Keep it simple!

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I’m not an expert. I’m just a guy who likes to think about stuff.

Have you ever read something that speaks directly to you? I read such a thing a few days ago. The title of the blog post was, “The Simple Secret to Getting more Word-of-Mouth Referrals,” written by Michael Katz. The secret? Say what you do…plainly! It seems so obvious, but I know from personal experience it’s not.

I was at a networking event, sitting at a table. A couple asked to join me. I said yes. A gentleman asked to join the table shortly afterwards. We said yes. When the woman in the couple asked the gentleman what he did for a living, the gentleman replied, “I work with athletes, specializing in <insert technical mumbo-jumbo none of us at the table understood>.” He prattled on for at least five minutes (it seemed that long, at least). The couple and I were just smiling and nodding as he spoke. The whole time, I’m thinking to myself, “Why couldn’t he just have said that he’s a personal trainer and leave it at that?

In his blog post, Michael Katz explains that people typically only care about finding a match. If you need a mason, you’re going to ask your friends and family if they know a mason. They’re going to wrack their brains to come up with someone. Perhaps your brother plays on a recreational basketball team with a mason. Does your brother know if the mason is good? Probably not. Your brother just knows that he’s a mason, and he’s going to give you the mason’s name. After that, it’s up to you to vet the mason. But the match is all your brother cares about.

This line in Katz’s article really stood out to me: “Here’s the bottom line. Being seen as an experienced, capable, impressive professional who can get the job done is important, no doubt about it. But none of that matters until someone throws your name into the ring as a possible contender. And that won’t happen (much) until what people think you do matches what people think they need. Keep it simple.”

It’s so true! If the gentleman at the table had just said he’s a personal trainer, it would’ve made a stronger impression in my mind. If I came across someone else at the networking event looking for a personal trainer, I could say I was sitting with one at my table. I would have recognized the match.

Explain what you do in a way that anyone can understand. When people ask me what I do, I say I’m a patent agent. If they don’t know what that means, I say I help people with inventions apply for patents. That’s easy enough for people to keep in their minds. If they meet someone who’s interested in applying for a patent, they’ll have a much easier time remembering me because my explanation of what I did was simple enough to understand.

Michael Katz says, “Keep it simple.” I agree. Do you?



Watch the money!

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I recently co-presented a 3 hour seminar on intellectual property. The presentation helped make clear all the things inventors need to think about before deciding to file for a patent. One of which is cost.

Not only will you pay a patent practitioner to prepare your application and prosecute it on your behalf, you’ll also pay fees to the patent office. And the fees add up.

First, you need to determine whether you’re a large entity, a small entity, or a microentity. Large entities have more than 500 employees. Small entities are individual inventors, non-profits, institutes of higher learning, or companies with 500 or less employees. Microentities must satisfy the small entity requirement, plus must not have filed more than four previous applications, and must earn less than $150,000/year. The large entity fees are double the small entity fees. The microentity fees are half that of the small entity fees.  For instance, a large entity pays $260 to file a provisional application, a small entity pays $130, and a microentity pays $65.

Here is a breakdown of the fees due to the patent office for small entities:

After every step of the application, you need to think about whether it makes sense to go forward. Here’s an example. If your assigned patent examiner issues a final office action (i.e. the patent examiner has rejected some or all of your application’s claims), you have some options, such as filing a request for continued examination, appealing, or filing an amendment to the application. The patent practitioner will charge you for executing the chosen option. Perhaps after filing a provisional application, you started selling your invention or offered to sell it. If sales are not going very well, and you don’t anticipate sales picking up, or you’re not getting any prospective buyers for your invention, you may decide to forget moving forward with the patent application and save the patent practitioner costs. Perhaps you’ve received the patent, but after five years, sales aren’t going well. You may decide not to pay the remaining maintenance fees.

The bottom line? Be mindful of where your money is going. Do you think what you’re shelling out will be less than what you’ll rake in? Monetization of the patent is the ultimate goal, after all.


Don’t forget the product search!

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I’ve written before about the importance of a prior art search. First, an inventor should do a prior art search. Then the inventor should hire a professional prior art search company to do a prior art search. Prior art searches don’t uncover everything, though. A prior art search will uncover patents and published patent applications. You know what it won’t uncover? Commercialized products!

Picture the following scenario. Inventor A invents a product and starts selling it. No patent application. Inventor B invents the same product, not knowing that it has already been invented by Inventor A. Inventor B files a patent application. Inventor B is technically the first to file a patent application, so Inventor B should get the patent, right? Perhaps, but what good is the patent?

The product is already being sold by Inventor A. That constitutes a public disclosure. Inventor B could go through all the time and expense of filing for a patent. Inventor B may even obtain the patent. But anyone can challenge the patent by proving that Inventor A was already selling it at the time Inventor B applied for the patent, putting the validity of Inventor B’s patent in jeopardy.

The moral of the story? In addition to doing a prior art search, which turns up patents and published patent applications, also do an Internet search for the product. Is it being sold online or in stores already? If so, you probably shouldn’t bother applying for a patent.  If you can’t find the product online, and your own prior art search doesn’t unearth anything, get a professional prior art search done.  It’s much better to spend the money on a prior art search than to go through the trouble of getting a patent issued only to realize that it can be invalidated.


What about the drawings?

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  • Drawings are required (for the most part)
  • Multiple drawings showing multiple views of the invention are recommended
  • Provisional application drawings are not required but are highly recommended
  • Format for utility application drawings is strict, so use a patent illustrator to prepare the drawings

A picture says a thousand words, especially when it comes to patents.

If it’s possible to depict an invention as an illustration, a patent drawing is required. In the case of chemical compounds and methods, a drawing is not required, but is still recommended. Chemical formulas work well for chemical compound patent applications. Flow charts are advisable for method patent applications. Essentially, anything visual that will help the patent examiner better understand the invention is always the way to go.

One patent drawing is often not enough. Several drawings showing multiple views of the invention (e.g. top, side, bottom, perspective) are standard. Exploded views can be used to better reveal all the components.

The format for patent drawings (e.g. page size, margins, etc.) is specific, so it’s important to submit proper drawings. Have an illustrator who specializes in patent drawings prepare the drawings. An illustrator may charge as little as $50 per page. It’s worth the cost.

Black and white drawings are mandatory for utility application drawings; no color. A component must be identifiable by number. A line from the component number to the component is required. If you want to specify an assembly of components, an arrow must point to the assembly. Here’s an example of identifiable components and an assembly of components. Components 101, 102, and 103 are clearly shown (do not use arrowheads for identifying components). The assembly of components 100 shows an arrowhead pointing to the assembly of components.

Even though provisional applications don’t technically require drawings, include them anyway. A provisional application must fully support the subsequently filed utility application. Without drawings, it’s more difficult to show that the provisional application meets this requirement. The format for provisional application drawings isn’t as strict as for utility applications, so it’s OK to submit color drawings in the provisional applications. Photographs are even acceptable. But when it comes time to submit the utility application, you must follow the Patent Office’s guidelines for drawing submissions.





Utility patent or design patent?

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I’m not an expert. I’m just a guy who likes to think about stuff.

Utility patent or design patent? Which one is right for you?

When most people think about patents, they’re likely thinking about utility patents. A utility patent protects how an invention is used and works. It must fit into one of these five groups:

  1. a process
  2. a machine
  3. a manufacture
  4. a composition of matter
  5. an improvement of an existing idea

It will have at least one claim and at least one drawing.

A design patent protects an invention’s appearance. It will have one claim and at least one drawing.

Utility patents are more expensive to get because they have more fees associated with them. For instance, once a utility patent is issued, one must pay maintenance fees 3.5 years, 7.5 years, and 11.5 years after patent issuance. There are no maintenance fees for design patents.

Also, utility patents typically take more time to get. 2-3 years after application filing is standard for a utility patent. 1-2 years post filing for a design patent.

Utility patents are valid 20 years after application filing. Design patents are good 14 years after patent issuance.

Whether you want a utility patent or design patent really depends on what you want to protect. For example, if you develop a new way to toast bread that is different from current methods, a utility patent is likely what you’re looking for. If you only want to protect how this bread-toasting invention looks, a design patent is suitable. If you want to protect the way the invention toasts bread and its appearance, it may make sense to file for both a utility patent and design patent.





Build a job!

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I’m not an expert. I’m just a guy who likes to think about stuff.

People tend to think that their job search is limited to those that are advertised. That’s simply not true. Companies have all sorts of problems – some that they don’t even realize.  A job seeker would be wise to think of the problems companies have and how they can solve them.

Have you ever given any thought to creating your own job? You’re helping to solve a problem and, since there’s no one currently doing the job you’re proposing, there’s no one to compete against.

What does it take to create your own job? These 3 steps:

  1. Think about what problems companies have
  2. Think about how you can solve those problems
  3. Ask your potential hiring manager to have a conversation about the problem

What problem does the company have?

You’ll have to do some guesswork to come up with problems companies have, but that isn’t too hard. For instance, if you’re a job-seeking project manager, and you look at a company’s LinkedIn profile and notice that there are no project managers, there’s likely a problem. No one claims responsibility for the execution of a project. Departments are pointing fingers at each other. Cost overruns, time delays, scope creep – all are potential issues. As a project manager, you can go to potential hiring managers inquiring whether these issues are affecting business. Approach hiring managers asking about a metric that they value (e.g. cost, time, productivity, etc.)

How can you solve the problem?

In your initial contact with hiring managers, tell them a story. People love stories! The story should be about how you solved the problem the hiring manager may be experiencing. The story shouldn’t be too specific – just enough to make the hiring manager want to talk to you. Contacting hiring managers in this manner lets them know that you’re thinking about the problems their companies are facing specifically. It’s not a form letter you send to everyone. Who pays attention to those anyway?

Ask for a conversation

Notice I didn’t say ask for a chance to talk about a job. Don’t even mention a job. In fact, technically, there’s no job to mention, since there was no job advertisement. Ask for a day and time to chat about the problem. How do you get the hiring manager’s contact information? I mentioned that in a previous blog post, but in short, company email addresses are pretty easy to guess. They are typically:

If the email you send bounces back, try another configuration of the email address. You should get it right eventually. Simply ask for a chance to talk and wait for a response.

Try following this process for multiple companies simultaneously. Never contact just one company and wait to hear back – contact several. You improve your chances of getting callbacks the more companies you reach out to. However, don’t email just any company – only the companies you think you can help and the companies you’re interested in working for.

Let me know how it goes!




What’s the difference between a patent attorney and patent agent?

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I’m not an expert. I’m just a guy who likes to think about stuff.

What’s the difference between a patent attorney and patent agent?

If you have an invention and want to hire someone to draft, file, and prosecute your invention, you have two options: a patent attorney or a patent agent. Which one do you choose?

The main difference between a patent attorney and patent agent is law school and bar admission. Patent attorneys have graduated from law school and passed a state bar exam. Patent agents haven’t. Both patent attorneys and patent agents have passed the USPTO Registration Examination (aka the patent bar).

Patent attorneys tend to be people who earned a STEM degree and then went to law school. They may have experience working in a STEM field, but often do not. Patent agents tend to have extensive experience working in a STEM field before becoming patent agents. When it comes to knowledge of the law, patent attorneys have a leg up on patent agents. But regarding the actual workings of an invention, patent agents typically come out on top.

Both patent attorneys and patent agents are able to draft, file, and prosecute patent applications before the USPTO. However, if you’re ever sued for infringement (or want to sue for infringement), an attorney is necessary. Patent agents can’t litigate, only attorneys can. Also, only attorneys can deal with trademark and copyright issues; patent agents are limited to patent work only.

So which do you hire: a patent attorney or patent agent? Well, it depends. When initially speaking with a patent practitioner, see if they know what they’re talking about. If you’re patenting software, a patent practitioner with software experience and/or an electrical or computer engineering degree is best. What does he charge? Does he use billable hours or a flat fee pay structure? Is he easy to get a hold of? Does your application seem like a priority? All of this should factor into your hiring decision.

Why do you want a patent?

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I’m not an expert. I’m just a guy who likes to think about stuff.

Why do you want a patent?

It’s a question I don’t think enough inventors think about. Getting a patent isn’t easy. It takes time and money. You’ll wait on average three years to get a patent. It’ll cost thousands of dollars. Why do you want a patent?

If your answer is, “I want a patent to make or sell my invention”, think again. A patent gives you the right to keep others from making or selling your invention. It DOES NOT give you the right to make or sell your invention. What’s the difference? It’s possible for your patent to infringe on someone else’s patent. To infringe on someone else’s patent, you must infringe on one claim. Let’s say that you invent a laptop that includes a copier and scanner. Someone else patents a laptop that includes a copier, scanner, printer, and fax. The other person has four broad claims in its patent, like the following:

  • Claim 1: A laptop comprising a scanner.
  • Claim 2: A laptop comprising a printer.
  • Claim 3: A laptop comprising a copier.
  • Claim 4: A laptop comprising a fax.

If the other person patented the invention before you filed for a patent, you’d infringe on claims 1 and 3. So if you get a patent for your invention, the other person may assert that you’re infringing on his invention, precluding you from making or selling your invention. A caveat in this example is that a patent is only enforceable in the country in which it is granted. If the other inventor has a patent in Japan, and you’re making or selling your invention in the US, the Japanese patent will have no bearing on you making or selling your invention in the US. You just won’t be able to make or sell your invention in Japan.

Next week, I’ll address another answer for the question, “why do you want a patent?” Stay tuned!





What if I have new ideas after filing?

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I’m not an expert. I’m just a guy who likes to think about stuff.

You’ve written a provisional application. You now have 12 months to file a utility application. What if you have new ideas to add to that invention?

You have options. If you come up with those new ideas within 12 months of filing a provisional application, you can file multiple provisional applications. This option is a helpful one since the provisional filing fee is only $130 for small entities. When you eventually file the utility application, you can claim priority to all the provisional applications. The patent examiner will look over the provisional applications to ensure that they fully disclose the invention claimed in the utility application.

The second option is to file a continuation in part application. Picture this. You’ve filed a utility application. After filing the utility application, you’ve thought of new ideas to add to the invention. You can file a continuation in part application, while the original utility application is pending, to include those new ideas to the invention. The filing date for the continuation in part application will not be the filing date of the original utility application, though. The filing date for a continuation in part application is the filing date of that application. So for instance, if you file a utility application on June 1, 2016, and you file a continuation in part application on July 15, 2017, the filing date of the continuation in part application will be July 15, 2017. The cost of filing a continuation in part application is the same as for the original utility application ($730 for small entities). Make sure that you file a continuation in part application before the original utility application issues as a patent, though. Failure to do so will result in the original utility application potentially being used prior art against you, and the continuation in part application may get rejected.

As you can see, generating new ideas before the utility application is filed is a cheaper option. During those 12 months, try as best as you can to do further experimentation to come up with new ideas for your invention. But if you have new ideas after filing the utility application, you always have the option of filing a continuation in part application.


Startup tips

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I’m not an expert. I’m just a guy who likes to think about stuff.

I have worked for a couple different startup companies. Having gone through that experience, I have some ideas on what they should focus on. If you’re thinking of forming a new business, here are some tips.

  1. Get your IP squared away. File provisional patent applications and keep track of when a year has passed. You have 1 year after filing a provisional application to file the utility application that will be examined by the patent office. You’re more attractive to investors when you have IP.
  2. Join associations related to your field. Investors tend to be members of these groups, too. For instance, I’m a member of the San Diego Entrepreneurs Exchange (SDEE). SDEE offers pitch workshops, IP seminars, and monthly happy hours, all meant to help its members learn and connect.
  3. Don’t spend money when you don’t have to. I once worked at a small company who spent money on outfitting the building with TV monitors. The monitors were never used. Not once! I’m not sure what was supposed to be shown on them anyway.
  4. Keep in touch with associates from previous jobs. They may be your first customers. They at least can point you in the direction of potential customers. In other words, try not to burn any bridges. Another thing: don’t just contact former coworkers when you want something from them. Shoot them an email every now and then to say hello, so when it’s time to ask for something, they don’t think that you’re using them.
  5. When hiring, bring on people who are as passionate about your company as you are. If you can sell employees on the company, chances are you can sell investors on it, too.
  6. Be willing to give. Oftentimes, we get caught up in what we want. But we must be willing to give. I offer a monthly newsletter with information for people interested in patents and writing, since I’m interested in patents and writing. The newsletter is to show people I know what I’m talking about, to provide useful information to them, and to keep my name in their heads. You reap what you sow.

Do you have a great invention idea and want to keep others from ripping it off?

If so, I'm sure you must have questions about the patent application process.


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