The Wrong Question to Ask a Patent Attorney

I am fortunate that I get to see and be a part of many inventors’ efforts to bring their ideas to market. Sometimes it can be very disappointing when I come across enthusiastic, budding entrepreneurs who haven’t received good information from those who should be supporting them.

There are many great patent attorneys out there who do their best to help inventors get meaningful protections for their ideas. Unfortunately there are some who believe that their job is to get any type of protection issued by the USPTO (United States Patent and Trademark Office). In some cases, there mere act of having a patent brings satisfaction to the inventor, but if that inventor wants to bring their idea to market, they need more.

Initial discussions between aspiring inventors and patent attorneys often center on the question of “Is this idea patentable?” While that is an important question to answer, it isn’t what the inventor will ultimately need if they plan to bring their idea to market. What they really need to know is, “Can I get meaningful protections that will enable me to defend my idea from competitors?”

For ‘utility patents,’ (see basic definition below) these meaningful protections come from the specific claims that are approved by the USPTO.  These claims are carefully worded by a patent attorney to strike a balance between being as expansive as possible (to give the broadest protections possible) and being specific enough to have a chance of receiving a patent.

When your patent attorney is writing the initial claims, it is important to ask what is NOT included in the claims.  I have frequently seen claims (even the independent claims) with so many criteria included that, while the claims describe the idea, there are many changes that a competitor can make to provide the same benefits to customers and avoid the protections outlined in the patent.  It is important to understand that these claims can change during prosecution with the USPTO.  While these changes are occurring, continue to work with your patent attorney to clearly understand the implications for your legal protections.

As a general rule of thumb, ‘design patents’ (see basic definition below) offer lesser protections than utility patents since the design patents really just focus on the ornamental features of the idea.  Even with many simple designs, most competitors can relatively easily change features and provide customers with the same benefits thereby avoiding the protections provided.

For many, getting a patent is a very exciting accomplishment.  If you intend to bring your idea to market (or license it), you will want to make sure that you are asking you patent attorney the right question…

HELPFUL NOTES:

Utility Patent – Subdivided into mechanical, electrical and chemical categories, a Utility Patent protects the way an invention is used and works. Utility patents may be granted to anyone who invents a new and useful method, process, machine, device, manufactured item, or chemical compound – or any new and useful improvement to the same.

Design Patent – Protects only the ornamental appearance of an invention, not its utilitarian features.

Mike Bucci is President of K&M of VA Inc., a Richmond, Virginia company that exists to turn clever, useful and unique ideas into commercially successful products. He is also the author of the new book: “Start Living the American Dream: An Entrepreneur’s Guide to Turning Your IDEA into your FUTURE”, now available on Amazon.com.

Contact him at mike@kandmofva.com

With over 15 years of experience in corporate America including several fortune 100 companies and top tier management consulting firms, Mike learned many lessons but had always dreamed of pursuing his own business. Despite lacking previous experience in several critical areas, Mike has been able to successfully transform his idea for the Painter’s Pyramid into what some industry experts have called “one of the hottest products in years”. Mike has utilized his experience and refined his approach to launch into new markets and expand with additional products.

Since launching the Painter’s Pyramid, Mike’s business has successfully launched multiple successful products including VersaSpin 360, Slide-N-Pump and Grabbers. All of these products have demonstrated commercial success.

Most recently, Mike has published a book which is a guide for entrepreneurs looking to turn their ideas into commercial products called “Start Living The American Dream: An Entrepreneur’s Guide to Turning Your Idea Into Your Future”. There are multiple additional services offered to help turn inventors into successful entrepreneurs. More information on all these services is available <Here>

Mike’s education includes a Bachelor of Science in Manufacturing Engineering from Worcester Polytechnic Institute and two Masters Degrees from the University of Virginia: Masters in Business Administration and Masters in Management of Information Technology.

Mike is an active advocate for entrepreneurship and small businesses. He currently serves on the U.S. Chamber of Commerce- Council on Small Business and the Virginia Leadership Council for the National Federation of Independent Business.

For Mike, the greatest benefit of becoming an entrepreneur has little to do with the freedom and exhilaration of his career. When asking Mike’s young daughter what she wants to be when she grows up, she doesn’t talk about jobs. She talks about becoming an inventor and being the president of her own company… How great is that for a six year old!!!

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About start living the american dream

Entrepreneur, inventor, small business owner and author of the new business guide: "Start Living The American Dream - An Entrepreneur's Guide to Turing Your Idea Into Your Future"
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One Response to The Wrong Question to Ask a Patent Attorney

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