[snip] I am going to get a provisional patent in 1 or 2 weeks but I am unsure if a provisional patent will protect me because I am unsure if I should file , eventually, for a utility or a design patent. If I get a provisional can it later become a design patent?
[snip] Say a utility patent already exists for a tool box for wrenches and sockets wich uses pegs or velcro to secure the tools inside the toolbox. And I have come up with a way to use these same methods for securing other specialty tools in a toolbox made specificaly for a trade in wich it has not been used before. And if my product looks nothing like the other and this system has to my knowledge never been used in the trade that mine is for. Can/should I file a design patent or utility patent or both?
If the answer is a design patent, can/should I get a provisional patent?
Hello Mike.
Some background. A provisional patent
application is just a holding spot. It never becomes anything else, never becomes a patent itself, and it dies in 1 year. What it does do is hold a spot for you to file either or both of a utility patent application or design patent application that claims the provisional filing date. Being able to file a design app based on the provisional app will of course require that the provisional app has drawings illustrating the widgets in question. For more information on the uses of provisional applications, click on "main forum page" (top left) and then from the search box search the word provisional. You'll find a lot of discussion.
A design patent protects the way the widget looks from an ornamental standpoint. Certain things in a widget will be driven by functional necessity - for example, a tool box must be some sort of a container just to be a tool box, and this is a functional aspect. But if you decide that the lid has a certain sweeping curve across the front lip, or the tool securing fasteners have a certain oval (or kidney beaned, etc.) shape then these things (among many other things you can imagine) may be protectable ornamental elements of it. But if what is really the neat thing about your toolbox is the functional stuff relating to how the tools are secured, then even if you protect the ornamental aspects of the securing mechanisms with design patent, if another guy can copy the functional aspects without the same ornamental aspects, then the design patent has not done you a whole lot of good. Others should not be allowed to make more or less "look-alikes", but they can make "works-just-like", if you catch my drift.
NOTE this all pre-supposes that these ornamental choices discussed are YOURS, not copied from the already published tool boxes. If they are copied, then you are not the inventor and can not file for a patent application on them.
A utility patent protects what the thing is or what it does. A validly granted patent must be for something that is both new ("novel") and also not merely an obvious improvement over what is currently known. Based on your brief description of your hypothetical (and no, I don't want you to disclose real details here), I'm struggling with whether such toolbox might make it over the hurdle of non-obviousness, since the only difference seems to be taking fasteners that work well in one trademan's toolbox and sticking them in a different trademan's toolbox. The way the patent office looks at this is to say it is obvious if a person has just substituted a widget known to work well in one environment, into another similar environment that needs a widget that works that way. Especially if in the new environment the widget is just doing the same thing it did in the old environment. On the other hand, if a person has to make changes in order to get the widget to "fit" (work) in the new situation, there may be more hope for avoiding the "obvious" label. Or if the new environment can be argued to not really be similar to the old, such that a person wouldn't normally think to put it there, or especially if it can be shown that the experienced person would normally say, "heck no, it won't work there". Questions of obviousness tend to be arguable both ways, and you may want to do some reading here about that topic as well. I've just kind of skimmed the surface with this post and was trying to not get too legalese on you.
Hope this helps some.
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Topic: is it patentable? design or utility? (Read 1714 times)
