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What application is right for you?

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

You’ve done a prior art search. You think your invention is different from anything that’s already been patented. Now what? Some choose to file a provisional application. Some choose to file a utility (aka non-provisional) application. Some choose to apply for a design patent. What choice makes sense for you?

The difference between utility and design is that utility applications apply to how an invention works and how to make it. A design patent covers how an invention looks. Oftentimes, if you don’t think that your utility application will be successful, you may opt to apply for a design patent instead. Design patents are cheaper to get than utility patents, and usually don’t take as long to get. For a utility patent, it can take up to three years to receive a patent after filing the utility application. Design patents typically take a year to get after applying for one.

Provisional applications only apply to utility applications. Whether you file a provisional application typically depends on your money situation. If you’re relying on angel investors, VC firms, or other external monetary sources to help fund getting the patent, you may want to file a provisional application, since the fees for provisional applications are lower than those for utility applications. After filing a provisional application, you have a year to file the utility application. In that year, you can look for external investors to fund the rest of the application process. If you’re a company that isn’t looking for outside investors, it may make sense to just file the utility application and forego the expense of the provisional application. If you file a provisional application, be careful. Even though the requirements aren’t as strict for provisional applications as for utility applications (e.g. provisional applications don’t require claims or drawings), the provisional application must fully support a utility application. Anything that’s in the utility application must be in the provisional application for the provisional application to fully support the utility application. If not, your filing date will not be the filing date of the provisional application, it’ll be the filing date of the utility application. Why does this matter? Essentially, you would have spent money filing the provisional application for nothing.

Another reason you may choose to file a provisional application is if you aren’t sure about the final incarnation of the invention. You can file multiple provisional applications, adding something new to each successive provisional application. Let’s say you file a provisional application in January, May, and September of the same year. The invention is the same each time you file a provisional application, but you include additional information in each successive application. You have until September of the following year to file the utility application. Your filing date will be that of the September provisional application, provided that the September provisional application fully supports the September utility application. Everything that was in the January and May provisional applications will be in the September provisional application. And everything that’s in the September provisional application should be in the September utility application.

To recap:

  • Make a decision as to whether you want to file a provisional application before filing a utility application, or if you want to apply for a design patent
  • Make sure that the provisional application fully supports the subsequent utility application to ensure that you get the earlier filing date (the provisional application filing date)

What entity are you?

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

For those of you who are interested in filing a patent application, be mindful of your filing status. There are three filing statuses to choose from: large entity, small entity, and microentity. Which entity are you? It depends.

Up until the passage of the America Invents Act (AIA), there were only two filing statuses: large entity and small entity. If you’re filing a patent application on behalf of a business that has over 500 employees, you’d file under large entity status. To be considered a small entity, you’d have to be one of the following:

  • Independent inventors
  • A small business of at most 500 employees
  • A non-profit organization

Independent inventors who have not assigned their invention to a large entity qualify for small entity status. Universities and 501(c) organizations qualify as non-profit organizations. If a non-profit organization has not assigned its invention to a large entity, it can file as a small entity.

The AIA introduced a third filing status: the microentity. To file as a microentity, you either qualify based on experience and income or institute of higher learning. To qualify based on experience and income, you must meet the following criteria:

  • The inventors must qualify as a small entity
  • None of inventors can be a named inventor on more than four applications
  • None of the inventors’ gross income from the year preceding the filing can exceed three times the median US income (currently $160,971)
  • None of the inventors must be obligated to assign the invention to those with a higher gross income than three times the median US income

To qualify based on institute of higher learning, you must meet either of these criteria:

  • The inventors’ employer is an institute of higher learning
  • The inventors are obliged to assign their invention to an institute of higher learning

What’s the big deal with entity status? Money. Microentities pay half the patent office fees that small entities pay. Small entities pay half the patent office fees that large entities pay. If your entity status changes during the application process, you can file a change request asking for the new filing status.

Bottom line: File using the correct entity status. It pays to do so.

 

 

 

 

 

 

 

Start with prior art!

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

You have an invention idea and you apply for a patent application. But what if someone has already patented that idea? All your hard work has been in vain. You wouldn’t have had this problem if you had done a prior art search before filing the application, though.

A prior art search is a search for all patent applications and patents that are related to your invention idea. There are companies whose sole job is to do prior art searches. They have access to databases from around the world and can provide you with a list of patent applications and patents related to your invention. A patent practitioner can take that list and look through all the applications and patents and see what they claim.  If he thinks that your invention can claim something that’s different from what’s claimed in the list, then your invention may be patentable.

There are some patent practitioners who do their own prior art searches. They most likely don’t have access to all the databases and tools prior art search companies have access to, though. Going through a company that routinely does prior art searches will likely give you a more comprehensive list.  The bigger the list is, the less surprised you’ll be by the patent examiner looking over your application. The examiner will do his own prior art search and come up with his own list. You want your list to match his list as much as possible. By having access to more databases than a patent practitioner, a prior art search company is your best bet of your list matching up with the examiner’s list. You’ll be more prepared if the examiner issues a rejection of your application based on a document on his list.

If your application is likely to face rejection, wouldn’t you like to know that beforehand? Doing a prior art search before filing an application can save you a lot of money in patent practitioner fees, filing fees, and other fees. A typical prior art search can cost around $500, but don’t skimp on this step. $500 early on trumps thousands of dollars of fees later on.

 

 

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.

 

Download this primer on the patent application process to get off to the right start!

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