How Is a Patent Evaluation Different from a Patent Search?

A patent search is simply a research project that produces a pile of paper. In other words, it’s research that results in a stack of patents that may be close to your idea—or not. An inventor just having a patent search done is kind of like having an x-ray performed, and then having the technician hand you the x-ray film to review on your own, without having the benefit of a doctor reading the x-ray, interpreting it, and discussing what it means with you.

If you just want a patent search performed, there are many companies out there that can perform a patent search for you. But be careful. Because there are different levels of thoroughness in patent searches.

We work with clients who value not only having a stack of patents, but getting some real answers, professional guidance, and advice about what the results mean and what are the most appropriate next steps in their situation.

Our patent evaluation is a holistic approach, where we get to know you, your goals, and what’s important to you. We get the right research done, and then we review and interpret that research and discuss with you what it means for you and for your idea.

You’ll get real results that will give you the solid information you need to move forward with your project.

What Type of Patent Do I Need to Protect My Invention?

The two main types of patents are design and utility. The type of protection they offer is very different.

Design patents only protect the ornamental appearance of a functional item. They do not protect, however, the concept of the product. Since they protect the appearance of the product, they can be useful in preventing someone from directly ‘knocking off’ a product, by unimaginatively copying it’s appearance in full detail.

The  battle cry, “But I have a patent! How could they copy me?” is very often heard from people who just have a design patent and don’t understand the limits of its protection.

Utility patents protect functional inventions. Generally, if you have a functional invention, the goal is to get a utility patent if possible.

However, not all utility patents are created equal. Just because you have a utility patent, that doesn’t mean your invention is protected. The patent claims in a utility patent determine the limits of protection. Patent claims in some patents can be “broad”—protecting a whole concept that would be difficult for someone else to duplicate without infringing your patent, or “narrow” in other patents—protecting only a very specific configuration of your invention.

In other words, the claims in your utility patent can make the difference between having a patent for any three-legged chair, and having the patent for a very specific configuration of a three-legged chair. The latter would require a person to copy your very specific configuration in order to infringe the patent. The value of such a patent then, would be quite limited. It would only be valuable to someone who believes that this very specific configuration would be important to consumers.

Can I Safely Discuss My Idea With A Patent Attorney?

Inventors often want to ask this question, but usually they’re pretty shy about actually asking it. Don’t worry, we are not offended. We understand your concern. Your idea is important to you and you want to do this correctly and carefully.

The fact is, you can rest easy because both federal and state laws require attorneys to keep their clients’ confidential information secret, and to use that confidential information solely for the benefit of the client. Therefore, anything you discuss with your patent attorney will be used solely to help you get patent protection.

So the answer is yes – you can safely discuss your idea with a patent attorney.

What If My Patent Application Is Rejected?

If you receive a notice of rejection from the United States Patent and Trademark Office (USPTO), it would likely be because the patent examiner feels that your idea is obvious or not novel. This is not unusual, and there are often various things you can do that may result in your still getting a patent. One option is to file a response to convince the examiner to still grant the patent.

When faced with a rejection another option is to design around the prior art that is the patent examiner’s grounds for rejection. It may be possible to bring your idea a little bit further than the examples in the prior art by looking through the prior art again, to see if there’s something that was missed—some element you can change or something new you can add—so that you would still have something that is novel and non-obvious (and therefore patentable).

What Does ‘Patent Pending’ Mean?

You’ve probably noticed a lot of products out there that are marked ‘Patent Pending.’ This means that a patent application has been filed .

When you file your patent application, the filing date of your application establishes your priority toward getting the patent. Having this priority is what made most of those companies feel safe enough to release their products.

It’s important to understand, however, that until you have a granted United States patent—that is, a patent that’s been examined by the United States patent office, approved, and issued—you can’t stop anyone from making, using, or selling the same idea as yours. So there is a certain amount of risk in marketing your idea until you have a patent in hand.

That being said, you know that not much is going to happen with your idea unless you get it out in the marketplace. So selling it while it’s still patent pending may well be to your advantage in the long run.

What If I Need A Trademark And Not A Patent?

While there may be a similarity between trademarks and patents, the truth is that they are two different ways to protect intellectual property. Patents are designed to keep others from making use of an invention without your permission. Trademarks protect the name, service, logo or colors of your brand to ensure that there is a distinction between your products or services and that of your competition.

Give our law firm a call and we’ll help you determine if a patent or trademark makes the most sense for you.