Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[indust]

Geetings to all. I am a total newbie to IP. I am a industrial designer and have finally (after 40 years of assisting other inventers) come up what with what is shaping up to be a very cool invention. I have had a prototype made and it works perfectly. Somehow this device must have slipped being invented all these years! I have been searching the web many times to try to find something similiar but so far nothing. Seems to me it works so well that if it has been previously invented it should be out there selling well. Anyway enough background hype.

This device would probably be best mass produced in a low cost facility probably in China. I am a designer - not a businessman, I think it best to try to sell the design to an existing manufacturer. I am not a risk taker by nature and neither can afford substancial international patenting or any attempt at inforcement of property rights due to an infringment in some foriegn land .

I worry that an affordable local patent would be a two edged sword. What strikes me is that by patenting, the very disclosure of the design of a new invention makes it available via the net etc to the whole world. The novely value is lost and the design can be copied or reverse engineered in some oblique location or way. Surely a disguised clone is more likely to appear if the device is patented than if it is sold as a 'trade secret' to a well resourced manufacturer who can better establish appropriate IPP.

On the other hand I can see that a potential buyer might gain some sense of security if the invention is marked and is 'patent pending' .

Can someone explain to me how a local patent can do more good than harm?
Any advice as to how best I might protect and present my invention for sale would be very welcome.

[bartmans]

If you are afraid of copycats coming in and reproducing cheap versions of your invention, the only remedy to prohibit that would be patenting. For this protection you do not have to have patents in the (cheap labour) countries where the design is copied, but you should have patent protection in countries which are important markets for your device.

Secondly, it is true that anything for which a patent is appleid for will be published, but this happens only 18 months after filing your patent application. Thus, you can profit of one and a half year of 'trade secrecy' while still having provisional patent protection. You also do not need to file for patent protection in all countries at the beginning. Using the PCT system, you can defer these filings (and thus the major costs) for 30 months after your primary filing.

Lastly, you said you have searched if your device would be still novel. Have you also searched in the patent databases? The most complete (and free) database is espacenet (see http://ep.espacenet.com/) which is easily searchable (tip: try to find a classification code for your invention and then search on all patents with that classification).

[DogDayPM 9er9er9er]

I second everything Bart wrote and he raises a good point about searching for published descriptions vs. presuming the device is unknown because you can't find the device itself available.  Many, many more devices are described in patent and other publications than can ever be found as physical/marketed devices.  (Although as you point out, as a great solution for an unmet need, I do understand you'd think someone would have it available for sale.)

Another point about filing the patent locally is that you do have up to 1 year to decide whether to file more broadly/internationally such as by filing a PCT application.  If you get a company signed on within that time frame and they're gungho to market your device, they also will desire you to have patent protection in those foreign countries likely to be large sales markets for the device.  This assumes you grant them an exclusive license to the patent application.  So let them pay for the foreign filings.

I don't know how a patent can do more harm than good.  I can say how not patenting can do more harm - as soon as your device becomes available, isn't someone going to be able to figure out how to copy it?

[Robert K S]

I don't know how a patent can do more harm than good.

In limited circumstances, it could.  The classic examples are the secret formulas of perfumes, beverage products, etc.  If Coke had patented their formula a century ago, would they be in business today?  Their trade secret preserves their brand.

In the case of the OP, it sounds like an easily reverse-engineered widget, and he's already stated that he does not intend to enforce his patent.  If the invention is commercially successful, the only way he will triumph over the copycats is by lower cost manufacturing or better marketing.  For a killer app that everyone will try to copy, an unenforced patent worth the same as no patent at all.

Obviously, if the invention is as good as he thinks, he will have the finances to enforce the patent, and that shouldn't be his worry.  The bigger question will be, will he decide it is worth it to try to obtain and enforce a patent in countries with lax or convoluted IP protection systems, e.g., China.

It's less than $500 for a small entity to file a utility application in the U.S.

[indust]

Thank you very much Bartmans, Dogdaypm and Robert KS. You have been very helpful.

Yesterday I did some more trials on my invention prototype and I am increasingly amazed at its function and market potential.  I understand any scepticism!  I have worked with inventers for 40 years helping to develop their inventions and see how the ego gets in the way and how easily they become blind to the reality of their situation. I have dreamt up many devices in my 40 years as a industrial designer but this one is the first to bring such confidence,optimisim and justify the effort and cost of a working prototype.  In short I can say it is a new type of machine tool. Much smaller and lighter than its heavy cousins, and operates on a completey different and apparantly unique operating principle. Of course I worry that it has been dreamt up before and patented - but somehow was not developed... and is languishing away somewhere....

Thank you for the esp@cemet search link. I searched via this and found 244 similiarly worded machine descriptions. Well that took me some time to troll through!  A headache now and a better knowledge of how many machine inventers and wierd and worderful devices have beed dreamt up. Yet again, as with other searches, nothing remotely similiar was found.

Thank you for explaining the delay periods from patent application date to any granting date - during which time it would be 'patent pending' - or 'patent applied for'? and buyer can be sought with that title yet the design would not be publicly available?. Now it is starting to look like I should apply for a patent.

I live in New Zealand and a local patent here is quite affordable for me. But If a potential buyer broke any non disclosure agreement with me in a foriegn land or perhaps passed on the design, would any foriegn patent search and application uncover the New Zealand patent and prevent the application - how would that work?  I mean would a NZ patent be of any benefit? is that why you suggest a USA utility patent? After your suggestion I have done a bit of a study on this via google etc, but it is quite wordy and unclear to me. so any expaination in laymans terms would be most helpful.

[Robert K S]

I know nothing about NZ patent law, but I do know that unless your machine tool functions to eliminate opossums, there is going to be a bigger market for it in the U.S., and it would behoove you to establish market protection in your biggest markets.

If you apply for a patent in NZ, you're going to want to apply for a U.S. patent within a year.  Given the wording of 35 U.S.C. 102 (d), I suppose it's possible you could wait more than a year and still be eligible for a U.S. patent, but I wouldn't risk it.

Filing a PCT application will give you a nice expensive parking space where you can let your patent application reside for up to 30 months while you wait to determine whether it will be commercially successful enough to justify filing individual applications in various countries around the world.  Filing for patents in every country in the world would cost you a bajillion dollars, so pick the markets most important to you.

[indust]

Thank you. I need to do some study now as to which type of patent application will be suitable and affordable. any more advice is very welcome.

The more I learn, the more questions are raised. During my searches, I have found it seems to me that patents apply to specific applications. So if one applies for a patent for a combination refrigerator/drive mechanism for an ice cream cart and drawings etc to suit, only that applicaton could be protected. If another inventor by chance reinvented (or stole the idea ex browsing patents) a similiar device but applied it to lets say a aircraft food trolly combination refrigerator/drive mechanism, would that then be another distinct patentable 'invention'. I think I can anticipate a response "If just the refrigerator/drive mechanism were patented, it would be protected in any application."  But the Patents seem to be application based.  They seem to be classified under sales cart - ice cream -drive - refrigerate. And drawings/descriptions to suit. I am probably not expalining my point very clearly here! but if we breakdown every invention into its componants - (ultimately made up of standard gears,motors,shafts,refrigerator units,bearings, so on) I am sure some of those componants could be found in other patented inventions. It is only the assembly of those (common place or already patented componants) into a specific application that gives it novelty and allows it to become patentable. It seems to me an invention is an 'a specific assembly of other inventions or standard non patentable componants into a novel application' those other invention patents are not infringed as the application is different, If this is so I wonder where the boundries of an application are, and how are they decided....This is getting too abstract for an engineer like me!

[Robert K S]

patents apply to specific applications. So if one applies for a patent for a combination refrigerator/drive mechanism for an ice cream cart and drawings etc to suit, only that applicaton could be protected.

Things may work differently in NZ, but in the U.S., what you have said is not correct in general.  Patent claims generally comprise a preamble and then a body full of limitations.  Those "applications" you refer to are generally in the preamble, and there's case law out there that says the preamble generally isn't limiting.  (It can be limiting, however, if it is "necessary to give life, meaning and vitality to the claim" or if the applicant had, during prosecution, relied on the preamble to distinguish it over the prior art.)

There's also the "doctrine of equivalents" which may apply.

Also, don't forget, the question of what a claim protects given its construction is different than the question of what a claim may be rejected upon during examination given what is disclosed in the prior art.  If a prior art device has structure capable of performing the intended use of a device you're trying to patent, even if the reference doesn't envision that particular use, your claim may be rejected based upon that prior art.  This would prevent you, say, from patenting a thumbtack you invented to place on teacher's chair over prior disclosures which taught thumbnail tacks envisioned as useful only for pinning papers up to corkboards.

[DogDayPM 9er9er9er]

Thank you. I need to do some study now as to which type of patent application will be suitable and affordable. any more advice is very welcome.

The more I learn, the more questions are raised. During my searches, I have found it seems to me that patents apply to specific applications. So if one applies for a patent for a combination refrigerator/drive mechanism for an ice cream cart and drawings etc to suit, only that applicaton could be protected. If another inventor by chance reinvented (or stole the idea ex browsing patents) a similiar device but applied it to lets say a aircraft food trolly combination refrigerator/drive mechanism, would that then be another distinct patentable 'invention'. I think I can anticipate a response "If just the refrigerator/drive mechanism were patented, it would be protected in any application."  But the Patents seem to be application based.  They seem to be classified under sales cart - ice cream -drive - refrigerate. And drawings/descriptions to suit. I am probably not expalining my point very clearly here! but if we breakdown every invention into its componants - (ultimately made up of standard gears,motors,shafts,refrigerator units,bearings, so on) I am sure some of those componants could be found in other patented inventions. It is only the assembly of those (common place or already patented componants) into a specific application that gives it novelty and allows it to become patentable. It seems to me an invention is an 'a specific assembly of other inventions or standard non patentable componants into a novel application' those other invention patents are not infringed as the application is different, If this is so I wonder where the boundries of an application are, and how are they decided....This is getting too abstract for an engineer like me!

I would say you're doing a good job of picking up the basics very quickly.

Two scenarios.  #1, let's say the combination refrigerator/drive mechanism is completely unknown.  Sure, all the coils/gears/condenser(s) it comprises are known, but no one has ever before put them together to make the combination refrigerator/drive mechanism.  In this case, the refrigerator/drive mechanism itself should be patentable, irrespective of the use to which it is being put.

#2, let's say the combination refrigerator/drive mechanism is already known, but is only used for a specific industry and no one in his right mind would dream of trying to "Tim Taylor" retrofit an ice cream cart with such a combination refrigerator/drive mechanism.  This is the case with the patents you're seeing now - the mech is known, but the use to which it's being put is new and un-obvious.  So what gets patented is the special ice cream cart having the combo fridge/drive.

Because the vast majority of inventions are those building on what's previously known, most of the patents fall into that category.

Now, there is one further scenario - the inventor is working on the ice cream cart and invents (for the very first time) the combination refrigerator/drive mechanism.  But engineers are sometimes quite myopic (hey, I am one) and focus very narrowly on the task at hand, so they may write a patent application claiming their ice cream cart with combo fridge/drive, never realizing they could have gotten a patent on the broader mechanism.  And patent attorneys have similar struggles with narrowness but for different reasons.  Their job is to try to get the broadest protection an invention deserves.  But they can't possibly be omniscient as to all the prior art, and there is a definite danger in attempting to claim an invention too broadly.  Broadly claimed means the patent office will search very broadly for invalidating prior art.  So claiming too broadly means they may lose a chance to get any patented claims for the inventor, where they could have gotten valid claims granted had they only started off with narrower claims that would not have swept in broadly related art^[1].  (These are all things that should be discussed when deciding on what the claims strategy should be.)  The best approach to hopefully making your claims of the proper breadth is to do a prior art search, but these can be expensive ($750-$2000) and if the inventor doesn't want to spend the extra money, then the safer approach is to claim rather more narrowly than rather more broadly.

[1]  You can narrow claims back down during the patenting process, but the patent office many times acts like a bulldog with a bone clamped in its jaws and just won't let go of the broad prior art once they have it in hand.  So even though the claims get narrowed back down, the examiner then just argues that even though the art doesn't show your invention as currently claimed, it would have been obvious in light of the art.  Whereas more narrow initial claims likely would never have caused that broad prior art to have been directed against the invention in the first place.

[bartmans]

DogDay gave a very good explanation on patentability issues.

One more advice from me as a fellow non-US inhabitant on patenting strategy: I would start with filing either a local NZ patent or a PCT patent application. The advantage of this is the relatively low cost at the start and at least 12 months of 'protection' (I will explain that in a minute). The major advantage of an immediate PCT filing is that you will receive a novelty search + a preliminary opinion on patentability during the first year after filing your application (i.e. before the planned publication), which would give you at least a suggestion whether it would be worthwhile to continue the patenting process. If not: withdraw the application, which would also prevent publication (and nobody would ever know you've tried to apply for a patent).

The 'protection' you will get is that you will have been the first to file an application. Anyone coming in after you will be too late and your application will prevail (btw this is not completely true for the USA). Thus, you could after filing your application, easily approach other people, like companies, with your invention without risking that your invention will be stolen. In this scenario, it would be a win-win situation if you would be able to get a company aboard that would be willing to take the expensesn of your patent application(s), also in other countries, while giving you a royalty on sale of the product.
However, this is an optimistic scenario, but if your invention is as good as you are saying it is, who knows?

[indust]

Thank you once again Robert KS, DogDayPM and Bartmans. Most appreciated. DogDay PM you really talk in a way I can follow. Cheers. I am learning lots from you. I am re reading your postings and more and more is slowly soaking in. The next course of action is slowly becoming clear.

I have one other option that occurs to me - I will need to explain some details on the option. It is probably flawed but here goes. I have seen a few inventors over the years pour mega dollars into IPP and lawyers fees only to find that others were not as in love with their creation as they were. I worked with one poor chap that wanted to manufacture as well and slowly lost everything he had. I want to avoid doing that if I can. Also, the recession has given me the time to fully develope this invention, but has put me in a constrained financial position. I work alone and the very fact that I need to keep this invention confidential at this stage makes it more difficult to be sure I am being totaly objective (anther reason why this forum is so appreciated)

So would this work....... because my invention is a machine that makes very specific things, given that I do not want to manufacture these machines myself but rather to sell the design to an established manufacturer, I can present those 'things' as indirect 'proof' of the function of my invention to potential buyers without disclosing its design. (I suppose in a way a bit like the above example for the recipe for Cocacola),( I could present JPEG images etc with decriptions etc). I can target select manufacturers with this promotional material to check my belief that the invention will be very appealing and attract buyer interest. This feed back should also further confirm the novelty of this invention. Once serious senior interest from major manufacturers is established. I would then feel confident to pull out the stops and spend the money needed for PTC application etc engage legal asistance etc. Perhaps I would need to be careful what contact details I disclosed etc etc at that early stage. I can see that I should not be tempted to go as far as disclosing the design as a trade secret with the sole cover of a non disclosure aggreement etc. probably patent application should come before that....? 

[blakesq]

An option is to file a provisional patent application (which is normally much cheaper than a full fledged patent application), which will give you 1 year's worth of patent pending status, so you can see if there is interest in your invention. 

blakesq

[JimIvey]

An option is to file a provisional patent application (which is normally much cheaper than a full fledged patent application), which will give you 1 year's worth of patent pending status, so you can see if there is interest in your invention. 

blakesq

A provisional patent application that will actually provide a priority date should not be significantly cheaper than a real patent application.  The one year to test marketability of an invention is provided by 35 USC Section 102(b), not a provisional application.

It's actually much cheaper to not file anything for the first year (you'd be giving up patent rights for most of the world outside the US).

A crappy provisional application is useful only to the extent you deal with people (potential licensees, for example) who don't understand patents or the law, i.e., people who mistakenly think your crappy provisional application is worth something.

Regards.

[indust]

Hi blakesq. I think that is what the others is talking about above eg PTC.  I agree before I release any details on my invention I will need this. But I am learning that even a patent application is a critical thing. If it is decribed too broadly it is less likely to be granted, if too narrow it may be 'sidestepped'. Really I would be best commisioning expert advice and assistance to prepare that application.

What I am proposing ( and keen to hear from you all is there is any downside) is that I contact potential manufacurers with tempting information on the product perhaps set up an indirect contact web site and email potential buyers notce with with hot links. If my invention enthusiasm is unfounded and I cannot get buyer interest. I stop there. If I can i can justify the cost of legal assistance and serious PTC application etc.

This stage would seem a wise step even if I had patents applied for anyway - as I would probably be wise not to release design details
to an interested party until after I had definite interest and a non disclosure agreement.

Thanks JimIvey - You post arrived while I was preparing this. Ye I can see that a crappy application may amount to little more than 'scaring power' to potential buyers who know little of IPP.

Robert KS, DogDayPM and Bartmans - If you are still following this, your thoughts most welcome!

[blakesq]

Jim Ivey,

When I draft and file a "less expensive" provisional application, it is not crappy.  It is simply an option for the inventor.  The original poster was talking about "PTC" applications, which I assumed meant PCT applicaitons.  If I was right about the original poster's PTC reference, then not filing anything for the first year is not an option, if the original poster wants to publically disclose his invention during that year.  That is, for the newbies, making a public disclosure of your invention prior to filing a patent application, can cause you to immediately lose your international patent rights. 

blakesq

 

An option is to file a provisional patent application (which is normally much cheaper than a full fledged patent application), which will give you 1 year's worth of patent pending status, so you can see if there is interest in your invention. 

blakesq

A provisional patent application that will actually provide a priority date should not be significantly cheaper than a real patent application.  The one year to test marketability of an invention is provided by 35 USC Section 102(b), not a provisional application.

It's actually much cheaper to not file anything for the first year (you'd be giving up patent rights for most of the world outside the US).

A crappy provisional application is useful only to the extent you deal with people (potential licensees, for example) who don't understand patents or the law, i.e., people who mistakenly think your crappy provisional application is worth something.

Regards.