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How long does it take to get a patent?

There are a number of factors that effect the time until you receiving a patent as explained below.

Patentability Searching:
First, if you choose to have a patentability search performed by our office, that generally takes 1 to 3 weeks to complete, depending on the volume of search results and the workload at the time.

Patent Application Drafting:
If we receive all the information about your invention before we start drafting your invention, on average it will take between two to four weeks to draft the application for your review. If shorter time frames are needed, we will strive to achieve a timeline that works with your schedule. In a past expedited circumstance, we were able to file an application within 2-4 days after receiving all the required information about the invention. The time frame within which we could draft a patent application depends on our present workload, the complexity of the invention, and the amount and type of information provided by the client before drafting begins, as well as the number of changes provided by the client after drafting begins. After the patent application is filed you will have “patent pending” status in the United States.

After Patent Application Filing
After filing, the length of time to patent grant depends on whether you begin with a provisional or a non-provisional patent application in the United States. If you begin with a non-provisional patent application, the U.S. Patent and Trademark Office (USPTO) will place your application in a queue to be examined by a Patent Examiner when the USPTO receives your complete non-provisional patent application.

The present (2019) average wait time until the USPTO provides us with the results of the Patent Examiner’s first substantive review and examination (average pendency to first office action) of the patent application is about 16 months. The average time it takes to obtain a patent from the patent office at this time is about 24.1 months or about 2 years. [See the current wait time statistics at the USPTO website [here] (best viewed with Internet Explorer or Chome)].

The actual amount of time it will take for your patent application to be examined, and if found allowable, to issue into a patent will vary. Some technical areas have a longer or shorter wait time because the USPTO groups patent applications based on the invention’s technology and assign patents to technology groups (known as art units) of examiners at the USPTO for examination. If one art unit has more patent applications in the queue than another art unit, then patent applications assigned to the art unit with relatively more patent application will wait longer for examination and ultimate issuance.

If you decide to file a provisional patent application, the patent office will not put your provisional patent application in a queue to be examined. Instead, a non-provisional patent application must be filed within one year of the filing date of the provisional application, in order to claim the benefit of the provisional application filing date. In the case that you file a provisional and then file a provisional on the one year anniversary date of the filing of the provisional, one additional year will be added to the times listed above. This is true because you have waited that 1 year to have the non-provisional application placed in a queue to be examined.

Prioritized Examination
The USPTO offers a prioritized examination (also known as Track One) for utility and plant patent applications for a limited number of patent application per year. To be considered for the prioritized examination, the applicant must pay additional fee to USPTO. Under the prioritized examination procedure the USPTO assigns a priority status to your application. The USPTO aims to get to a final disposition (allowance or final rejection) of your patent application within 12 months of the prioritized status being granted.

Patent Pending
While your patent application is pending (after the patent application is filed but before the patent is granted) you will have patent pending status. You are not required to wait until you obtain a patent to start exploiting (making, marking, selling, licensing, etc.) your invention. You can begin doing so after the patent application is filed, as long as the patent application fully describes and covers all the elements of your invention that you intend to disclose and use publicly.

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How To Choose a Strong Trademark

Trademark Strength

Not all trademarks are equal in strength. The strength of a mark is a measure of the extent and scope of protection provided for the mark under trademark law. As shown in the diagram, strong marks have a bigger buffer or protection moat around them and thus prohibit competitors from operating within that buffer. Weaker marks have a smaller buffer. The smaller buffer allows competitors to use marks that are more similar to a weak mark than would be allowed for a strong mark, all other things being equal. This post explains how to select a strong trademark so you can keep your competitors at a larger distance from you in terms of the similarity in the marks that competitors use.

A strong mark is one that has a greater level of distinctiveness in relation to the product or service with which it is used.A strong mark should be distinctive rather than descriptive. Descriptive marks that merely describe the goods or services that the mark is used on or in connection with are difficult to protect during initial use. The reasons for this are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.

Continuum of Distinctiveness TM_Strength-003
The strength of a mark can be categorized along a continuum, ranging from marks that are highly distinctive (e.g.“Pepsi” for cola) to marks that are a generic name (e.g. “coffee”) for the goods or services. The degree of distinctiveness of a mark can be determined by considering it in relation to the specific goods or services. The degree of distinctiveness of a mark corresponds to the degree of protection provided by trademark law. The more distinctive a mark is the more protection provided by law.

Marks that are highly distinctive when used in relation to the goods or services are considered arbitrary or fanciful. Arbitrary and fanciful marks are located on the strong end of the continuum. Next on the continuum are suggestive marks, followed by merely descriptive matter. Last are generic terms. Generic terms are at an end opposite arbitrary and fanciful marks.

PespiFanciful marks include terms that are created for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are generally unknown in the language, such as PEPSI . The word Pepsi did not exist before Pepsi created it and began advertising under it.

Next, arbitrary marks are those that are commonly used but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services, such as APPLE for computers. The term apple had nothing to do with computers before Apple Inc. began using the term for that purpose.

Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought or perception to reach a conclusion as to the nature of those goods or services. For example, BEAUTYREST suggests something about the nature of mattresses. beautyrestA suggestive term requires imagination, thought, or perception to reach a conclusion regarding the nature of the goods or services. A suggestive term is different from a descriptive term because a descriptive term immediately tells something about the goods or services.

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the corresponding goods or services. Descriptive marks may not be registered on the primary register without proof that the mark is widely recognized by consumers–that is the marks have gained “secondary meaning” in the marketplace. For example, BED & BREAKFAST REGISTRY was found merely descriptive of lodging reservations services. However, American Airlines was likely initially merely descriptive (its an airline that flies in America), but over time has become widely recognized and thus protectable.

Generic terms are those terms that the relevant purchasing public understands primarily as the common or class name for the goods or services, e.g. coffee. Generic terms alone cannot be protected as trademarks. However generic terms are sometimes combined with other terms or components to achieve protection over the combination, e.g. Starbucks Coffee. However, the Starbucks Coffee trademark cannot be used to stop others from using the term coffee alone or in combination with other terms not similar to Starbucks.

Selecting Strong Marks
The strongest marks are fanciful and arbitrary marks. However, practically these marks require the most marketing resources to create consumer recognition. Suggestive marks provide a middle ground where the mark suggests a feature of the product or service thereby reducing the amount of marketing resources required to inform your customers as compared to fanciful marks, while still providing a reasonable amount of protection under trademark law.

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Eric Waltmire Presenting on IP for Dupage’s REV3 Innovation Center

Rev3On March 11, 2014 at 6:30pm, REV3 Innovation Center of Dupage is hosting me for a presentation on Strategies for Protecting Intellectual Property: Innovation and Branding. Intellectual property plays a role in adding value to most businesses, whether through invention, branding, or the use of other creative works.

My presentation will help business owners, entrepreneurs, and inventors understand how patents and trademarks can be used to protect innovation and business branding. It will provide strategies for protecting intellectual property rights under various scenarios and funding circumstances. Sign up here to attend.

Particularly the presentation will cover the following.

Patents and Invention Protection:

  • What is patentable
  • Patent Searching
  • The U.S. Patent Application Process
  • When to maintain secrecy and when to publicize
  • Seeking Foreign Patent Protection
  • When not to seek a patent
  • When and how to rely on trade secret protection

Trademarks and Brand Protection:

  • Value of trademarks
  • Types of marks
  • Strategies for choosing legally strong marks
  • Proper trademark use
  • Strategies for relying on branding in the absence of patent protection

In addition, the presentation will discuss steps that are needed to obtain and maintain ownership over the intellectual property created by your company, its employees, and its contractors.

REV 3 Innovation Center
REV3 Innovation Center is an incubator and future co-working space in DuPage County. REV3 is focused on helping people and companies manufacture products, software, and technology to drive the third industrial revolution. One aim of REV3 is to provide facilities to allow companies to prototype, build, and assemble small and moderate scale product volumes.

If you are interested in getting involved with REV3, please contact me.

Location
The presentation will be held at the Illinois Institute of Technology (IIT) – Rice Campus at 201 E. Loop Rd., Wheaton, IL 60189.

Please sign up to attend here: http://rev3dupage.com/events/?ee=12.

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How Do I Reduce Patent Costs?

PatentCostsReduceBelow are some steps that you can take to help reduce the cost for us to prepare a patent application on your behalf. These steps are not required as we can draft an application based on your requirements and information. However, by following the guidelines below you can assist in reducing patent preparation costs. See our separate article for general information about how much a patent costs.

Provide a Detailed Description of the Idea at the Start
It is important that you provide the most detailed written description of your idea. The written description should include drawings. The drawings can be hand-sketched. The written description should make reference to individual parts of the invention shown in the drawings. The drawings should have parts labeled by number. The written description should make reference to the parts by name and number.

Generally, short summaries or brochures do not provide sufficient details about the invention and how it works. If we have to request many details about the invention from the inventor, this adds time to the process and drives up the cost of preparing an application. Another scenario where we generally need to put forth a lot of effort to obtain details about the invention is when the inventor only orally describes the invention and we need to draft the application from the oral description.  When the inventors presents a clear and detailed description of the details of invention, its various functions, and the benefits of the invention as compared other inventions in the field, we are able to most efficiently prepare an patent application on the invention.

Start with a Complete Invention
When an inventor keeps inventing during the time when we are drafting the application, the cost of preparing the application can rise substantially. Description of the new features must be added. Sometimes various parts of the patent application need to be rearranged to account for the new developments. Often times drawings will have to be changed or new drawings created to include the new details not provided in the beginning. Adding details after the application drafting is underway generally takes more time, and generates more costs, than if the details had been provided at the beginning.

Provide a First Draft
We can often provide an example patent application that is in the field of the inventor’s invention. A template can also be provided for the inventor to start from to assist in developing a detailed description of the invention. If the inventor drafts a first draft based on a template provided, cost can be reduced. We can then take this first draft as a base and draft a patent application that meets our standards having all the appropriate language and detail.

The cost to prepare a patent application depends on many factors, however the above guidelines can help reduce the cost for us to prepare a patent application for you.

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What is an Invention?

For our purposes, we will focus on patentable inventions. Abstract ideas cannot be patented but many ideas are implemented in a manner (an invention) that falls within what is patent eligible subject matter. There are four general requirements for an invention to be patentable (as a utility patent): (1) it must comprise patent eligible subject matter, (2) it must be new, (3) it must be useful, and (4) it must be non-obvious. Each requirement for a utility patent will be address below. Then the requirements for design patents and plant patents will be discussed.

Patent-Eligible Subject Matter
The subject matter of the invention must fall within one of the patentable subject matter areas set forth by Congress. Patentable inventions include the following: a process/method, machine, manufacture, or composition of matter, or any new and useful improvement thereof. The courts have stated that Congress had intended patentable subject matter to be very broad and may include anything under the sun that is made by man.

New
The invention must be new (e.g. novel). Patents are only granted on new inventions. Patents are designed to encourage inventing and the disclosure of inventions. Therefore if your invention has already been disclosed to the public in certain predefined ways, then you may be prohibited from obtaining a patent over your invention. A patent novelty search is designed to provide you with some information on whether your idea is new and therefore patentable.

However, an invention may be considered new even if the invention includes parts that are old and known. Many (if not most) inventions are an improvement on an old invention. Even the combination of old parts in a new way can be patentable. Similarly a new method of using a known device my be patentable.

Useful
A patentable invention must have a use or utility. This is the most easy element to satisfy. Unless the invention is only useful as landfill, the invention most likely is useful for something.

Non-obvious
The invention must be non-obvious in view of the prior art (prior inventions and publications, among other things). The non-obviousness requirement is intended to ensure that the invention is sufficiently different or new to warrant patent protection. The non-obviousness requirement is not necessarily synonymous with the common understanding of the word “obvious.” The non-obviousness element is very circumstance dependent. Very small changes may be considered non-obvious. You should be sure to check with an patent attorney before concluding that your invention is obvious.

If your invention meets each of the above requirements, then the invention should be eligible for patenting, assuming all of the procedural requirements are met in filing and prosecuting a patent application.

Design Patents
The above requirements are for utility patents. The ornamental design of an article of manufacture may receive a design patent if it is new and original. Therefore like invention of a utility patent, the ornamental design can be protected if it is new and non-obvious. As design patent protection is narrow, even small changes in the ornamental design of an article may received design patent protection.

Plant Patents
Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

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Use Based v. Intent-To-Use Trademark Applications

There are at least two types of federal trademark applications. The first is a use-based trademark application, also known as a section 1(a) application corresponding to the section of the law that authorizes the application. The second type is an intent-to-use application also known as a section 1(b) application.

Use-Based
A use-based application is one where the applicant is already using the mark in commerce at the time when the application for federal trademark registration is filed. Use of the Mark in commerce can include shipping or selling the goods with the mark or rendering services after advertising those services with the Mark.

Intent-to-Use Based
An intent-to-use application is one where the applicant has not used the mark in commerce or business at the time that the application is filed. The intent to use application allows the applicant to reserve a trademark that they intend to use before actually using it.

This allows the applicant to stake a claim to rights in a name (or other mark) while doing the work that is required to bring the product or service to market. Many preliminary matters such as purchasing supplies, designing logos, designing graphics, designing packaging, and so forth may need to be completed before the product or service can be put on the market. Such activities might require a substantial lead time between the time when the trademark is selected and the time when the products or services are provided. Therefore an intent to use application allows an applicant to reserve a mark so that they do not have a problem running into others who are attempting to register the same or similar name while there working on their product/service start up activities.

Conclusion
A use-based application is for those already using the mark and an intent-to-use application is for those who plan to but are not yet using the mark.

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What is a Patent?

PatentA United States patent is a property right granted from the United States government giving the inventor the right to exclude(stop) others from making, using, offering for sale or selling the patented invention in the United States for a limited period of time (usually 20 years from the filing date).

A patent is a type of intellectual property. Other types of intellectual property include: copyrights that protect the expression of an idea, trademarks that protect product and service source identifiers (brands), trade secrets that protect information and other items that have business value and are not generally known.

A patent provides a time limited monopoly over the invention in exchange for disclosing to the public the details and manner of composition of the invention. The monopoly allows you to prevent others from benefiting from your inventive work without your permission. Therefore you may be able to charge more for your product or service that is protected by a patent, than would be possible if your product was not protected and competitors copied your product and competed with you.

This exchange of a monopoly for public disclosure, allows the science area of your invention to be advanced. During and after the time when your patent is in-force others can read about the details of your invention as described in your patent, which might spark other non-infringing ideas which will advance the art/science related to your invention. Therefore you benefit from the monopoly provided by the patent and the public benefits by understanding your invention which can advance related engineering and sciences.

Maintenance fees must be paid by the patent owner at certain intervals in order to keep the patent from expiring before the patent term ends.

A U.S. patent does not provide protection outside of the country. However a U.S. patent can be used to prevent the importation of infringing products in to the United States from abroad. Foreign patents are needed to receive protection in chosen foreign countries.

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What Happens After A Federal Trademark Application is Filed?

TrademarkApplicationFiled-001Generally an applicant should not be too concerned with how long it takes to obtain a federal trademark registration at the United States Patent and Trademark Office. Once your trademark application is filed, later filed applications by others are less of a concern. Further, in the United States, trademark rights accrue based not only on registration but also on use. Therefore simply by using your trademark in commerce you can begin to generate common law rights which you can assert even before you obtain a registration. This article will explain the process and the general timing of events after an application is filed.

Trademark Office Approval Is No Guarantee of Freedom to Use Mark
Approval of a trademark application by the U.S. Patent & Trademark Office (USPTO) does not guarantee that the use of the mark is clear, e.g. that your use will not infringe another’s trademark rights. This is true because, as mentioned above, a trademark user can generate common law rights by use alone, and the USPTO will not search for common law trademark usages that are not registered. Only a comprehensive trademark search can reveal information sufficient to provide advice regarding whether your use of a mark is clear.

If you’re concerned about another filing a trademark application before you begin using your trademark, you can file an intent-to-use trademark application. After the intent to use application is filed, you can begin using your mark without waiting for the trademark registration to issue. In fact there is almost no trademark reason to wait, after an application is filed, for a trademark registration to issue before using your mark. This is true because the USPTO’s granting a registration, as provided above, is not a bulletproof clearance for you to use your Mark. In certain circumstances a court can reverse the trademark office’s decision to grant a trademark registration if a prior trademark user has superior rights. If you need clearance assurance you should have a comprehensive trademark search conducted.

Filing to First Office Action or Allowance
After your trademark application is filed you should expect to hear back from the trademark office whether there is an objection or refusal to your application or whether it will be allowed within three to six months. Current USPTO stats provide the average time to first office action (first response from the USPTO) or allowance after filing is about three months.

Refusal or Objection
If there is a refusal or objection the USPTO will provide that to you in writing in the form of a Office Action. The Office Action will explain the time period in which a response is required. Generally a six-month time frame from the date of the Office Action is allowed for filing a response. A response can be filed earlier.

Refusals or objections provided in an Office Action maybe due to relatively simple formalities, such as the USPTO requiring a change to the description of goods/services provided in the application. In other cases refusals are based on an allegation by the Trademark Examining Attorney that your mark conflicts with another prior registered mark. Refusals based on an alleged conflict with another mark tend to require more involved responses than those regarding application formality issues.

If you receive a refusal or a rejection, the time until you receive a registration, if you’re successful in overcoming the refusal or objection, depends on how long you wait to file a response and how long the Trademark Office takes to consider and reply to your response. Further, in some cases it may be necessary to reply to multiple Office Actions issued by the trademark office or occasionally to pursue an appeal, all of which take more time.

Publication
If the USPTO does not issue a rejection or refusal or if you are successful in overcoming a rejection or refusal, then the USPTO will take an action based on the type of trademark application you have filed (use v. intent-to-use). If you filed a section 1(a) use-based application for registration on the primary register, then the USPTO will provide you with a notice that they will publish the application for opposition. Once the application is published for opposition anyone who believes they would be damaged by you receiving a registration has the opportunity to object to your application by filing an opposition. If no opposition is filed then the US PTO will take one of two courses depending on the type of application that is filed.

Registration or Notice of Allowance
If the application is a used based section 1(a) application then the USPTO will issue a certificate of registration within a few months after the end of the 30 day opposition period, if no opposition is filed. If the application is a section 1(b) intent-to-use application, then the USPTO will issue a notice of allowance within a few months after the end of the 30 day opposition period. The applicant will be given six months after the notice of allowance to file a statement of use proving that they are using the trademark in commerce. Extensions of time can be requested in six-month increments if the applicant cannot file a statement of use showing use of the mark within six months after the notice of allowance.

Conclusion
Currently it takes on average 10 months for a typical use-based trademark application to register and for a intent-to-use application to receive a notice of allowance. Your application could take longer or less time depending on if there is a refusal or objection or if the USPTO processes your application at a quicker or slower rate than average.

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Should I File for a State or Federal Trademark Registration?

FederalTrademark_vs_StateTrademarkNow that you determined that you need to seek a trademark registration. The next question is what type of registration should you seek: a registration from your state or registration from the federal government? The answer is the federal government in most cases and here’s why.

Costs
State trademark registrations cost less. The government fees for state registration depend on the state but tend to be less than a federal registration. For example, an Illinois state trademark application has a $10 registration fee. Whereas a federal trademark application at the United States Patent & Trademark Office has a fee in the range of $275 to $325 per class of goods/services declared in the application.

Geographic scope
The scope of protection provided by state trademark registration depends on the state, but does not extend outside of the boundaries of the state. In contrast, a federal registration provides protection throughout the entire nation. So, while state trademark applications cost less you also get less protection.

Conflict with Federally Registered Marks
One problem with relying on a state trademark registration is that the U.S. Patent and Trademark Office (USPTO) will not check state trademark databases when reviewing applications for a federal trademark registration. Therefore, your state trademark registration will not block a party from obtaining a federal trademark registration on a mark that is the same or similar to yours. If someone has obtained a federal registration before you file and obtain a state registration, their federal registration will trump your state registration. Even if you obtain your state registration before a third party obtains a federal registration, your rights may be limited by the existence of the federal registration. The bottom line is that a state registration will not provide much benefit in the case of a conflict with a federal application or registration.

Problems with State Trademarks: the case of Burger King v. Hoots
The case of Burger King of Florida Inc. v. Hoots, 403 F. 2d 904 (7th Cir. 1968), shows how a state trademark registration will not hold up against a federal trademark registration, even if the state registrant is the first to use the mark within the state. In that case, Burger King (the well-known chain) sued Gene and Betty Hoots for operating a restaurant in Mattoon, IL under the name Burger King.

Hoots started their Burger King restaurant in Mattoon in 1957 and in 1959 they received a state trademark registration from Illinois, without knowledge of plaintiff Burger Kings’ prior use of the same mark. The plaintiff Burger King started in Florida in 1953 and was operating 29 stores in multiple states by 1957. The plaintiff Burger King filed a federal trademark application in September 1958 and received its federal registration over the Burger King mark in 1961. In the same year Burger King opened a restaurant in Skokie Illinois and had knowledge of the Hoots Illinois trademark registration at the time. Burger king continued opening restaurants and had 50 Burger King restaurants in Illinois in 1967.

Basically Hoots was the first to use the Burger King mark in Illinois and was first to register the mark in the State of Illinois.

The court found that the Hoots’ rights to use the Burger King mark were limited to the common law right in the geographic market area about their operation in Mattoon (20 mile radius around the Mattoon location). The court found that federal trademark law trumped state trademark law and the state law could not expand Hoots common law rights. The state registration did not give Hoots the right to operate anywhere in Illinois because that was beyond the area where the Hoots actually used the mark.

Even though Hoots was first to use the mark in Illinois, their state trademark registration was essentially worthless against a federal trademark that was obtained after they started using the Burger King mark in Illinois. This case shows the weakness of state trademark registrations.

Local Businesses and the Internet
If your business is strictly local, you might be considering a state trademark registration. One such example of a strictly local business might be if you have a restaurant and you have no plans to create a chain of restaurants that extended outside of your state. Before the rise of the Internet, the approach of seeking only state trademark protection on strictly local business had more merit (however it still had the risks of conflict with Federal marks listed above).

But now virtually every business has a website that is accessible from anywhere in the world. Therefore if you have a strictly local business and people are searching for your business on the Internet, it’s possible that your business name or trademark will conflict with another business located in a different locale. In other words, the presence and searching on the Internet creates the possibility that strictly local businesses will run into trademark conflicts online that they wouldn’t otherwise encounter. Some search engines attempt to provide search results based on the searcher’s location, however relying on the search engine algorithms to protect your brand is not recommended.

Border issues
Businesses located near the border of their state can also run into problems. State trademark rights do not extend beyond the boundaries of the state. So, if your business is located close to the boundary of your state and another business starts up across the boundary in another state, but close by, your state trademark registration will not be effective to stop them.

Conclusion
State trademark registrations are generally inexpensive but provide few benefits. Therefore if you’re interested in protecting your brand you should consider filing a federal trademark application if your circumstances allow.

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Patent Protecting Your Invention When Launching a Kickstarter Campaign

CF3The problem is that you need to publicize your invention on Kickstarter or Indiegogo or another crowdfunding platform to have money to make and launch your invention, but patent law encourages you to file a patent application before you make your invention public. If you are seeking money to develop and launch your invention, you might not have any money or you might not want to spend any money on a patent attorney before you know whether your product will be commercially successful. On the other hand, a number of Kickstarter campaigns claim the product is patent pending. Here’s how to best protect your ability to obtain a patent on your invention when launching a Kickstarter, or Indiegogo, or other similar crowdfunding campaign.

Crowdfunding Patent Cheat Sheet
For those that don’t want to read this whole article here’s the short answer:

Step 1: Patent Searching. Patents are only granted on new inventions. Just because you don’t see your proposed product on the market, doesn’t mean its new. Many products are described in old patent documents at the patent office, but are not on the market. Hire a patent attorney to do a patent search. If you can’t afford that, do your own patent search to see if your invention is already described in a prior patent or patent application. If doing it yourself, you can word search at the U.S. Patent Office website or you can search by patent class or you can search at Google Patents.

Step 2: Draft and File Provisional Patent Application. If the patent search is clear, hire a patent attorney to draft a patent application on your invention before you launch it on Kickstarter. If you can’t afford a patent attorney, draft and file your own provisional patent application after reading a book or two on patent drafting, like Patent It Yourself.

Step 3: Launch your Campaign. Hopefully it is successful. Carry out the project plan. Begin selling your product and making money.

Step 4: File a Non-Provisional Patent Application. If your product is successful and/or you want to continue seeking a patent, you must file a non-provisional patent application within one year of the filing of the provisional patent application. Use some of the money you made selling the product to hire a patent attorney to do this. DIY on this step is very difficult, harder than any of the of the prior steps. It’s unlikely (not impossible, but unlikely) that you’ll be able to write strong and broad patent claims that will provide you with any value in a resulting patent.

Late to the Party: If you already launched your campaign without filing a patent application, you likely can still file a patent application within one year of your first going public, selling, or offering for sale of the invention. But, you should not rely on the one year grace period if you can avoid it.

Here’s the detailed explanation.

Patent Searching: Is your Invention New?
The first step in the patent process is almost always performing a patent novelty search to see if your invention is new. The patent office only grants patents on inventions that are new.

But you are planning to launch a Kickstater campaign. Kickstarter is for creative projects. So, you don’t have to worry about whether your invention is new or not, right? Not so. You may have done market research that shows there is nothing like your invention on the market. But there are a lot of uncommercialized products described in patent documents that you won’t find on the market.

You can hire a patent attorney to perform a search or you can do it yourself. Patent searching takes time and study to get good at. However, as between doing no search and searching yourself, searching yourself is worth a try.

You can word search at the U.S. Patent Office website. However, presently only patents going back to 1976 are word-searchable at the patent office website. Patents older than 1976 are not word searchable at the patent office website. But all patents are searchable by patent class. You can also search through other search tools, such as Google Patents.

If the search results look good, you can move to the next step: preparing and filing a patent application.

Patent Application Stage
There are two questions at this stage: (1) do I hire a patent attorney or do I do it myself and (2) do I file a provisional or a non-provisional patent application?

Provisional v. Non-Provisional Patent Application
If you must draft and file a patent application yourself, then you should file the application as a provisional patent application (see this article on provisional vs. nonprovisional patent applications). This is true because the USPTO is less likely to object to your submission (because there are lesser requirements for provisional applications) and because you will want to have a patent attorney draft and file a non-provisional patent application on your invention within one year. If you can hire a patent attorney, then the decision whether to go provisional or nonprovisional may depend on some of these factors: (1) whether you anticipate further developing your product, (2) whether your need a patent sooner/faster (non-provisional) or are ok with delaying one year (provisional), and (3) whether you need your upfront cost to be as low as possible (provisional). Here’s how to decide between a provisional and a nonprovisional patent application.

Hire A Patent Attorney v. DIY Patent Drafting
It is recommended to hire a patent attorney. It is hard for someone to write a good patent application on their first try (see the problems that can arise in writing your own patent application).

However, you are seeking funding through Kickstarter, so there’s a chance that you don’t have any money to hire a patent attorney. Or maybe you could afford it, but you take a business risk and allocate such money to other portions of the project. If for whatever reason you decide to skip hiring a patent attorney, you should take a shot at drafting and filing your own provisional patent application, because it has a chance of being better than doing nothing.

There are two approaches to drafting your own patent application. The first is to take whatever technical description you already have written along with any drawings and file them as a provisional patent application along with the provisional application cover sheet. The patent office will not review the content of your provisional patent application and therefore will accept just about anything as a provisional patent application (e.g. scientific papers, marketing sheets, back of the napkin sketches). This first option to just file whatever you have already written is the easiest and fastest option but the worst in terms of your chances of the provisional application “holding up” and being worth anything later.

The better second option is spend some time studying the requirements and form of a proper patent application. You might seek out patent self help books for this purpose, such as Patent It Yourself. These books are not a substitute for hiring a patent attorney, but if you must do it yourself, these resources are a good start so you will have a better chance of writing an application that might be worth something. Again there’s no guarantee that the application you write will hold up, but its possibly better than doing nothing.

Launch Campaign
Now you can launch your campaign. Hopefully it is successful. Carry out the project plan. Begin selling your product and making money.

Non-Provisional Patent Application
After the provisional patent application is filed and your project is launched, if the project is successful and you want to continue to seek patent protection, you will need to have a non-provisional patent application written and filed before the one year anniversary of the filing date of the provisional application. For this you certainly want to hire a patent attorney. Hopefully sales of your product have generated revenue, some of which you can use to hire one.

On the other hand if the project doesn’t take off and you don’t want to continue in the patent process, then you can do nothing and let the provisional patent application expire.

I Launched Without Filing a Patent Application, What can I do?
If you already launched your Kickstarter campaign without first filing a patent application, you may still be able to file. While patent law after the America Invents Act still has a one year grace period for certain circumstances, you should not rely on the grace period if you can avoid it. However, if you’ve already gone public with your invention, you may still file a patent application within one year of first going public, selling, or offering the invention/product for sale.

Conclusion
The above guide provides the you with options, depending on the available resources, to patent protecting your invention when launching a crowdfunding campaign for products (and certain types of services).