Intellectual Property

Did I Just Ruin My Invention by Talking About It? A Patent Attorney’s Guide to Public Disclosure in the U.S.
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Did I Just Ruin My Invention by Talking About It? A Patent Attorney’s Guide to Public Disclosure in the U.S.

Patents

Did I Just Ruin My Invention by Talking About It? A Patent Attorney’s Guide to Public Disclosure in the U.S.

If you’ve ever walked out of a pitch meeting and felt your stomach drop, thinking, "Did I just ruin my invention by talking about it?" after showing someone your invention. Whether you neglected to, or simply did not think about having them sign an NDA…you’re not alone. As a U.S. patent and IP attorney, I hear versions of the same question all the time: “I talked about my invention… did I just ruin it?” Sometimes the answer is not necessarily. Other times, you may have started a clock you didn’t know existed. Patent law has a way of punishing good intentions. Even though you may be excited, proud, and careful in your own mind, you can still accidentally create legal problems just by sharing too much, too soon. Understanding "public Disclosure." Most people assume “public disclosure” means going viral online or holding a press conference, but in the U.S. patent law, it can be far more ordinary than that. Common examples: Pitching at startup competitions, demo days, or investor showcases Posting how it works on a website, YouTube, LinkedIn, TikTok, or a forum Sending a detailed deck to a company without a signed NDA Handing out brochures, sell sheets, or slides that reveal the core features Offering the invention for sale, taking deposits, or accepting pre-orders If the public can learn the key details of your invention, the law may treat that as a disclosure. The U.S. one-year grace period is supposed to be your safety net, not your plan! Here’s the U.S. rule many inventors don’t learn until they’re already in trouble: If you publicly disclose your invention, you generally have up to one year from that disclosure to file a U.S. patent application. [...]

Understanding the Value of Patent Attorneys
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Understanding the Value of Patent Attorneys

Patents

Understanding the Value of Patent Attorneys

How Are Patent Attorneys Unique? Patent Attorneys are not your ordinary attorney. Patent attorneys can practice in most of the other areas of law, but not every attorney can practice patent law. In order to practice patent law, patent attorneys must have a degree in engineering or science. This makes patent attorneys very unique but also very qualified to help protect technology. Typically, patent attorneys with engineering degrees draft patents for mechanical and electrical devices and methods, whereas patent attorneys with science degrees draft pharmaceutical based patents, such as new medicines or other compositions of matter. In addition to taking at least one state bar, patent attorneys take the patent bar. The patent bar is difficult having a historical passage rate of approximately 48%. Think about it this way: less than half of the people that have studied for the patent bar will actually pass. This low passage rate speaks to the difficulty of the patent law. It also highlights why hiring a knowledgeable patent attorney is so vital. Why Hire a Patent Attorney? If it is worth patenting, then it is worth spending the money to hire an attorney. If your goal is to seek a license, most businesses will take your invention more seriously when you hire a patent attorney, at least because the businesses know that the patent they are paying a license for was drafted properly. When inventors file their own applications, the applications are littered with errors. Many of these errors would invalidate the patent should it ever be enforced in litigation. What do Patent Attorneys Do? Perform Patent Searches Provide patentability opinions Prepare nondisclosure agreements Prepare and record patent assignments Draft and file patents before the USPTO Enforce patent [...]

Understanding the Delicate Balance Between Functionality and Ornamentality in Patent Law
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Understanding the Delicate Balance Between Functionality and Ornamentality in Patent Law

Patents, Design Patents

Understanding the Delicate Balance Between Functionality and Ornamentality in Patent Law

When inventors and designers embark on creating new products, the boundary between functionality and ornamentality often becomes a key consideration, especially in the realm of design patents. According to the United States Patent and Trademark Office (USPTO), an ornamental design is one "created for the purpose of ornamenting" and should not merely be a by-product of functional or mechanical considerations (In re Carletti, 1964). This distinction is critical as it determines whether a design can be protected under patent law, specifically under 35 U.S.C. 171, which requires a design to be new, original, and ornamental. The Essence of Ornamentality The principle of ornamentality stipulates that a design must be primarily ornamental rather than functional. This means that the design's aesthetic appeal should be its main purpose. The courts have consistently reinforced this view by analyzing the overall appearance of the product rather than the individual features when determining a design's patentability (L.A. Gear Inc. v. Thom McAn Shoe Co., 1993). Therefore, even if certain elements of a product are functional, the overall design must contribute aesthetically to the product's appearance to qualify for a design patent. Functionality vs. Ornamentality One of the pivotal challenges in design patent law is distinguishing between what is functional and what is ornamental. A purely functional design, one that is dictated by utilitarian purposes, is not eligible for a design patent. This was affirmed in Norco Products, Inc. v. Mecca Development, Inc. (1985), where the court held that a primarily functional invention could not be patented as a design. However, this does not mean that a functional item cannot have an ornamental design. The design itself must add an ornamental value that is independent of the item's functional aspects. The [...]

What Is A Provisional Patent?
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What Is A Provisional Patent?

Patents

What Is A Provisional Patent?

If you have a new idea for something, you may want to begin with a provisional patent application. This is an invention disclosure document that allows you to secure a priority date for a provisional application. With a provisional application, you do not need to meet all of the formal filing requirements of a non-provisional application. The formal requirements include formal drawings and specifications, among many other intricate details. Once you file a provisional patent, you are permitted to state that your invention has a patent pending. This provisional patent application lasts for 12 months from the date of filing. You should know what to do next to prevent losing the benefits of a provisional patent. What Is the Point of a Provisional Patent? Filing a provisional United States patent serves as a placeholder, allowing you to get an early filing date as you work on further development of your invention. Once your provisional application is filed, you can start securing the funding you need for a non-provisional application before the 12-month period ends. Another reason for filing a provisional application with the United States Patent and Trademark Office is that it can expedite the process. However, your provisional patent does not give you any legal rights regarding your invention. It only allows you to advertise your patent pending invention and secure an early filing date. You will eventually need to file a non-provisional patent application for your creation. Benefits of Provisional Patent Applications Filing a provisional application is ideal if you are trying to get the funding you need for your invention or you need more time to fine-tune your invention. One benefit of the provisional application is that it is simple. Another benefit [...]

What Is a Patent and Why You Need One
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What Is a Patent and Why You Need One

Patents

What Is a Patent and Why You Need One

Every inventor, entrepreneur, and company needs protection to prevent their unique ideas and intellectual property being copied by the competition. Applying for a patent in the United States is a smart move, and it starts by applying for a patent with the United States Trademark and Patent Office. This valuable protection keeps others from copying your invention for 20 years. You can start with a provisional patent, which is a placeholder patent, so you do not need to worry that someone will use your idea. A provisional patent will extent the life of the patent by 1 year. What Happens If You Don't Have a Patent? Patent attorneys can tell you what can happen if you don’t have a patent. Without one, your competitors could take advantage of and use your invention without your permission. This would result in reduced market share, among other things. You would be limited in licensing, selling, or transferring your innovation without a patented invention. Someone else could potentially also patent your idea first. This is why filing a provisional patent application with the patent and trademark office is helpful, allowing you to block any copycats while you finalize funding or the final touches on your invention. What Are the Three Types of Patents? The United States patent office allows you to file three different types of patents – utility patents, design patents, and plant patents. You may find it helpful to discuss patents with a patent lawyer to help you figure out which one will best protect your invention. Utility Patents Utility patents apply to any invention, new discovery, or an improvement of any useful process, machine, product, or item already in existence. A utility patent would be ideal [...]