Rather than an involved detailed description of the invention, design patent applications rely exclusively on drawings of the invention’s appearance for the description and claims.  As a result, the most important portion of a design patent application is the drawings themselves.  The test for determining whether a design patent is infringed is whether the accused product would appear “substantially the same” as the patented design from the point of view of an ordinary observer.

Design patent applications are generally considered to be relatively narrow in scope and have a shorter lifespan than utility patents (14 years rather than 20 years).  Despite these limitations, design patents are very effective tools for protecting products having innovative appearance, in that they prevent your competitors from copying the appearance of your products.  Product appearance can often be as important, or even more important, to your customers as the functionality itself.

If you have a product with an innovative appearance, talk to your patent attorney about protecting your invention and securing your rights.

At its most basic, PCT application functions as a placeholder in time to secure the priority date for your invention, which allows you to postpone the expense of filing individual national patent applications in each of the countries for which you want to pursue protection. By filing a PCT patent application you incur a single initial filing fee (currently approximately three thousand dollars), but postpone all of the additional expenses of the national patent process for approximately 30 months from the application’s priority date.

For example, a US inventor may file a US patent application on July 15, 2009. This secures the application’s priority date as July 15, 2009. The deadline for filing a PCT patent application is one year from the priority date, or July 15, 2010. The national phase patent applications (those directed to protection in individual countries) would then be due approximately 30 months from the priority date, or January 15, 2012. Taking advantage of these deadlines, the patentee can postpone the PCT filing expense (several thousand dollars) for a year and postpone what are often the most significant expenses in the process, multiple national phase applications (each of which can be several thousand dollars), for two and a half years from the initial filing date. This gives the patentee time to assess the value of the invention and analyze the potential markets throughout the world before making more significant investments in international patent protection.

Multinational corporations rarely have difficulty in determining whether or not to file a PCT application. If the product(s) covered by the patent will be sold and used in international markets, then international protection will likely be pursued. Conversely, local businesses that do not have an international presence don’t have international market share to protect and will likely not pursue protection. The difficult decisions often fall on the start-up, the entrepreneur and the expanding businesses. For them, international protection may be of little value today, but it may be exceptionally valuable down the road. For example, an entrepreneur looking to license or sell his invention may limit his market of buyers if the invention cannot be protected outside of the US. Similarly, the start-up or the expanding business may lose out on an opportunity to capitalize on their innovation in new markets if they do not secure their rights.

There are times in which filing a PCT application may add an unwanted layer of expense and delay in your overall patent strategy, but for many situations filing a PCT application is a great opportunity to secure your rights internationally while postponing significant monetary investment. Whether it makes sense for your business is something you should discuss with your patent attorney.

There are two major patent law issues when bringing a new product to market: (1) make sure your product doesn’t infringe any existing patents; and (2) secure your competitive advantage in the marketplace by patenting your invention. The following is a brief guide I’ve prepared that gives you an overview of how I might assist you as you bring a new product to market.

1. Provide Me with a Complete Description of the Product

Given a clear and complete description of your product, focusing particularly on (1) the differences between your product and what exists in the market and (2) the competitive advantage you’ll gain with your new product, I will be able to assess the degree of risk of infringing existing patents and identify your patentable subject matter. I have a specific invention disclosure form you can use to collect your information, but regardless of how the information is collected and organized, the best disclosures include a combination of written description and drawings of the invention. While it is hard to give me too much useful information, as the client you should never feel overwhelmed or have to create information that doesn’t already exist in some form. Just give me what you have and together we can build from there.

2. I will Request a Patent Clearance Search

Once you have given me a clear description of your product, I will conduct a clearance search using a third party that specializes in patent searches. The purpose of the clearance search is to find any existing patents that may impact your ability to bring your product to market. Depending on how crowded your area of technology is, the search results may include a considerable number of patents for review.

3. I will Prepare a Freedom to Practice Opinion

After we receive the clearance search results, I will provide you with a freedom to practice opinion. The freedom to practice opinion will assess the level of business risk involved in bringing your product to market by comparing the identified patents to your product. The opinion will provide you with a brief description of how your product avoids infringing each of the identified patents. Assuming the search results do not include any patents that will block your product from the market, it will then be time to assess the patentability of your invention.

4. Assess the Patentability of the Inventive Aspects of the Product

Having reviewed your product description and the identified patents, I will help you assess the patentability of your invention, either in part or as a whole. Any inventive aspects of your product that are new (novel) and not obvious may be protectable. You don’t need a patent to bring your product to market, but an effective patent can help you secure your market share and keep your competitors from being able to ride on your coat tails.

5. I Will File a Patent Application to Protect Your Invention

Assuming there is patentable subject matter, I will help you determine whether to file a provisional patent application, a utility patent application, a design patent application and whether to pursue protection internationally in addition to in the US. The key at this stage is for you, the client, to help me assess the value of patent protection to your business. You should determine whether the costs involved in the patent process justify the potential benefits. Specifically, whether you will be able to leverage your patent for a competitive advantage, licensing or sales that will bring you profit. I will take great care to help you understand all of the costs involved in the patent process and help you understand the benefits you may gain through the patent process.

6. Your Business Profits

That’s the whole point, isn’t it?

I have seen far too many patents written solely from the perspective of describing the then current commercial embodiment of the invention. While that is one of the key elements to a well written patent, it is important to not stop there. A well written patent goes a step further to preemptively address the design alternatives and next generations of development. In other words, a well written patent defines the patented invention not only as the product itself, but further includes the space in which the owner will develop a commercial advantage. As a result, the patent drafting process should include looking for ways to design around the current state of the art, in the same way your competitors will look to design around your patent, and proactively capturing those designs in your patented invention.

At its heart and soul, a patent is a legal right to protect your invention, to secure a competitive advantage over your competitors or to generate revenue through licensing or by selling the patent. Patents can be very valuable business assets, but their value depends a great deal on the skill with which they are crafted. In my experience, the best patents synthesize the expertise of the inventors and the patent attorney while carefully tuning the scope of the patent to protect the true value of the invention; the commercial space in which your growing business will develop.

Over the past few years, it became increasingly clear the firm’s business model and my career goals were no longer aligned. The pressure of skyrocketing billing rates and the singular focus on only the largest of clients was moving us away from the broad base of clients I want to serve. In order to continue the relationships with patent prosecution and counseling clients, I needed to be able to reduce my billing rate and be able to market to and serve my target clients. I started Richards Patent Law in order to continue to practice the type of law I find most fulfilling with the types of clients to whom my services are most valuable.

Through Richards Patent Law, I have established a firm dedicated to serve clients who need a patent attorney that is excited to work with them, to explore deep into their inventions and to find the best solutions for them and their business. I’ve established a firm in which I can give each client the personal attention they deserve, whether they are multi-national corporations or a fledgling startup. Most importantly I’ve established a firm that excites me and inspires me. In other words, I’m once again following a business model that matches my goals.