What questions on filing a patent to ask if you are not sure

What questions should you ask when you’re unsure about filing a patent application?

Making a decision about filing a patent can be a daunting task. Where do you start? What will it cost? Will you even be able to get a patent? If so, will patents help? Let’s walk through a few preliminary questions about filing a patent that will hopefully reduce uncertainty and bring you closer to a decision.

Was your first public disclosure or sale of your invention more than a year ago?

Potential clients sometimes approach us with an idea that they have been thinking about for quite some time. In some cases, they may have even shown their invention to others or sold their products. What often comes as a surprise to first time patent filers is that you do not have an unlimited amount of time to file a patent application.

Patents are time-sensitive. Inventors have only one year from their first public disclosure to apply for US patents. Foreign patent protection in certain countries might be unavailable if you have already publicly disclosed your invention prior to securing a patent filing date.

If you showed your invention to the public less than one year ago, it is critical to calendar the one-year anniversary. To be safe, make sure to file your US patent applications well in advance of the 1-year deadline since it is a race to the Patent Office.

Would a design patent or utility patent be appropriate for your invention?

Beyond the obvious implications of filing the appropriate type of patent application, timing and budget are major factors in the differences between filing for utility patent or design patent protection. A typical design patent application would cost less than $2,000 for the initial filing for a small entity and have an approximate chance of success at roughly 85%. A utility patent application can range widely from $9,700 to $20,000 for the initial filing with an 80-90% chance of at least one patent rejection.

How much is your patent filing budget?

So you basically have a high chance of success in obtaining a design patent at a substantially lower cost versus a high chance of rejection in apply for a utility patent at a much higher cost. This should come as no surprise since utility patents generally offer greater protection than design patents.

If your current budget does not allow for filing a utility nonprovisional patent application, consider filing a provisional application to obtain patent-pending status and buy more time.

What is the value of a patent-pending product?

If you intend to launch your product, a worthwhile question to ask is the additional value that patent-pending status may bring. This factor may affect not only sales, but your ability to raise funds. Do potential investors want to see that patent applications have been filed? Have your competitors filed or even already obtained patents?

Would your products infringe an existing patent?

Keep in mind that a patent does not give you the right to sell product, but only the right to stop others from such activities. It is possible and not uncommon to own a patent, and yet still infringe on other patents in attempting to sell your product. Consider whether a freedom-to-operate (FTO) analysis would make sense and, if so, the costs for such a patent infringement search.

Remember that you can still be liable for infringing someone else’s patent even if you own a patent for your product.

Have more patent filing questions?

Feel free to email your patent filing questions to patent lawyer Vic Lin at vlin@icaplaw.com or call (949) 223-9623.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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