Patent Process

Jewelry Discussion
1

Dear Friends,

I have a question that many of you may have experience with. I have
designed a mechanism for a ring that is very simple but very unique
and would be very marketable (I think) in certain well defined
markets. I have not tried to sell these yet, so I don’t know if they
will generate good sales. I don’t want to put them "out there"
unless I have the design mechanism protected, yet I don’t want to go
to the expense of a full patent if I haven’t done any market
research.

Does anyone have any advise for me? Have any of you gone through the
patent process? Is there any easy and quick way to go about this? I
know that copyright protection won’t be enough as there are so many
ways to circumvent a copyright with small design changes. That is
the beauty of my idea!! (LOL)-it lends itself to unlimited designs.

Have any of you ever licensed or sold an idea to a manufacturer?
Would that be an easier way to go? Get the money without the
headache?!!!

Thanks in advance to all you wonderful people!
Ruth

2

G’day Ruth.

About 50 years ago I invented two small devices for use in
laboratories, and I was told I should patent them. The steps are:

  1. Research at the patents office to determine if a patent already
    exists on the invention, You can do this yourself at the Patent
    Office, or you can employ a patent attorney to do it for you

  2. If a patent already exists on the idea, or something very like it
    you will have to decide if it worth pursuing

  3. The next step is to produce plans and specifications which can be
    registered; for which a small fee is charged. But this gives you no
    real protection! It merely claims prior disclosure - thus if anyone
    comes up with something very similar you can prove you thought of it
    first. So don’t disclose the idea to anyone until you have registered
    a preliminary disclosure.

  4. Next step is to apply for a patent. This will be subjected to a
    rigorous examination to determine if any part of your idea has prior
    disclosure from some other entity.

  5. If you are granted a patent right, then that will then have to
    be registered in every country likely to want to use it.

By the time you have finished you will have spent many thousands of
dollars.

In my own case I managed to sell my ideas, plans and specifications
to a laboratory supplier and thereby renounced all further claims.
The supplier put the devices into production, (but I suspect they
made little money out of them.) They did give me an item off the
production line

However, don’t just take my word for it; go to your local Patent
Office and check up that these rules are what is necessary in your
country My own attempt was in England, and of course I did not
pursue the patent matter any further after filing preliminary
disclosure - for obvious reasons. But if you approach any company
with the idea of selling the idea direct and let them patent it if
they want, then the first question they will ask is if you have
claimed prior disclosure. If you haven’t they will tell you they
don’t want to know; but to come back when you have done that.

To answer your final question - take the money and run! And good
luck!

Cheers for now,
JohnB of Mapua, Nelson NZ

3

Ruth, although my experience is somewhat different, I have found
myself in your predicament (and somewhat still do). My invention
was of an electronic nature, but the process should be very similar.

I recommend that first you try to obtain a provisional patent (AKA
patent pending). Thanks to former president Clinton who pushed for
it, a small entity such as ourselves can now obtain a provisional
patent for only $80. This is a far cry from the full patent, but it
at least serves as some sort of protection that holds up in the
court of law. All you have to do is fill in a short form which may
be downloaded from the Patent Office website (uspto.gov I believe)
and send with it a description of you invention and the cash.

Beware though: make sure that your description is accurate enough,
yet broad enough to encompass small permutations thereof. I now
have a provisional patent for my invention, but have found that it
is still difficult to get companies to even look at it without the
full patent issue, but your situation may be a bit different. Make
sure you do a thorough patent search on the USPTO website before you
submit though as provisional patent are not judged before granting
the provisional patent status.

Good luck!

4 
Have any of you gone through the patent process? Is there any easy
and quick way to go about this?

Usually patenting IS the quick and easy part of the whole
process—cheap too! Even though it takes 2-5 years and costs
$3,000-15,000. Anybody can get a patent as the 98% of inventors who
never made a nickel from their patents can attest. The real question
is can you sell it. With that in mind here is a sound process
outline:

Step 0=96Go Shopping. Look for any existing solutions to the problem
your invention solves=96they just may be “yours” or better. STOP if
proceeding is NOT a sound business decision after any step!

Step 1=96Ask People. File a Disclosure Document with the US PTO first
and start using Non-Disclosure Agreements to get opinions,
particularly from prospective buyers or experts in the field of your
invention.

Step 2=96Get Evaluated. Do a patent search then, if your invention or
nearly equal ones are not already patented, pay for a marketability
evaluation by a professional that cannot gain by being positive.

Step 3=96Manufacturing Costs. Determine approximate manufacturing
costs and consumer sale price and do some basic business plan
calculations to see if your invention will be reasonably profitable.

Step 4=96Design & Prototype. Now the fun part! Design and build one
and test it. Refine and redesign as necessary to get it working well
and so that it can be easily made and used and looks acceptably
attractive.

Step 5=96Sell a Few. File a Provisional Application for Patent (PAP).
Get a quality prototype or low volume production run done, create
sample packaging, instructions, etc., and get your invention on the
market.

Step 6=96Go. If everything to this point indicates a good chance at
success, create the marketing materials and go. File your full patent
application before one year from the priority date established by
your PAP.

Step 7=96Watch Competitors. If you have any success at all you can
count on competitors. Be sure they don=92t infringe any patents you ge=
t
and keep developing improvements ahead of them. Good Luck!

Apparently you’ve already got a prototype but realize the same thing
can be accomplished many ways. Ouch, you cannot patent an idea, only
something that qualifies as an embodiment–i.e., is a bit more
specifically spelled out such that someone following your
instructions would get about the same result as you. For more on your
rights with various types of intellectual property see my
www.idearights.com web site and for more spelled out instructions on
the whole process see my www.willitsell.com web site. For some
cautions on avoiding scams etc. see my www.inventorhome.com web
site.

        Have any of you ever licensed or sold an idea to a
manufacturer? Would that be an easier way to go? Get the money
without the headache?!!!

When it works it’s great. Yet probably better than 90% of successful
inventors actually succeed by venturing–i.e., getting the product
into production and on the market themselves–rather than licensing.
To license usually requires that you really do have protectable
intellectual property AND that it be among the top 10% of all
invention ideas—and it’s entirely up to you to generally prove both
though there are rare exceptions where “it’s obvious” now that they
see your invention (warning, scammers will tell you this regardless
of what your invention is).

Good luck.
James E. White
Inventor, Marketer, and Author of “Will It Sell? How to Determine If
Your Invention Is Profitably Marketable (Before Wasting Money on a
Patent)” Info Sites: www.willitsell.com www.inventorhome.com,
www.idearights.com www.taletyano.com www.booksforinventors.com

5

Ruth, The way to start on a patent is to do a search on
www.uspto.gov. This is the official US patent database, where you
can search by terms relating to your mechanism. Bear in mind that
things in unrelated fields can sometimes cover your intended
mechanism. I’m working on a jewelry related patent tonight as a
matter of fact. I will be attempting to write it all myself. There
is good on the USPTO site on how to do it and a good
book that I highly recommend is Patent It Yourself by David
Pressman.

The only thing that really matters about a patent is the wording of
the claims. The rest is fluff that explains to someone else exactly
how to build your mechanism. There are independant claims and
dependant claims. A dependant claim will be based upon an earlier,
more general claim. For example, claim 1 (indepentant claim) might be
for a widget that does this, gets silver plated, and has a C shaped
cross section. Claim 2 (dependant claim) might say the article in
claim 1 wherein the base material is aluminum. Claim 3 (dependant
claim) might say the article in claim 2 wherein there is a wooden
handle. In this scenario, you can tell whether you are infringing
just by checking through all the individual things that must be
fulfilled in the first claim. If you don’t have a C shaped cross
section, you don’t infringe on claim 1, therefore claims 2 and 3
don’t even matter because they are based on claim 1.

Patents are fairly expensive to have lawyers draw up. It might take
a couple thousand dollars. The real issue is whether it’s
financially viable to sue people that infringe upon the patent,
otherwise it doesn’t make financial sense to get a patent in the
first place. The litmus test for a place that I used to work for in
R & D was that if an idea or mechanism was worth $100,000 in lawyer
fees fighting for it in court, then and only then would they get a
patent. Obviously, that was a larger corporation than most of us,
but the same logic applies on a smaller scale. Patents are also
usually pretty easy to get around if you know mechanical engineering
stuff, and can make the product using a completely different method.

In my opinion, if your invention is somewhat general and it might be
easy to design around a patent, it might make the most sense to just
work with manufacturers with a non-complete and non disclosure
agreement. If you have something that can make a manufacturer
money, many will be willing to talk. Yes, you go out on a limb a
bit by doing so without patent protection, so it pays to know the
companies you’re dealing with. My first patent was for a Rubik’s
Cube type puzzle back when the craze first hit in the 80’s. In
talking to all the toy companies, they all had forms to sign that
essentially said that they might be working on something similar,
and no rights were guaranteed. I was so scared about signing those
forms that the wave passed by before I ever did anything with them.
With 20/20 hindsite, I should have signed each and every one of
them. I also wrote too much about the product in my proposals and
not enough about what the product will do for their bottom line. I
see the other side of that fence now that I’m a manufacturer. Live
and learn.

6 
    I recommend that first you try to obtain a provisional patent
(AKA patent pending).  Thanks to former president Clinton who
pushed for it, a small entity such as ourselves can now obtain a
provisional patent for only $80.

There really is no such thing as a “provisional patent.” What you
can do is file a “Provisional Application for Patent.” It is a
provisional APPLICATION. And it is stone cold dead in 12 months if
you don’t file the full application within that timeframe. But worse,
while it does give you temporary “patent pending” status it gives you
absolutely no rights to take anyone to court. All it effectively does
is give you what is called a priority date on whatever in your
provisional application is novel and non-obvious AND is enablingly
described for one of ordinary skill in the art in your write-up and
drawings. For many people it turns out that what they file as a
Provisional Application they don’t even get a priority date because
nothing in their application fits all the above criteria.

In fact non-knowledgeable people often file Provisional Applications
then use the false sense of security to disclose publicly their
invention and thereby trip triggers that jeopardize any rights they
might have to both US and non-US patents. Public disclosure of
something that is NOT clearly explained and shown in the provisional
application can render it impossible to get a valid patent outside
the US and Canada which both have 1 year grace periods in which to
adequately describe what is claimed in the eventual full patent
application. All other countries are what is called “absolute
novelty” countries which means that no public disclosure (or sale)
anywhere in the world can occur before adequate disclosure occurs
within a patent application (either provisional or full).

Also Provisional Applications are NEVER “approved” by the USPTO
because they are never examined. They are given a cursory glance to
see if it appears that all parts are there to make it a legitimate
application but there is NO evaluation on the merits to ensure that.
For example, if no drawings are included the PTO may (or may not!)
send a strongly worded form letter suggesting you supply drawings “if
they are useful in understanding the invention.” But there is no
requirement that drawings be there or sent—in effect each applicant
makes their own decision at the time of Provisional Application
filing as to what is adequate. It is not till later when the full
application is examined – or later still when an issued patent is
taken to court – that the Provisional Application is perhaps
evaluated. And that is when mistakes with the Provisional Application
can bite you, even to the point of invalidating an issued
patent—which has happened.

Still, I strongly recommend Provisional Application use when they
are used knowledgeably. Thinking that $80 gets you protection is NOT
knowledgeable use. In fact what it usually is is a golden opportunity
for an “honest” patent attorney or agent to put some hapless inventor
into a vice and turn the screw 2-3 months before the 12 month full
filing deadline will be passed.

James E. White
Inventor, Marketer, and Author of “Will It Sell? How to Determine If
Your Invention Is Profitably Marketable (Before Wasting Money on a
Patent)” Info Sites: www.willitsell.com www.inventorhome.com,
www.idearights.com www.taletyano.com www.booksforinventors.com

7 
    The only thing that really matters about a patent is the
wording of the claims. The rest is fluff that explains to someone
else exactly how to build your mechanism.

This unfortunately is quite wrong. Claims are always interpreted in
a sequence of steps only the first of which is “what does the claim
say in it’s plain language.” Unfortunately for the above poster the
law MANDATES further interpretive steps which continue with “how
should the claim be interpreted in the light of the rest of the
specification?” The patent drafter is given wide leeway in
definitions of terms and their definitions MUST be accepted and
enforced even when it goes AGAINST the interests of the patent
holder. The steps continue with a review of the prosecution history
and understanding of prior art. The propensity of neophytes to fail
to comprehend all those nuances–and get their consideration correct
in their applications–is why I always STRONGLY recommend at least
some serious paid assistance from experienced patent practitioners.

    Patents are fairly expensive to have lawyers draw up.  It
might take a couple thousand dollars.

Or usually considerably more–but it’s still cheap compared to a
patent that is effectively dead on issue due to avoidable problems.

Patents are also usually pretty easy to get around if you know
mechanical engineering stuff, and can make the product using a
completely different method.

This is generally VERY true of inventor drafted patents because they
generally have far narrower claims than necessary. But it is not
universally true and therein can lie the difference between a very
valuable patent and a worthless, easily circumvented one. Yes, if you
are in a field with lots of prior art it is very difficult to get a
patent that cannot be worked around----but then why should an
independent inventor be patenting their nuance in such a field, it
makes little sense though the very same invention might be very
worthwhile patenting for a large firm.

    work with manufacturers with a non-complete and non disclosure

Most will sign a limited non-disclosure agreement (and state laws
may put more limits on such agreements than their contract language
appear to show) but very few will sign a non-compete unless it’s
limited to effectively whatever the inventor has that’s patentable
(some state laws, I believe California is an example but I may be
mistaken, void virtually any attempt at non-compete agreements).

    With 20/20 hindsite, I should have signed each and every one
of them.

Very likely true. Toy companies are relatively wide open to
licensing.

 I also wrote too much about the product in my proposals and not
enough about what the product will do for their bottom line.  I see
the other side of that fence now that I'm a manufacturer.  Live and
learn.

Yes, but writing “you’ll make millions” without any substantiation
and third party numbers is guaranteed to get a proposer classed as a
kook and escorted out the door—I’m sure you will do that now too.

James E. White
Inventor, Marketer, and Author of “Will It Sell? How to Determine If
Your Invention Is Profitably Marketable (Before Wasting Money on a
Patent)” Info Sites: www.willitsell.com www.inventorhome.com,
www.idearights.com www.taletyano.com www.booksforinventors.com

8

James,

In stating about the claims being the only thing that matters, I was
referring to when you are checking into whether your invention is
infringing on someone else’s patent. Obviously, the wording of the
entire patent is very important when applying for one, but in
checking on other patents, to find out if you’re infringing, only
the claims have the legal definition of what that invention is. You
don’t have to spend time reading the whole patent to know if you
infringe or not. You don’t even have to spend time reading the
dependant claims if the independant claim that they are based on
doesn’t infringe. My point was to save time in going through dozens
of patents.

For designing around patents, even the big corporations leave
themselves open. If a part says that it gets riveted, a mechanical
engineer knows other methods such as electron beam welding, friction
welding, or whatever. That’s what they go to school to learn.
Having been in R&D in an industry that has been around a long time
and didn’t change much, you constantly have to ask yourself, “Is
there a different way to do this thing that the industry has done
for all these years?” I have over a dozen patents with several
others stopped for financial decisions, so I’m not new to the game.

In my reference to what the product can do for the manufacturer’s
bottom line, it would be foolish to claim that it will make them
millions. In approaching a manufacturer, I’m saying it would make
more sense than talking about the quadrillions of permutations for a
Rubik’s type cube, they would be more interested in part costs,
assembly costs, and cycle times. I was not as manufacturer oriented
as I am now, so my point was that I can see that they would prefer a
more numbers based presentation.

Bruce Boone
Boone Titanium Rings

9

I worked in patent and trademark law for five years as a paralegal.
I have a great idea I’m working on designing, but I still cannot
justify spending $20,000 (which is the quote I’ve been given by
several different attorneys) to draft and submit a design patent.
It’s a little disheartening to me that unless you have a lot of
expendable cash, you cannot even protect your own designs.

10 
     but in checking on other patents, to find out if you're
infringing, only the claims have the legal definition of what that
invention is.  You don't have to spend time reading the whole
patent to know if you infringe or not.

The courts will be quite shocked at your cheek! In fact the judge(s)
in any infringement case are the ONLY deciders of what the claims
mean and they do it at what are called “Markman hearings” (after the
famous Markman cases) using the multi-step process I outlined before.
One of the reasons that infringement searches and opinions are only
allowed to attorneys and often cost $10,000 and up is precisely the
requirement for this multi-step process. While many claims can, in
fact, fairly easily be read and understood clearly enough by
laypersons that reading and understanding is never definitive—and
doesn’t get you off the hook if the court decision is you infringed
even though you didn’t think you were the way you read the claim
(with or without benefit of specification study, etc.).

 You don't even have to spend time reading the dependant claims if
the independant claim that they are based on doesn't infringe.

Quite true in theory except that you have “infringement” exactly
backwards. Things, processes, etc. infringe claims, never do claims
infringe things… or even other claims. A patent, for example, never
“infringes” another patent but a product made under a later patent
very well can infringe an earlier patent’s still enforceable claim.

    For designing around patents, even the big corporations leave
themselves open.  If a part says that it gets riveted, a
mechanical engineer knows other methods such as electron beam
welding, friction welding, or whatever.

True but rarely will a claim say “riveted.” It will say “attached”
or “fastened” and the body of the specification will give a few
examples plus “or other fastening means” generic language. When a
claim is, in fact, specific to a fastener the claim is usually
threading into such narrowness that it’s useless for all practical
purposes (but patent practitioners will be happy to get paid to get
the patent). But it can also be true that when some specific is
mentioned that there is also a range of alternatives that are also
includable by the court under the “doctrine of equivalents” even
though they are not anywhere to be found in the patent specification
and, indeed, may have been completely unknown to the inventor and/or
patent drafter. One of the classic cases claimed “a bar” and an
infringer used a “C” shaped flat piece in its place—the infringer
was rightly skewered (so to speak).

I do, of course, agree that one must adopt some reasonable heuristic
in studying whether one’s efforts are likely to infringe someone
else’s patent(s) but promulgating your own heuristic without at least
noting it’s problems and potential downside may expose the unwary to
more risks than they thought they were accepting. You may be happy to
note that the CAFC just (Sept. 13, 2004) reversed its own precedent
that used to MANDATE that a judge or jury consider an infringer’s
failure to get a legal opinion before proceeding with a product
introduction to be EVIDENCE of WILLFULNESS in infringing an existing
patent. That will at least reduce, but of course not eliminate, the
risk of a treble damages award being inflicted on someone taking your
advice.

James E. White
Inventor, Marketer, and Author of “Will It Sell? How to Determine If
Your Invention Is Profitably Marketable (Before Wasting Money on a
Patent)” Info Sites: www.willitsell.com www.inventorhome.com,
www.idearights.com www.taletyano.com www.booksforinventors.com

11 
    I have a great idea I'm working on designing, but I still
cannot justify spending $20,000 (which is the quote I've been given
by several different attorneys) to draft and submit a design
patent.

Okay, I’ll get you a design patent for $10,000—flat rate and
guaranteed to be successful!

But before you send me your check let me tell you a few things.
“Design” patents protect only the “ornamental appearance” not the
functionality or utility so only what can be seen from outside
counts. The typical cost range for a design patent is $1,600 to
$2,500 all costs included: small entity filing fee $170 (+ $5 after
Oct 1); $500-$1,000 attorney charges, $300-$1,000 drawings, small
entity issue fee $240 (+ $5 after Oct 1).

Since the application only requires normal bibliographic information
plus a single claim along the lines of “I claim the ornamental design
for a widget as shown and described.” (No “description” is usually
included other than the word or two, e.g., widget, in the claim.)
Followed by normally up to 7 drawings front, back, left, right, top,
bottom, and one perspective view for a 3 dimensional object you
should be able to do the whole thing yourself. There are some rules
for the drawings which an experienced patent drawing drafter will
find easier than you will but still the basics are spelled out in the
USPTO brochure
http://www.uspto.gov/web/offices/pac/design/toc.html#views and much
more detail can be found in Jack Lo’s “How to Make Patent Drawings
Yourself” (see http://booksforinventors.com/JackLoDrawings.htm on my
web site).

Now, of course if your design is complex enough to need $15,000 or
so in drawings you need to ask yourself a serious question. “Just how
valuable is this EXACT (pretty nearly) design?” If, for example, you
use curves in your design but an interesting result could also be had
by sharp corners then any design patent you get is likely
worthless—as are most design patents (and utility patents too for
that matter).

A copyright (registration $30) might be more appropriate (assuming
your design almost certainly has “artistic expression”) and it runs
for your life plus 70 years, rather than the 14 total years of a
design patent, and allows you (and your heirs) to sue and collect
damages for derivative works too (like that of the party that
copied your design but substituted sharp corners for your curves).

HINT: READ THE MATERIAL IN MY SIG LINKS and follow my sites’ links
to other info. To be blunt about it, ignorance is a choice you make
and continuing to choose ignorance will leave you vulnerable to all
kinds of cheats–even attorneys. Of course if you approached top NY
IP firms that do MEGA-corporation work for your design patent quotes
they most likely were giving you “flake off” quotes rather than
serious quotes which would require they give you $400 or more
(depending on your propensity to comprehend) of free education to
explain. And it you approached the outright scam outfits for your
quotes I bet you can talk them down to $12,000 which they’ll loan you
on a nice, convenient payback schedule.

So all in all, you see, my $10,000 fee should be a real bargain!

James E. White
Inventor, Marketer, and Author of “Will It Sell? How to Determine If
Your Invention Is Profitably Marketable (Before Wasting Money on a
Patent)” Info Sites: www.willitsell.com www.inventorhome.com,
www.idearights.com www.taletyano.com www.booksforinventors.com

12

Catherine,

As James says, a design patent is essentially a drawing that says
the design that’s drawn is what is claimed. It doesn’t cover the
mechanical workings. They are very straighforward and simple. You
can do one for just the filing fees if you happen to be good in CAD
or know someone who is. (No need to spend $20K or even $10K. Sorry
James! :o) Although they are very strict on the particulars of the
drawings, they are doable. I’ve done one after seeing how simple
another patent attorney produced one was.

Bruce Boone
Boone Titanium Rings

770-645-6488

13

Continue from:

It’s a little disheartening to me that unless you have a lot of
expendable cash, you cannot even protect your own designs. Not true.
I invented a coupling device that I had patented. I went to the
bookstore and bought a couple of books on how to make your own
patent application. I studied them and decided to give it a try.
The patent search for previous comparable inventions is the most
time consuming part. Most of it can be done on the internet now,
and the USPTO website gives you the you need.

It takes a lot of study, a great amount of research and reading, and
a lot of writing, which must be done to their exact specifications,
but I did it, and so can anyone who is determined enough to spend
the effort.You will learn a great deal about format and language
just by reading the other patents during your research.

Both books strongly suggested having a draftsman draw up the
illustrations, but I did that also, and my drawings were accepted.

Don’t let anyone tell you you can’t do it on your own. Do the
homework and go for it, and good luck!

I apologize for this late contribution on this subject, but we’re
still trying to get things in working order after these hurricanes,
and I haven’t caught up with my Orchid reading.

Tess