Should you file a patent application?
Before discussing how to patent a product, let’s briefly consider the why question. Give some thought to this fundamental question: Should you patent your product or idea?
A wise IP strategy should cover the following factors before patenting:
- 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 apply? (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 apply if you cannot sell it?
- Have you already shown or sold your product? If so, for how long?
Is it too late to file?
We often get inquiries from potential clients who have already been selling their products. Inventors have a 1-year grace period for applying for patents, but this applies only in the US. Most foreign countries have stricter rules on timing that may or may not allow for any patents filed after the invention has already been publicly disclosed.
Should you do a prior art search before filing?
If you are considering utility patents, 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 the prior art.
On the other hand, novelty searches are less useful for design filings since the design patent approval rate is high (i.e., approximately 85%).
Is a prototype required?
No, but you need to be able to disclose your invention sufficiently so that others will understand what you’re trying to cover. 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 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 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 or idea 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. This will provide meaningful guidance in writing 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 so forth?
Can you sell your patent-pending product or talk to investors?
This question touches upon a few different issues. If you’re asking whether it is safe to disclose your product after filing a patent application, then the answer is generally yes. Selling your patent-pending product will not hurt your chances of getting an allowance. Also, it may be impractical to wait until your product is patented 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 hand, a utility nonprovisional patent application will be published at approximately 18 months from the priority date unless a request for nonpublication is submitted with the initial filing. 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?
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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