your trademark, and it gets filed individually in each one of these eight countries. And each one of those attorneys come back to you, and they tell you how the process goes. And you have to, with each one of those eight countries, pay your maintenance fees and your renewal fees to keep the trademark alive.

So you’re dealing with eight separate attorneys.

Keep Your Ideas Secret

With regard to confidentiality, one must understand that there’s no right to stop someone from copying your invention until your patent actually issues. Even after you file your patent application, even after the application is published by the patent office, you still cannot enforce it. And we give this advice to people.

We can’t tell them what they must do, but we tell them about the dangers of informing other people, of showing it to the public, of putting it on the internet, of selling it before they have patent protection. And it can be quite dangerous. NDAs are one way to go about it, separate from a patent, but an NDA is a contract.

And there are people that will respect the contract and people that just won’t respect the contract. So you can have an NDA with someone, but more important than that, whether you have the NDA or not, is to know the people you’re dealing with. And the most conservative way is to keep your idea secret at least until the patent application is published, which is 18 months after filing.

The Role of a Patent Search

People come into our office and they present an invention and they say, this has never been done before. And then of course, we have to evaluate who they are and how well they know the industry and the products. So generally they’ve gone to the store, they’ve gone to Home Depot, they’ve looked on the internet. They’ve searched for it and they haven’t been able to find it and that’s fine because that’s a good way to begin.

But a professional patent searcher like we have in our office will use much different tools. For example, the searching system in the patent office is by class and subclass and sub-subclass.

Even though we search for the particular invention, even if we can’t find exactly that invention, knowing what other people have done help us to write the patent application, and particularly the claims. The claims are written in such a way as to get around what people have done before. And therefore, what we find is it actually streamlines the patent process.

It makes it shorter, makes it less expensive because there are less, there’s less give and take back and forth with the patent examiner after a search has been done.

US Patent 101

What’s the extent of coverage of a U.S. patent? As with anything patents are territorial, a patent will cover, or I should say a U.S. patent will cover the United States and its territories, including Puerto Rico. People ask me, is there such a thing as an international? Now, I stress the word patent because there is no such thing as an international patent, where one patent covers the whole world.

Of course there is something, we have something called the PCT. It’s where I present my U.S. patent that I did. I present it to the world and I say, I would like to prosecute this patent in the following designated countries. So I buy some time to take my U.S. patent and I present it to multiple countries.

Patents are Value!

There are companies that are built on patents, especially small companies, that are trying to develop in the field. For example, based on a particular product or, a product line, and patents are extremely important for them because patents are value, it’s, an intellectual property is property.

Just as though the company owned a car or a building, or other kinds of rights. You can go to the bank and you can borrow against the patent. And you can finance your company. You can, you can go to venture capitalists and they’ll loan you money based on your patent. And again, especially startups, this is extremely important.

Patent Searches 101

If I provide you all the background information of what your competitors are doing, you can compare that to what you’re doing and you can actually improve your particular product based on what you see the ideas other people are doing and you can compare it to what you have. So not only do you protect yourself and see whether your item is patentable, you also get a database of what’s out there and you can improve your product based on that database.

Intro to Patent Searches

A new inventor comes on into my office and said, “here’s my idea, what’s the first thing I should do?” And I tell the inventor, “of course, you write it up, you give me your drawings. But the first thing you want to do is you want to have a patent search done.” Unfortunately, patent database, very large. A lot of things have been done.

A lot of inventors out there. Before you go ahead and you spend money on a patent application, you’re going to want to get a patent search done. And a patent search is basically checking the existing databases of existing patents and finding material that is as close to your invention as is possible.

What is a Patent Illustrator?

Yeah, it’s a draftsman, but it’s a patent draftsman, because the requirements are quite different, especially with regard to designs. If you have a product, this table for example, you would need to show a view of it from every angle. The top, the bottom, the sides, and a perspective, so that somebody can see exactly what it is.

Whereas with a utility, it’s much more open. You can show partial views, as long as it shows the important part. Sometimes there are circuit diagrams, other kinds of charts, flow charts,for example. None of that is used in the design patent.