Good question!!! I want to find out that answer, too!!

I’m not an expert so someone please correct me if I’m wrong. From what I understand it’s about patenting different aspects of your invention, not different embodiments. The intent is to build a wall of protection around your invention which makes it harder to circumvent with small design changes. This is a very expensive thing to do.

Thanks Marcus, yes, a very expensive thing to do, like playing devil’s advocate to your own product.
It seems that a well thought out application should be able to be inclusive of every possible scenario,or at least most, but I guess that is the experience we end up paying a lot for.
I understand that in some very complex technologies the individual mechanisms need protection as well as the whole, but there are very simple products out ther with all these patents…Ouch!
I have posted this question elsewhere and if I find “the best solution” or at least better one I will get back.
Thanks.

Melissa, there are a number of reasons why a single product might have multiple patents. A couple of common ones include the use of continuing applications to protect different aspects of the same product (each trying to achieve the broadest possible protection in its own right), and the use of new applications to pursue design improvements to the original product.

With regard to the former, it has become increasingly difficult to cover every different inventive aspect in a single application, because each inventive aspect is preferably covered by its own claim set, and the USPTO is clamping down on the number of claims (and inventive aspects) that you can get away with in a single patent application. This often results in the preparation of a single specification that is then used in multiple patent applications.

Yes, multiple patent applications certainly increase the overall cost, but you will need to discuss the scope of your invention, your needs, and your budget with your patent attorney or agent in order to determine to whether multiple patent applications are appropriate in your situation—and keep in mind that, as with the second example I gave above, the reasons for having more than one patent application may arise down the road rather than at the time of initial filing.

Hope that helps.

• * * The foregoing is not, and should not, be considered legal advice, and no attorney-client relationship is established or exists by reason of the foregoing commentary. * * *

I may need a provisional patent. Jim can you tell me about the different types there are that I may try to figure out which I would need? thank you

I am not Jim but I will try and answer the question you are asking. A provisional patent is basically a time marker. It marks a formal date you started the patent process. It gives you 12 months to actually file a patent application. There are design patents and utility patents. Design patents basically cover the way something looks while utility patents cover unique characteristics called claims. Claims are the meat and potatoes of a utility patent. A claim is the unique characteristic which your product has. These claims must be unique to your product or the way you use the product. These claims can even be the process by which your product is constructed. If you are going to pursue a patent you will almost always want a utility patent. Design patents are appropriate sometimes I am sure, but they typically don’t offer much protection.

Thank you so much Kenny for the information. One more if you don’t mind. Is it possible to find patent pending items on the US patent site?

I dont believe the patent pendings show up on the USPTO for public viewing until the first office action has been completed.

Any help gratefully received

Hi Brendan, I believe anything written and supported by the drawings in the patent application can be used for the claims. On my recent office action for my patent application, I added two more claims because I had sufficient material in the application to support them. If your patent has already been granted and you want to expand the claims, there seem to be two methods 1) Use only the existing materials or 2) You can introduce new material, but those claims citing the new material will not be able to use your original patent application date.

Mary, Patents as a rule are automatically published after 18 months from their application date, even if they have not been examined. A person can request their application not be published, but you must request that at application time.

Suggest you talk to an patent attorney or agent for more information since I am not either. Good luck.

Thank you Dond for the info. :0)

There are design, utility and PLANT patents. Don’t forget plant.

Publication has to do with scheduling however they do it by the USPTO’s Gazzette and also they start their calculations from your priority date as far as how many months from application they will publish. If you have a provisional and then claim that on the patent application that priority date, the clock starts ticking from there when you get published. Publication has NOTHING to do with office actions!!!!

This is VERY important because I lost international patent rights on an invention because of publication in the USPTO’s Gazzette.

Also, many seek early publication by paying an extra $300. The purpose of this is you can sue after the patent issues back to the publication date of your invention in the Gazzette but only for exact damages, not for willful infringement which you can sue for triple damages. I don’t see the benefit of early publication outweighing risks, personally.

Had to clear that up. I lost something VERY valuable by not realizing USPTO’s publishing procedures which also has changed in recent years because of pressure from WIPO (World Intellectual Property Organization)

The actual figure as I recall, is the U.S. must publish within 18 months of claimed priority date. The reason why this was shortened was so the U.S. can’t hide inventions from the rest of the world as the rest of the world publishes in a much shorter time. This was the rules a couple years ago but things always change with the USPTO.

How I got “caught” Me and my patent agent thought publication after 18 months would be from patent application. It was not. It was off the claimed provisional date, 6 months after the utility patent app which was almost 2 years until the office action.

International patent rights may not mean much to you, but they SURE DI most times to the company you license to….and don’t forget, international patent right can be seperately sold, licensed etc.

We don’t want amateur inaccurate information floating around this forum…people can get hurt. You DON’T mess around and guess when it comes to patent rules/law.

This subject is really simple stuff that you learn with your first patent because it is an important matter.

Hey Ron you are right. I need to stop posting when I am asleep!

Mary,
Free Patents online you can search applications (patent pending). Its user friendly for the novice to search.
If you only want to search published applications make sure the search box for US Patent Applications is only checked or it will take forever to filter through everything……… Learn to Master the searching process, then you can carry the same ( Master ) title as Ron. LOL
Note: a design cant be filed under a provisional application……

http://www.freepatentsonline.com/

Filing a PCT application which then gives you 30 to 40 months (40 for Canada) to file patent applications for the countries you want. The PCT costs $2500 in fees and about $1000 to the patent attorney.

From my years of hanging with inventors in groups, few understand how important international patent rights are to big companies or themselves really because they think the U.S. market is all they need to make them rich. True….but companies want the international rights so over the next border people aren’t making your invention which would be harder yet to stop knockoffs getting into your market. A Chinese patent has become valuable to stop anyone from making your invention as the Chinese gov’t has started to respect others patents somewhat these days.

Don’t forget you almost have 3 years to sell these international rights too. Not a bad deal for 3 grand and then you have something very valuable to sell. Anybody I knew with a decent invention has been contacted from other countries where they wanted to license. Other countries are quite fascinated with U.S. intellectual property and look for the next hot thing to come out of the U.S.

As far as odds of a PCT paying off for an independent inventor…..consensus says inventors usually think their invention will sweep the world faster than a plague, those that go for a PCT regret it as time on the PCT expires too fast or the international patent filing fees become overwelming.

That’s ok sometimes…smart marketing and trademarks can save the day for international sales. Look at McDonalds, Coca-Cola, Kentucky Fried Chicken…BIG in China and other places..no patents. Many countries also seek American products patent or not. We are very respected. Don’t absolutely need international patent rights.

Thanks Dond for sharing your thoughts etc. and thanks for Rons warning as well, we are not all patent professionals so I have to learn from discussion
with others it is always good to get many contributors to a topic, I personally like people to try and share what they think just as long as I am aware that they are speaking from their own experience knowledge etc.
thanks again to everyone

www.boxerballs.com

thank you gizmo. I did find that you can look up patent pending items on the USPTO. I found what I was looking for there.

Could someone clairfy what a design patent is that I can make sure that isn’t what I have. thank you :0)

I do understand the importance of international patent possibilties and want my product to go that route. Right at this time I am planning to go to the Dragons Den ,(Canadian Shark Tank for those who don’t know) , and from what I have seen you are in a large room full of people so an NDA will not work so I am looking to do a provisional and need to do it for the least cost possible. HELP lol :0)

If you have a design patent the patent number will start with a D. It will also only have one claim.

A design patent protects the ornamental, non-utilitarian design of an otherwise utilitarian product.

A utility patent protects any innovation that has utility beyond, say, looking pretty. Most of the time when you hear someone mention the word “patent,” they are referring to a utility patent.

Aside from what is discussed above, it is worth noting that at least sometimes the reason why a company will file multiple patents for a single product over a certain time period…is simply because it can present an image of strength to investors/shareholders/etc, who can be blindly impressed by that regardless of whether the multiple patents are/were even necessary…