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How do I go about patenting my invention? Ask the lawyer

July 4, 2023

Q: Two questions: I have come up with a device and have the detailed drawings for it. Now I want to try to patent it. How do I go about doing that?

J.S., Rancho Palos Verdes

Ron Sokol

A: Patent law allows you to patent an invention, machine, process, plant or design. Once (or if) you have determined that your device can be protected by a patent, you will then decide what type of patent you need.

There are different kinds of patents. I believe the two most common are a utility patent, which protects new inventions, machines, processes, compositions of matters, article of manufacture, and any improvement on these items; and a design patent, which protects the aesthetic or the appearance of an invention. There can be an invention that qualifies for both of these kinds of patents, in which event you may file for both.

Note that the utility patent protects how your invention works or functions, whereas the design patent protects the appearance of your device.

The threshold issue: If you are going to seek to patent a device with the United States Patent & Trademark Office (whose website is online), you have to present a novel invention. This “novelty” requirement means your invention is different from anything that has ever been patented before and different from anything that has even been publicly disclosed.

Research indicates that if you have something that is patentable, you must file the application within 12 months of publicly disclosing your invention, or from the date you offered it for sale. Note that a part of your due diligence should be to research whether any one has ever patented the device you are pursuing, or has already disclosed it to the public.

Patent law is a specialty. It is not uncommon for a patent lawyer to be an engineer or have a good working knowledge of the engineering field. I would be remiss if I did not encourage you to consult with (if not retain) a patent law specialist.

I also have not mentioned a provisional patent, which you may want to consider, or a plant patent. So, again, give thought to sitting down with a specialist.

Q: Second question: What is meant by non-obviousness? I understand my invention has to be “non-obvious.”

J.S., Rancho Palos Verdes

A: Non-obvious is both a subjective and factual inquiry, undertaken by the patent examiner to assess if your invention is new, or instead just a combination of previously patented or publicly disclosed inventions. The subjective part is that the examiner is conducting the determination as to whether an ordinary person skilled in the field, pertinent to your invention, would have believed the invention is obvious at the time you filed.

Bottom line, you want to be able to show that there is a real difference between your invention, and previously patented and publicly disclosed items.

Vocabulary

Utility patent: This is what most people think of when they think about a patent. It’s a long, technical document that teaches the public how to use a new machine, process or system. The kinds of inventions protected by utility patents are defined by Congress. New technologies, such as genetic engineering and internet-delivered software, are challenging the boundaries of what kinds of inventions can receive utility patent protection.

Provisional patent: United States law allows inventors to file a less formal document that proves the inventor was in possession of the invention and had adequately figured out how to make the invention work. Once that is on file, the invention is patent pending. If, however, the inventor fails to file a formal utility patent within a year from filing the provisional patent, he or she will lose this filing date. Any public disclosures made relying on that provisional patent application will now count as public disclosures to the United States Patent and Trademark Office.

Design patent: This patent offers protection for an ornamental design on a useful item. The shape of a bottle or the design of a shoe, for example, can be protected by a design patent. The document itself is almost entirely made of pictures or drawings of the design on the useful item. Design patents are notoriously difficult to search simply because there are very few words used in a design patent. In recent years, software companies have used design patents to protect elements of user interfaces and even the shape of touchscreen devices.

Plant patent: Just what it sounds like, a plant patent protects new kinds of plants produced by cuttings or other nonsexual means. Plant patents generally do not cover genetically modified organisms and focus more on conventional horticulture.

Ron Sokol has been a practicing attorney for over 40 years, and has also served many times as a judge pro tem, mediator, and arbitrator. It is important to keep in mind that this column presents a summary of the law, and is not to be treated or considered legal advice, let alone a substitute for actual consultation with a qualified professional.

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How do I go about patenting my invention? Ask the lawyer

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