Should you file a patent application?

Before diving into the details of how to patent a product, let’s consider a more fundamental question: Should you patent your product or idea? A wise IP strategy should take into consideration the following factors before filing patent applications:

  • Product lifespan (How long will the product realistically last in the marketplace?)
  • Are the unique features ornamental or functional? Or both?
  • What would be alternative strategies if you do not pursue a patent? (How easily could competitors copy your product? How would you stop competitors from selling knockoffs?)
  • Knowing that your patent will not protect you from infringing other patents, would it still make sense to patent your product if you cannot sell it?

Prior art patent search before filing

If you are contemplating a utility patent, then it may be advisable to have a patentability search done before filing. Novelty searches might not be cost-effective for applicants who are highly familiar with both the marketplace and patent landscape.

On the other hand, novelty searches are less useful for design patent filings since the design patent approval rate is high (i.e., approximately 85%).

Is a prototype required for filing a patent application?

No, but you need to be able to disclose your invention sufficiently so that others will understand what you’re trying to patent. Generally, an adequate level of information on your invention involves drawings and a detailed written description.

Patent the whole product or product parts?

It may seem counterintuitive that patenting a component may lead to broader patent rights than patenting the entire product. How? Because a patent on a component might be more easily infringed by competitors who require the patented part in order to complete the whole product. It helps to work with patent attorneys experienced in consumer goods to develop and implement a smart patent strategy that leads to funding and sales.

How to patent a product: the initial patent preparation and filing

Your patent attorney or agent will do the heavy lifting here, but the most helpful thing you can do is explain the unique features of your product in detail. It also helps to provide context on any existing products (i.e., prior art), and how your product or idea differs from what is already out there.

Jotting down a list of new features, while helpful, is not enough. You should rank or prioritize those features so that your patent attorney can write meaningful claims that capture the essence of your invention. If had to distill your product down to the lowest number of core features, what would they be? What product features would be secondary and less important?

See this post for a detailed breakdown of the initial drafting and filing of a utility nonprovisional patent application.

Can you seek funding or sell your product after filing a patent application?

This question touches upon a few different issues. If the question is whether it is safe to disclose your product after filing a patent application, then the answer is yes. Showing or selling your product while patent-pending will not hurt your chances of getting a patent. Also, it may be impractical to wait until a patent is granted before receiving raising capital.

Make sure you do not publicly disclose any new features which have not been covered in your pending patent application. You should consider filing a new provisional application or a continuation-in-part (CIP) application to cover your new product features.

Can others see your pending patent application?

A design patent application will not get published unless and until it is granted. On the other hands, a utility non-provisional patent application will be published at approximately 18 months from the priority date unless a request for nonpublication is submitted with the initial filing of the nonprovisional application. If you are considering foreign utility patents, then your utility application must be published to comply with international agreements.

How much does a patent application cost?

The cost of the initial filing of a utility nonprovisional application will range from $6,000 to over $16,000. The initial filing of a design patent application will cost between $1,500 to $2,200.

Keep in mind that a utility nonprovisional application will likely lead to multiple Office Action rejections, where the cost to respond to each Office Action may range from $500 to $3,000.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
If you are a startup or small business, we want to help. Our mission is to equip entrepreneurs with solid IP rights that facilitate funding, growth and sales. Let's get to work! Direct: 949.223.9623 | Email: vlin@icaplaw.com