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Patent Application related questions
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In what situations is Patent protection needed?
The common situation where applying for patent protection is important, if not mandatory, is when the nature of the idea, method, or apparatus is such that if it were kept as a trade secret (also see the types of IP protection)competitors observing the embodiment of your invention (e.g., the product or method you are selling) would be able to figure out and copy your invention without your help. A patent is also usually required if you want to ever license your idea(s) to others, and many manufactures will not even talk to an independent inventor unless he or she at least has "Patent Pending" status for the idea being offered for sale or license.
Patent Attorney or a Patent Agent, which is right for me?
First of all, it is helpful to understand the main differences between a Patent Attorney and a Patent Agent. From the USPTO's point of view, both have to passed the Patent Bar Exam and if the person is a licensed Attorney in some U.S. State, then she is a Patent Attorney, otherwise a Patent Agent. The Patent Bar Exam is mostly taken by Attorneys, and is extremely difficult to pass. It usually takes two to three tries for most to pass (i.e., pass rates range from 30-50%). Anyone that can pass this grueling exam is licensed to practice in all matters related to patents before the USPTO. Interestingly, there is nothing taught in law school about Patent Practice that would help a law student at all to pass the Patent Bar Exam or to prepare and prosecute patent applications. In this respect, there is no advantage to using a Patent Attorney. Another aspect to consider concerns your practitioner's technical expertise. Generally, the more technically knowledgeable your practitioner is, the more accurate your patent will be, and the less time it will take to have him or her understand your invention. In this regard, Patent Agents tend to be far more technically capable than Patent Attorneys. The main reason is because Agents tend to come from a career in industry, and Attorneys tend to come right out of law school with a huge school loan debt, and no practical technical experience. The final main difference to consider, is that, for reasons beyond the scope of this brief presentation, Patent Attorneys will usually cost at least twice as much as a Patent Agents.
Regarding which is right for you, the only cases where only a Patent Attorney is an option is if you require patent litigation, patent validity opinion, patent licensing, or trademark application services. Although, few Patent Attorneys have much experience in these areas, the litigation and patent validity opinion experience can be helpful in drafting very high value patent applications (e.g., worth $100's of millions like Yahoo!, Amazon one-click, etc.). Even if your patent may not turn out to be the next Amazon, you should still find an affordable practitioner with some experience in patent validity opinion work, as this will usually increase the likelihood that your patent will hold up well in court. That is why it is particularly important to be sure that a Patent Agent you are considering has worked in a Patent Law Firm (and not only inside a company), and has worked with validity opinions. All other things being equal, it is almost always wiser for a small business or independent inventor to work with a Patent Agent over a Patent Attorney as it usually costs half as much for the same work.
Why does the "quality" of a Patent Application matter?
That is, the "protection" afforded by a PPA or a full patent application, is only as good as the disclosure of the invention in the patent application. If it is not properly or completely described, or if there are vague or contradictory aspects to the PPA disclosure, then the PPA may be later found invalid, or not covering the scope of what you consider to be your invention (read quality -vs.- cost tradeoffs for more details). The protection afforded by a PPA or a full Patent Application, is by way of a competitor being afraid to infringe on the future patent, and winning significant damages if they do. Thus, if the PPA specification is defective, then the later filed full Utility Patent Application that claims the filing date of the PPA would also be defective or invalid, and no effective patent protection would result. That is why a PPA should be treated as seriously as a regular, or full patent application, esp. if it is critical to have future patent coverage extend to the earlier filing date of the PPA, and not to the later filing date of the full Utility Patent Application.
Often PPAs are filed before one starts (test) marketing the corresponding invention. In such a case, given the above analysis, if you think your invention has significant market value, then you should go the Quality Oriented PPA or full Patent Application route. If you are unsure of your idea's value, or your finances are particularly tight, then the PPA is an acceptable option (Click Here for more details between Full Patent and PPA). In the end, if your invention becomes something valuable, then you want to be sure that its patent protection is strong enough to convince a manufacturer's/licensee's lawyers, for example, that you have a patent application or granted patent of sufficient quality for them to take the risk in investing in, or paying for use of your invention. Otherwise, if the quality of the patent application or granted patent is too weak (i.e., of low quality) they might prefer to work around or ignore your deemed narrow or otherwise insufficient patent protection. In general, if you cannot afford a full Patent Application (the best course of action) a Quality Oriented PPA can go a long way towards assuring that your idea is better protected. That way, if someone else applies for a patent on your same idea or attempt to sell a product based on your idea, your earlier date could block them. However, if your PPA application did not frame and/or disclose the proper aspects, variations, and/or applications then you would not have an earlier filing date for those aspects not properly set forth, and thereby have no patent protection. In this way, the "quality" of the original patent specification is critical to the effective strength of the resulting patent, if any.
Generally, an invention should be claimed in different ways and with
varying scope to ensure that an invention is sufficiently protected against
copying or theft by competitors and sufficiently motivate them to license
your invention instead. In this way, the complexity of a patent practitioners
claims drafting will depend to a large extent on the subject matter being
protected and the number of ways and depth and breadth of the claims construction
strategy. The main issues governing how sophisticated a claims strategy
is required concerns claim
examination by the patent office, claim
interpretation during infringement
proceedings, and litigation cost reduction. Regarding examination,
a more complex claim construction strategy will provide a multitude of
alternative claims for the Patent Examiner to find allowable, which usually
make patent allowance quicker and prosecution costs lower. Regarding claim
interpretation, employing a complex multitude of alternative approaches
in claiming an invention, of varying degree in breadth and legal approach
(e.g., means-plus-function, etc.), casts a broader and stronger net to
catch infringers. With respect to patent
infringement proceedings, a more complex claim construction strategy
targets all envisioned alternative commercial embodiments of the invention
with the intent to require less legal argument justifying infringement
during litigation, thereby saving money and increasing the likelihood
of winning an infringement
judgment. Furthermore, for high quality patent applications, claims are
draft claims to target a wide range of potential infringers (including
present/future competitors, manufacturers/distributors, users, distributed
networks across national borders), and where practical, claims are drafted
to cover only a single potential infringer. This high quality approach
significantly increases the strength and value of your patent intellectual
Should I apply initially for a Full Utility Patent Application or a Provisional Patent Application (PPA)?
The answer to this common question mostly depends on your financial situation and goals. For most inventors who have no notion of whether there idea would receive interest in the marketplace, a PPA is the best risk/reward option. Please click here for the main PPA pros and cons. In general, the decision is boils down to the level of investment you feel is warranted, or the most you can invest, to protect the potential future revenues your idea may generate. If you are not sure whether your idea will sell in the marketplace, or if you can not afford a Utility patent application, then a PPA might be the way to go. On the other hand, if you are relatively confident that your idea has commercially potential, which may be true, for example, if pertinent professionals or consumers like it, then a Utility Patent Application will generally provide you the best quality patent protection for licensing and against theft. Click here for a more detailed explanation of why a Utility Patent Application inherently is of much higher quality than a PPA.
A Full Utility Patent Application costs a lot of money, why do it instead of a Provisional Patent Application (PPA)?
I know it seems like a lot of money at first, but, to frame the context more accurately, like any decision, it is all about assessing the opportunity -vs.- cost. On the opportunity side of the equation, if the opportunity seems to be relatively significant and there is some positive feedback from industry players (e.g., professionals, companies, academia, executives, etc.), then a less quality Patent Application (e.g., a do-it-yourself PPA) may risk losing a valuable deal if a big player deems the application as legally insufficient to warrant their investment or licensing. Another significant risk is that the weaker PPA might very well have technical and legal gaps in the disclosure that would allow would-be-copiers or licensees to more easily design around your patent, thereby losing all or part of your potential revenue stream. Click Here for a more detailed explanation of why a Utility Patent Application inherently is of much higher quality than a PPA. Of course, if your confidence in the commercial value of your invention is relatively low, then a full Patent Application may not be for you, and you should Click Here to assess your better course of action.
On the cost side of the equation, generally, as the opportunity appears more significant, then the investment warranted usually follows some equation like $ to invest = $ Income Potential x Probability of Success. A low cost patent firm, such as Bay Area IP, can go a long way towards helping you take less upfront risk, while best positioning you to reap the rewards. For example, a typical, high overhead, patent firm would charge any where from $4,000 to $7,000 just to file a simple mechanical Utility Patent Application and about the same amount to prosecute it until issuance. That makes it almost impossible for the independent inventor to invest in a better quality Utility Patent, and forces them into the more risky PPA. In contrast, our flat-fee of $2250 for our time to prepare and file simple mechanical Utility Applications gets you in the quality "ball park", at substantially less risk. Our unique low-cost approach, provides a service at every quality step from a "full service" Utility Patent Application down to a completely do-it-yourself PPA, which enables you to pick your optimal comfort zone balancing the Opportunity -vs.- Cost and Risk -vs.- Reward decisions against your financial situation.
If you did my PPA, how much will it cost me to do the full Utility Patent later on?
Until further notice, we offer a special cost savings opportunity for those procuring our Option 1 or 2 flat-fee Quality Oriented Provisional Patent Applications (qPPA), whereby we guarantee that you may deduct the amount paid for the flat-fee qPPA from the then prevailing cost of the corresponding flat-fee, full Utility Patent Application. That is, you only pay the difference in cost between the flat-fee Utility application and the qPPA, instead of the full future cost of applying for a full patent. If you procured an Option 3 qPPA, or a Cost Oriented PPA service at or above the PPA Review level, then your PPA application is usually automatically eligible for a reduced cost Flat-fee full Patent Application quote; however, the fee paid for these PPAs is not deductible.
If I decided on doing a PPA, of the Quality oriented or Cost oriented PPA approaches, which is right for me?
Having already decided upon a PPA it is usually the case that you are on a limited budget, or have high uncertainty about the marketability of your idea. For some inventors, another variable is the number of ideas that patent protection is sought. The main decision point factors are as follows:
The first item to consider is your budget. If you simply cannot afford a Quality Oriented PPA then the Cost Oriented PPA is your way to go. If your budget is not the limiting factor, then the next decision point to consider is how much confidence you have in the marketability of your invention. Of course, the higher your confidence, a proportionately greater investment in patent protection warranted. That is, if you have done some basic marketability research (e.g., professionals like your idea, it is selling on eBay, you see inferior products in the market place, & etc., for marketing ideas read books by Jay Levinson) that is very positive, then you should procure the highest quality PPA (if not a full Utility Patent) that you can afford. Similarly, the lower your marketability confidence, a commensurately lower amount of investment is justified. After establishing your budget and level of confidence, then you should decide how much work you are able, or willing, to do yourself with our guidance. For example, if you do not want to spend the time to initially draft a PPA yourself according to our PPA kit, then either our Top or Good quality PPA service is a good choice. If, however, you are willing to draft a PPA under the guidance of our PPA kit, and have relatively good confidence in the marketability of your idea, but only have a limited budget to work with, then either of our Drafting Basic Plus or Drafting Basic service is ideal. Because the Drafting Basic Plus level of service includes a broad claim, it is a good compromise between cost (e.g., "Drafting Basic" PPA) and quality (e.g., the "Good quality" PPA). Some inventors have multiple ideas they wish to pursue patent protection for. Often they do not know which one will be the most well received in the marketplace and cannot afford the cost of procuring high quality PPAs for all of them. Some clients find a good approach in this situation is to procure, for the idea they have the most confidence in, a Quality PPA that is then used as a template to pattern PPAs for their other ideas, and use our Cost Oriented PPA services to clean up and assure minimum legal validity for each of them.
Is your do-it-yourself approach right for me?
Well, it depends what we are talking about. When it comes to patent law, there are so many variables involved to say anything definitive when it comes to what an inventor should, or should not do themselves. However, the question is better framed in the context of what your goals and risk tolerance levels are, with the understanding that as with any task (e.g., filing your own tax return, repairing your car, etc.), you will likely get the best quality job done when you have a professional do the work. To help you better understand the context, let us compare filing your own Patent Patent Application PPA to filing your own income tax return. For example, much of writing a PPA is very similar to filing a tax return, where much of the basic calculations and filing out the forms can be done yourself after reading the IRS instructions. And, if you either do not have the time to fill out the forms and/or read all those IRS instructions, then you will have to pay a CPA to do it for you. Ideally, if you do the routine work yourself according to the basic IRS instructions, and have a CPA review your forms, then you can save a great deal of money, because the true value that the CPA brings to your tax return filing is to make sure that you get the largest refund, you do not break any IRS rules, and help assure you do not get audited. In the same way concerning Patent Applications, the real value that a Patent Practitioner offers you is to get the greatest patent scope (like a tax refund), make sure you do not break any USPTO rules (like IRS rules), and try to avoid legal pitfalls that could lose you a patent infringement case in court (like avoiding an IRS audit). In this way, if you are willing to draft the PPA under the guidance of our PPA kit (like filling out IRS forms using tax form instruction guides), and have us fix obvious problem (like a CPA reviewing your tax return), then the DIY approach can work for you if you understand and accept the quality -vs.- cost tradeoffs that always go along with doing anything yourself.
Of course, there are some aspects of Patent Application preparation that are more amenable than others to non-practitioner drafting. For example, the least suitable aspects of Patent Application practice for the "do-it-yourself" (DIY) approach is the drafting of claims, replies to office actions during prosecution, and more advanced matters. In contrast, the most suitable DIY task is PPA preparation and filing. This arises from a "loop hole" in Patent Law that provides an opportunity, in contrast to a full Utility Patent Application, for an average person to file a PPA written in plain English, without claims, and according to simple filing procedures. In this way, anyone who can write coherent, even if simple, sentences describing how to make and use their invention can write and file a legally valid PPA themselves with the basic guidance that we provide. However, without our professional review/guidance there is no guarantee that the application will be minimally legally valid. So, although a complete DIY approach as provided by our DIY PPA kit is somewhat practical with the PPA, a more optimal approach is to "DIY with our support", which is a Provisional Patent Practice relatively unique to our firm.
I decided on doing a Cost Oriented PPA, but which level of service is right for me?
If you have already converged onto our Cost Oriented PPA services, then you are likely working with a very tight budget. It is better to take a swing at making something of your neat idea and protecting it, than to do nothing at all, and watch someone else do it- while you say to yourself "I should have done something with that idea!". The same analysis as that for the Quality Oriented PPAs applies here by replacing "Top Quality PPA" with "Drafting Basic" and "OK Quality PPA" with our "DIY PPA kit". That is, if you simply cannot afford our PPA Drafting Basic service then the PPA Revision, Review, email Support, or DIY PPA kit levels of service will fit your budget. Basically, each level of service will likely result in a higher quality PPA and result in a stronger US Patent. The DIY PPA kit is ideal for those who have virtually no money, but want a guarantee of at least securing a filing date for there exact idea, usually before disclosing it to others. For just a little more money, inventors in this situation can greatly benefit from our PPA email Support service, which helps you get answers to PPA preparation and filing questions you may have that are specific to your invention or goals. If it is within your budget, our PPA Review service is the more optimal approach that best balances the quality -vs.- cost tradeoffs for extremely cost constrained inventors. The PPA email Support, and PPA Review level of services address "minimum legal validity", which is what matters to get a patent. In the "Revision" service we clean up the language of your PPA to remove or reword obvious things that could harm you during examination or regarding "Litigation Validity". So, in this way, the "Revision" service additionally improves the "Litigation Validity" of any resulting patent, but it does not usually add legal Safeguards. The "Drafting Basic" service, takes your PPA and not only corrects it for "minimum legal validity" and harmful language, but it also adds helpful language (or "legal Safeguards") to improve Patent Scope and "Litigation Validity."
The next decision point to consider is how much confidence you have in the marketability of your invention. Of course, the higher your confidence, a proportionately greater investment in patent protection warranted. That is, if you have done some basic marketability research (e.g., professionals like your idea, it is selling on eBay, you see inferior products in the market place, & etc., for marketing ideas read books by Jay Levinson) that is very positive, then you should at least procure the Drafting Basic service (if not a full Utility Patent or a Quality Oriented PPA) that you can afford. Similarly, the lower your marketability confidence, a commensurately lower amount of investment is justified. If, however, you have relatively good confidence in the marketability of your idea then either of our PPA Revision or PPA Drafting Basic service is ideal. Some inventors have multiple ideas they wish to pursue patent protection for. Often they do not know which one will be the most well received in the marketplace and cannot afford the cost of procuring high quality PPAs for all of them. Some clients find a good approach in this situation is to procure, for the idea they have the most confidence in, our PPA Drafting Basic service that is then used as a template to pattern PPAs for their other ideas, and use our PPA Revision or PPA Review service to clean up and assure minimum legal validity for each of them.
Is a flat-fee approach right for me?
First, see if your invention is eligible for a Flat-fee quote. Then you should consider if you can provide a clear and complete description of your invention and all its applications and variations such that we can work almost exclusively from your description to draft your application. The goal of our Flat-fee approach is to avoid costly and time-consuming disclosure meetings, phone calls, emails, and draft iterations that result from errant assumptions regarding misunderstandings or vague disclosures. If we can efficiently draft the whole application based on your clear detailed description of your invention, then we save time, and you save money. Our flat-fee service is ideal for inventors who's inventions are completed (i.e., no significant last-minute changes) and relatively easy to understand, such that only very limited verbal/email communication, if any, is necessary for us to clearly understand every aspect of the detailed disclosure. Furthermore, those who can provide us a clear and coherent plain-English, detailed invention description will benefit the most. In general, you should always provide your Patent Practitioner as detailed, and as complete a description as possible, because this will always translate into a better quality patent application and result in a stronger awarded patent, if one is granted.
Our flat-fee service is not suited for inventors who's inventions are in flux (i.e., significant last-minute changes) and/or requires significant verbal/email communication for us to understand. Furthermore, those prefer to disclose there invention by way of a verbal disclosure meeting (whether on the phone, Internet, or in person) will find hour hourly patent preparation service more amenable to their needs.
Most inventors prefer to do a little extra work in writing a detailed description to save money and limit there patent costs. If you are not sure about your particular situation, please feel free to email us your question(s).
How do I know which Flat-fee category my idea falls in?
For the purpose of assessing a flat-fee for your Utility or Quality Oriented Provisional Patent Applications, we, generally, categorize the complexity of inventions into the following categories:
After you requested a flat-fee quote from us and it is determined that our flat-fee service is right for you, we will provide you a flat-fee quote. However, to help you get a feel for what you might expect beforehand, what follows is by no means definitive, but instead outlines some basic concepts you should consider for each category:
The above overview is by no means an exhaustive or fixed characterization of each category, and should only be viewed as a very general guide. When you contact us to evaluate your invention for a flat-fee quote, we will make a judgment on a case-by-case basis according to the spirit of the above characterization. In the end, to make a living, we have to make an accurate estimate of how much time it will take us to prepare your patent application. Generally, the more complex the invention, the more time it takes to properly describe it in detail, and, much more time will be spent to properly claim it.
Is the you-write we perfect Utility Patent Application approach right for me?
In general, those that like the do-it-yourself and flat-fee approaches, as described, would likely benefit, to some degree, from the you-write we perfect option. However, there are no guarantees that the application you would write will save you more money than our flat-fee offer. This option will really only save money for the seasoned inventor that has some experience in writing patent applications, and needs a profession to review and revise their draft to bring it into compliance with current best practices.
Could I lump multiple apparatus and/or methods together into one application?
Only if they are based on the same structure or method, or simple variations that would not be patentably distinct. Otherwise, you will get a restriction requirement during patent examination, which would end up costing you more than if you initially filed the applications separately due to the cost of our time in responding to the restriction requirement and/or having to prepare separate patent applications.
When should I apply for a Design Patent?
Design Patents protect the look, or ornamentation, of an article. If you believe that the appearance of your invention has marketing value, independent of its functionality, then a Design Patent usually makes sense. Unlike a copyright or trademark, a Design Patent protects not only the novel aspects of your design, but also any obvious variations that a would be copyist might come up with to compete against you. For example, a company The Shaper Image is a prolific product designer and often protects these designs with Design Patents. The cost to apply for, prosecute, and be granted a Design Patent is substantially less than the corresponding cost of a Utility Patent Application. The question boils down to determining whether the cost to protect the design is justified by the benefit of blocking (licensing) it from (to) others. If you believe that the look and feel of your product significantly motivates its sale to consumers, then a procuring a Design Patent is usually a good choice. We provide an especially low cost Design Patent Application service, that makes it a much more cost effective proposition than what competing patent firms offer. You should keep in mind that it is common to protect the function/structure of a product with a Utility Patent, and the appearance of the product with a Design Patent.
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