Hi Karen,
The drawings are to provide a visual representation of the “Preferred embodiment” but your CLAIMS are more important. I have a couple patented products on the market that resemble the original drawings, but in fact are very different cosmetically. As long as the redesign maintains the same functionality as described in your claims, you should be good to go. Anybody disagree?

Assuming you are referring to a “Utility” patent….Bruce is EXACTLY correct. As long as it is consistent with what is claimed the it would be “protected” under the patent. Specific design does not matter for “utility” patents, only “design” patents.

Correct utility patent.

The claims are pretty specific at describing it, for instance at one point says ‘flat lid’ but if I now wanted to add a design so that it wasn’t ‘flat’ as stated in my patent, how do I know how much leeway I actually have?

Hi Karen, Given you are moving to the next phase of development where a lot of money is at stake it would be prudent to consult with your patent attorney or agent and ask for advice. Without looking at the patent and your proposed changes any advise given is just a guess.

I agree with Don.

You need to go over your patent with some drawings showing the “New” direction you are going. Using your flat lid comment as a starting point. If you claim you have a flat lid that does A, B and C and now the lid isn’t flat anymore I’d say that statement is now void. Whatever A, B and C were claiming won’t be covered if your lid isn’t flat.

That is the sort of thing people trying to get around patents do. If you say your lid is flat I make one that does everything your lid does but make sure it’s not flat and I’m around your patent. You should never state anything that specific in a patent if you can avoid it because it becomes a target to design around to beat your patent.

A patent should be written fairly vaguely when describing your item and it should cover all the options not just pick one because that leaves you open for someone else to pick all the other options.

Another important consideration would be if the change to a non flat lid would be obvious to someone “skilled in the art” and does it alter the function of the lid? Is the lid described as flat or is it “generally flat” Good advise to check with your attorney or agent on this.

If the “flat lid” claim(s) in question is an independent claim(s), then there is likely more cause for concern with any deviation being covered. However, if the claim(s) is a dependent claim(s)I would probably be less concenred (My two cents). Going out on a limb here…. my GUESS is that the injection molder is recommending perimeter “ribs” or “ridges” to your design to reduce the thickness (thus minimizing the amount of material used for the part)… if so, this is a common process and would not by itself necessarily void your design (assuming that the surface is still flat). As Dond said, without knowing the specifics it’s hard to know for sure.

Hi Karen,
Generally speaking of course, couldn’t you put any other version of this lid in writing somewhere public
right now, therefore making it impossible for some one to patent any new version?

The problem with the public domain option as the possible solution (generally speaking)is that she could’nt prevent others from legally making it. A person would then have 12 months to file thereby CLAIMING first to invent.

If you think you are making a change away from what is claimed of coarse consult your agent/attorney that wrote your patent but remember they usually want to write more protection for more money especially in this economy so make sure if you seek further protection make sure it is necessary.

You can file a CIP (continuation in part) which is a change in your invention and an added part to your patent. Thomas Edison had over 2000 patents but most were CIPs

You can also possibly file a design patent which will cost about the same as a CIP for your lid.

I like patent pending better than patented because no one knows your final claims and can’t figure a way around you. One better is being able to say patent # 1,296,483 and other patents pending.

As a marketing guy as well as inventor, always having a patent pending even after your main patent issues is surely the most powerful way for protection. I even tell people if they have the money file a second patent even if they think it won’t go through to be able to say “other patents pending” on their package (if they are doing well in the market)

Ron Komorowski
Inventor of Handi-Straps
www.handi-straps.com

Ron is correct regarding the CIP, something to consider though, the CIP can possibly muddy the “priority date”… of the claims when patent is issued. However, this would only apply to patent applications that are pending (not awarded/issued). You stated that your patent is “approved” – I assumed that means you received a “Notice Of Allowance” or the actual patent?.

You guys are great, thanks all, I learned alot! Correct the patent did issue, for obvious reasons I’m being a little cautious as I take first steps to produce, to Phil’s point I get nervous some bigt company will find away to make a few new claims and voila get to market faster. On this one I will consult the patent attorney before proceeding in any direction.

Since some of you on this thread seem “in the know” can I ask another question? Which is your ideal formula to idea “protection”…So I’ve now read several licensing and patent books and still confused on what to do first second when I think I have a real hot idea that I’m willing to put some money behind.
Here is what I “think” I should do:
1) Have idea. =
2) Pat myself on the back, then run to google.
3) Check google.com/patents, websites, uspto patents
4) Idea still seems good, write it down in invention notbeook, sign and have my husband sign
5) husband looks at me like I’m crazy
5.5) If decide draw it up submit to EN, if not proceed to 6
6) Invest in having someone do one of those $250 patent searches?
7) Submit a PPA on my own?
8) Now as soon as I hit submit on let’s say a legalzoom PPA, can talk freely to companies to try for licensing deals? And if have money in the bank now I can consult attorney for full patent?

This would be my formula—what is missing, out of order or ridiculous, obviously trying to minimize cost instead of running directly to filing a patent…

Hi Karen, Your list is a good start, but for item 4, You need to have your notebook signed by some one who would not financially gain. The person also has to understand what the idea is so just getting the notebook notarized is not enough unless the notary really understands what you have invented and would be willing to testify in court if needed.

That is a pretty good strategy. I would add the following:

3) Searching on the USPTO is not as good as using google or some other interface because the patent office does not sort by relevance as does google. The patent searches by patent number so you will have to look through all of the patents on the search results to determine relevance yourself. I did a search using free patents online and the patents I am looking for are usually in the top ten results, which saves lots of time.

6) Inventors usually do a pretty good job searching once they know what they are looking for. I would save the $250 and skip to 7.

7) You can prepare your own PPA. A few tips, do not use the words “prior art” anywhere in your application. Try to write up your invention with as many variations of the basic concept that you can think of.

8) I am not familiar with legal zoom and how the application is filed after you hit the submit button, but it is fairly easy to file the application electronically directly with the USPTO and you pay the $110 online using credit card. To file electronically you have to fill out the prov cover sheet, prepare your application in word processor, convert it into pdf, and upload the cover sheet and the pdf application.

8 cont.) You can start talking when your application has been filed with the patent office. Check with legal zoom to see how long before your application is actually filed.

8 cont.) Regarding consulting an attorney, I think you have two choices of when to contact an attorney: before you file the provisional or a few months before the utility must be filed. If you contact the attorney before, you can get some input on the provisional that you prepare. Consultation is usually free, so take advantage if you can. Also, there isn’t much that an attorney can do after the provisional is filed except to file another provisional if the one you filed misses some important elements of the invention.

You can spend as little as $110 to get to the point that you are talking to potential licensees. If there is interest in your invention then you can think about spending more on the utility.

Also, with regard to changes in your design vs. you patent, you can do whatever needs to be done to make your product marketable. Your patent does not dictate how you should make your product. Your patent claims should be broad enough to protect you, but check with your attorney.

Antonio
www.patentlawforinventors.com

Thanks. So antonio, as soon as you submit a PPA on the uspto website is it automatically considered filed or I should wait until I receive some sort of formal notice before talking to anyone about my idea? I’m glad to hear you say skip the $250, ever since reading a EN article I thought I should do that, but agree doesn’t make much sense if it is cheaper to just submit the PPA.

So in your point 7) when you say, “Try to write up your invention with as many variations of the basic concept that you can think of.” this is where I am now getting confused.

So can we take this as a simple example… If I were to to submit an ‘over the door’ shoe holder PPA.. and say I draw it with 8 pockets and suggest it be made of plastic… even though the drawing would show 8 pockets do I simply say, "could be made with any number of pockets, or any type of material I am just suggested preferred embodiment (thanks Bruce ;) of plastic and 8 pockets?
If someone submitted a ppa 2 weeks later, same concept but show a drawing with 35 pockets and zippered pockets would it be novel enough to get around my ppa since we both drew it different?

Even now when I submit an EN idea, I can think of 50 different ways to engineer the thing to make it work….do I just draw the design I see working best but then include in written explanation could also be made like this, or this, or this…. or do I include drawings for every possible way I could see it being designed? This is a new confusing point for me. Obviously the functionaly and general claims would be the same, but if a manufacturer is trying to produce at a certain price point they may construct differently then someone who could afford to automate or use a different set of materials….

Maybe I don’t need to concern myself with all the semantics at the PPA stage? Simply do the one drawing and explain the materials I think are best and leave all else off? At the patent application stage then the attorney could think about how to be comprehensive and broad but specific enough??

Confused. Me.

Karen you asked: "So can we take this as a simple example… If I were to submit an ‘over the door’ shoe holder PPA.. and say I draw it with 8 pockets and suggest it be made of plastic… even though the drawing would show 8 pockets do I simply say, “could be made with any number of pockets, or any type of material I am just suggested preferred embodiment (thanks Bruce ;) of plastic and 8 pockets?”

I’ve read a lot of patent applications and these two words are used a lot when attorneys or agents need to describe “could be made with any number of pockets“ .

1) Plurality: a large number or quantity.

2) Array: a large group, number, or quantity of people or things.

The word generally still confuses me. When can we use it, or not use it?
I’ll start with my experience with my first patent. The word “generally” came in real handy when describing something that was not in a totally horizontal position.
So I said “generally horizontal”, and the examiner let me get away with that.
I used the word generally several ways several times in my first patent.

Not so on my second patent. This next examiner said “generally” is indefinite, the scope of generally cannot be established. He asked, does this mean 10%, 2%, 100%?

I had to look up “Indefinite“: not clearly defined or determined; not precise or exact: an indefinite boundary.

So if you can’t get the word generally in your patent claims, you may have to draw and describe in detail every different version of your (lid for example).

I’d love to here what Don Key would have to say about this subject.

Karen,

It is exactly as you noted. If you prefer 8, mention that it can be other numbers, 1-100. If you prefer plastic, mention that it can be other materials, cloth, composites, metal, ceramics, or a combination. If it can be done 50 different ways, make sure that you mentioned as many of the best ways of producing your invention. If you had to ignore some embodiments, elect to ignore ones that are impracticable to produce. For example, I wouldn’t disagree with leaving out a gold shoe rack. My biggest concern with an inventor preparing a patent application is that the inventor may leave out something that is necessary to practice the invention. For example, let’s say that you forgot to mention that the shoe rack can be made diagonally arranged pockets and you later claim this in the utility. That claim does not benefit from the provisional application, which can spell trouble if someone files an application for a shoe rack with diagonal pockets after your provisional.

Todd,

A plurality means at least two. I would say that an array is at least a 2 × 2 set. Look at the dictionary definition if the definition is not supplied in the patent. Generally can be indefinite depending on how the specification provides guidance for the term. The concern is to give notice of infringement. If you can’t determine what the term means, then you will not be able to determine if you will be infringing the patent, and that creates uncertainty. For example, if you claimed a shoe rack with a generally rectangular pocket. You should be ok, but it would be better if you noted in your application that generally rectangular includes rectangular, rectangular with curved corners, rectangular with slight variations from manufacturing, etc.

Hope this helps.

Antonio
www.patentlawforinventors.com

Todd I thank you for the plurality of your replies. I generally am getting all of this and hope the array of EN readers are too… how was that? Seriously thanks. Don’t know who Don is, but Don join in… if I can invision the functionality of a utility patent being manufactured 5 different ways, can I really draw and include all five drawings in one patent as long as claims apply to all 5 versions…this topic seems like a good Digest article.
PS Todd your icon scares me a bit ;)

One more thing. Yes, when you submit the patent on the USPTO website it is filed. You will get a receipt with a serial number. You will get an official filing receipt with a foreign filing license within a month.

Cool, thanks. OK off to bed, hopefully being on this site last thing, this will all absorb into the brain, or at least maybe wake up with a new idea in the morning. See you all tomorrow, keep the info. coming ..

Thanks Antonio,

karen said: PS Todd your icon scares me a bit ;)

You must be a Green bay Packer fan ;-)

Karen said: Don’t know who Don is, but Don join in…

So I’m wondering how could you not know who “Don Key” is? So I went back to one of his old post to let you know where to look—- and that’s where I caught my mistake. It’s “Don Kelly”, who is an active member on this group, and the reason I threw his name out there is because he has a lot of patent experience as a formal examiner with the USPTO office, and is now working as a patent agent. He does not leave you in the dark at all when talking about the patent subject.