McGushion Patent

McGushion Patent

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Protecting Inspiration Inventions


Call Us At: (562) 598-6418

The range of services provided include:

Prior Art Searches

Provisional Applications for Patent

Utility Patent Applications

Design Patent Applications

Patent Drawings

Prior Art Search

This is a critical first step in the inventing and patenting processes.  In the domestic search, we research patent literature within the US.  In the global search, we research patent literature in the US and internationally.  When submitting a patent application, the applicant has the duty to disclose all significant information that is related to your invention, including all prior art.  That requirement is satisfied by conducting a prior art search and submitting an information disclosure statement.

The prior art search is also a valuable tool when writing the patent application to make sure you claim your invention broadly, without infringing on others or claiming what others have already patented or published.

When you build a fence on your property, you need to know where your neighbors' property lines begin so you don't build it on their land and you don't leave out any of your own land.  If you build on your neighbor’s land, you will have to tear it down and start over.  The same thing applies to the patent process; if you don’t know the prior art in your field, you run the risk of incorrectly defining the true scope of your invention.  This will either under protect your invention, in the case of claiming too narrowly, and cause much trouble in the prosecution of the application, in the case of claiming too broadly.

One thing to keep in mind when looking at patent search results is that it takes 18 months from the filing date for an application to publish (become public and searchable).  So, important unpublished prior art could exist and not be available until after the filing of your application.  And some applications are not published until allowance, taking up to and more than 3 years.  So, some prior art may be hidden for months or years after the filing date.  As a result, there may a temporary blind spot in your knowledge of other significant applications.

We would recommend conducting a preliminary prior art search at the very beginning of your product development, another just before filing your patent application, and maybe a year or so after the filing date.  Google Patent allows you to track changes in a search string or patent classification through an RSS feed, alerting you when any new patents have been published in a search parameter.  This is a great tool to keep track of an industry, your competition, or others filing similar applications.

Many people have spent many thousands of dollars on product development, just to find at a later date that they are infringing on someone else’s patent.  Besides, all patents are teaching tools that are required to reveal all of the information required to make the invention.  Learn from their mistakes and research to make a better, more patentable, and more marketable product.  

Provisional Application for Patent

Provisional applications have been used by individual inventors and multinationals to quickly and easily obtain an early filing date (priority date).  However, a provisional application is not a patent (sometimes incorrectly called a provisional patent) and will never mature, in itself, to an allowed patent.  The Patent Office will not even look at your provisional in itself.  The provisional application must be followed up a year later by a standard utility application that will benefit from the provisional filing date.  If not, the provisional will expire and the filing date will be permanently lost.

A provisional application is an informal means of fully communicating the patentable features of your invention as soon as they are apparent to you in the development process.  Even though the US, for now, is a “first to invent” country, the early filing date the provisional application provides is money in the bank, a solid date to preempt others from filing for similar inventions.  Since the provisional application will never be examined by the USPTO, the format is relaxed, only requiring that the invention is fully described along with any related drawings.  This application can even be hand written with a few decent sketches.  No claims or other formalities of the utility application are required; although, some applicants include one broad claim. 

Even though the formatting of the provisional application is informal, it must fully describe the invention.  Without the full description, there is a risk that the utility application that follows the provisional will not be able to fully benefit from the provisional filing date.  So, think of the provisional application as a foundation for a house, it must be strong, complete, and done with the knowledge that your entire patent will one day depend on it.  The closer the provisional and utility applications look when compared to one another, the better.

As many of us know, the invention we start out with soon develops into something else as the development process moves forward.  In response, some inventors will file a new provisional application with each new advancement in the invention process.  One utility application can depend on multiple provisional applications, with possibly more than one priority date.

Provisional applications are a cheap ($100 USPTO filing fee) and easy way to protect your invention for one year while you go out and try to sell it or further develop it.  That allows you to say that your product is “patent pending”.  But, beware, you must follow up in a year with a utility application and there must be “no new matter” in the utility when compared to the provisional, meaning the provisional must teach what you will eventually claim in the utility application.       

 Utility Patent Application

For inventions that are novel, nonobvious, and useful (utilitarian), a utility application is often a good choice for providing protection.  A utility application can either be filed by itself or it can be filed as a follow up to a provisional application.  The Patent Office (USPTO) fees are much higher for the utility application compared to a provisional (approximately $500).  However, the utility application will be examined by the USPTO and has the ability to mature to an allowed patent. 

The allowed patent is sort of a government sanctioned monopoly of the invention you claim within the patent.  It gives you the right to prevent others from making, selling, or using your invention without your permission.  This is really a tradeoff with the government; you fully describe your invention and they provide you with a monopoly on your invention for 20 years (from your filing date).  After the patent expires, your invention becomes public domain, being available for use to anyone.  This advances technology, allowing present inventors to learn from past inventors and build on their initial technology.  Otherwise, without the patent system, many inventions and how to make them would be kept secret in some corporate library. 

Many inventors, when first disclosing their inventions in an application are tempted to be coy, not revealing every detail of the invention.  This is a mistake.  A patent, in order to be fully enforceable, must reveal all the details of the invention that are core to what is being claimed, including all of the elements that make the invention fully operable, how to make the invention (special materials, techniques, and so on), and any variations (alternate embodiments) of the invention.  Basically, you must reveal everything for which you are seeking protection (in the claims).  There is a mechanism in place for keeping secrets (called trade secrets), but not in a patent.

Once a utility application is filed, it may take quite a while before the examination begins and a while more before a final decision on patentability.  The whole process can take 1.5 to over 3 years.  During the examination, the examiner is tasked with making sure the invention is both novel (unique) and nonobvious (not obvious). 

To be considered novel, the claimed combination of parts of an invention cannot be described in any published document (patents, books, websites, common knowledge, catalogs, etc) one year before the filing date of the application (35 U.S.C. 102).  At the time of invention, if it is described anywhere public, it is not patentable. 

Additionally, an invention cannot be obvious, meaning the solution to a problem would have been readily apparent to someone who is knowledgeable in your field (35 U.S.C. 103).  For example, we all use remote controls to control the operation of TV’s, ceiling fans, air conditioners, DVD players, and so on.  Using a remote control to control your coffee maker might be obvious under the new rules for obviousness, and therefore may be unpatentable.  The reasoning is that a person (i.e. an engineer) who would want to design a coffee maker that is controlled from a remote position would logically use a remote control to do so or would quickly come to that conclusion with limited experimentation.  The remote performs as it’s expected; the coffee maker performs as it’s expected; and, when combined they produce the expected result of controlling the coffee maker remotely.  Now, if you have an invention that produces some new or unexpected results, this can be patented, even if the individual parts of the invention are known.

What these new rules (or examination guidelines) mean for you is that, if your patent is allowed, it will be a much stronger and more defensible patent, having gone through a more rigorous examination process.  Basically, the truly new ideas get patent protection, and small, obvious changes to known products do not.  As part of our service to you, we will honestly assess your invention and give our opinion on the patentability of your invention.  However, since these are new rules, and the patent landscape and prior art is ever-changing, there is a risk that a patent that was thought to be patentable will not be granted because of new rule interpretation or previously unknown prior art being brought forth (see Patent Search section).

After the utility application is filed, the prosecution begins and the examiner will research the prior art to make sure an invention is patentable.  Sometimes, although rarely, the examiner will not find any prior art that is close to the claimed invention in the application and will immediately allow the application, permitting it to become an allowed patent.  More often though, the examiner will find something related to the claims and issue an office action, listing the allowed and rejected claims and the reasoning behind the rejections.  It is now the duty of the applicant to respond to each and every rejection and make any necessary amendments (or changes) to the application to place it in condition for allowance.  If the examiner agrees with the amendment and arguments, the application will be allowed, if not, another office action will be mailed (possibly being made final).  A final rejection is not the end of the line; our patent professionals are experienced in navigating the prosecution process and will help you in overcoming these rejections, if your invention can be truly be differentiated from the prior art.

The utility patent application process is long, complex, and full of pitfalls.  With the help of our experienced team, you can navigate through this process and obtain patent protection for your unique invention.

Design Patent Applications

Design patents only protect the ornamental appearance of a product or item.  They do not protect the function of the item or anything beyond appearance.  Instead of a 20 year duration, a design patent expires after 14 years.  Since only the appearance of the invention is protected, a design patent is considerably weaker than a utility patent (which protects function, not ornamental design). 

The benefit of the design patent is that is a much less expensive means to obtain a patent pending status on your product (roughly $215 for the USPTO fee).  After all, when you are in the design application process you don’t have to advertise anything beyond just “patent pending”, whether it’s a utility or design patent will be learned by all when the patent becomes published.  It’s your right to keep the application status of your invention secret as long as possible.

If you (the licenser) plan on trying to license your patent to a company (the licensee), a design patent may not be a good choice.  Because only the appearance is protected, the licensee may not have faith in their ability to prevent others from changing the design by a small degree and competing with them.  Even though a design patent is still a sort of monopoly, it is a weak one. 

Many companies use design patents to protect the look of the product in conjunction with a utility patent to protect the function.  Or, they may choose to apply for a design patent on an existing (old) product line.  One example is a dish soap company may choose to protect the design of a new soap bottle, just so a competing company or store branded products cannot directly mimic the look.  Of course, many companies rely on other protection mechanisms, such as trademark and copyright protection.

Design patents, as briefly discussed, have their benefits and drawbacks.  To see if a design patent is right for your product feel free to contact us for a free initial consultation.


Patent Drawings

For most every patent application, drawings must be submitted to fully support the description of the invention.  A few applications do not need drawings, such as certain processes.  Most likely though, provisional, utility and design patent applications will all need accurate and descriptive drawings.

For provisional applications, formal drawings are not needed.  In fact, a neat and clear sketch will be enough to obtain an early filing date.  When a sketch is clear, it helps to teach the inventive qualities to the examiner when he/she looks at the provisional application when referenced by the dependant utility application.

For a utility application, the drawing standards are much stricter.  The USPTO has very particular requirements regarding the layout, numbering, and even the types of lines that can be used.  Most of all, they need to clearly communicate the invention that is described in the claims.  The examiner should be able to read the claims and, for each part of the claim, identify a corresponding part on the drawings.  Our team of draftsmen uses CAD software to prepare drawing sheets that are descriptive and comply with required drafting standards.   

For a design application, the level of detail must be extremely high; and more care must be taken to insure the invention is accurately represented.  Beyond the title and the one claim, there are no descriptive words that can be used to further enhance the strength of the patent, relying completely on the drawings.

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