View Full Version : Patent Advise

08-23-2018, 06:00 PM
In addition to becoming a PM and going before the board next month to take my EXAM. I'm also an inventor of medical devises. In your introduction you mentioned numerous patents you have. Could you please give me advise on the first steps towards getting them patented?

Thank you in advance.

08-23-2018, 07:42 PM

Intellectual property generation starts long before the patent submission, and this up front work is more about future possibilities. This will be required in the case of any other seemingly competitive idea. To that end you will need a book, where the pages are secured, not a spiral bound book to track your ideas. Date the pages and if you have some person you can trust, explain what you are thinking, have them sign the sheet beside the date. This book will become your workbook for developing your ideas to the point of patent submission. Record your thoughts, drawings, exploration ideas, alternative ideas for some parts of the system, everything you do that helps you refine and consider various attributes of your design.

Patent Search

It is good to explore what is already out there, after all, if something already exists, then there is no patent possible. The USPTO has search options that make it possible for an individual to explore what may already exist.


Patent Classifications
Also on the USPTO website provides a classification of patents possible.


Provisional Patents
You have to be careful about showing or demonstrating your product without protection, once this is outside or in the public domain, your idea can then be construed as open for all. That is one of the reasons for provisional patents.

Prior to 1995, a patent could be applied for only by the original inventor, and the inventor had a one-year grace period in which to apply for a patent after a product was placed in the public domain, which means the product, or information about the product, was made available to the public in some way. Selling the product, sending out press releases, and displaying the product at trade show would all be putting the product into public domain. This “first-to-invent” patent process and one-year grace period in place prior to 1995 allowed inventors to test their ideas, finalize product design, and prove their product would sell before applying for patents.

In 1995 the patent process was changed to a “first-to-tile” process, which means whoever files first is award the patent. The US Patent Office has come out with a provisional patent, which allows you to have a one-year delay in filing a formal patent application. Unfortunately, the provisional patent applications requires the same written description of the invention as a regular patent application. Since the written description includes the claims, it should be prepared by a patent attorney. The net result is that the provisional patent will cost you almost a much as a regular patent application. Technically a provisional patent does not need to include claims, but without them it does not offer much protection against potential patents filed by other inventors[1].


Patent Claims

In my experience, those that are developing the patent material are sufficiently competent to begin developing the patent claims. An attorney will then hammer those into the legal-eze that will ultimately end up in a patent.

[1] Entrepreneur magazine's bringing your product to market: how to turn your idea into a booming business 1997 page 38

09-10-2018, 05:46 PM
Do not show your product until you have some level of formalism around the intellectual property (provisional patent) or submitted the patent itself. The reason is, the product out in the world without intellectual property will then become common knowledge and not patentable.

02-20-2019, 01:16 AM
Purchase a perfect bound notebook – record all future actions on the development of the product in this book. If this one gets full, get another perfect bound book – volume II.
Make note of all the participants in developing the intellectual property – not their contributions
Sketch (or paste CAD drawings into book) beginnings of idea in the notebook – with date
Find a trustworthy person to which you can explain the details of the product as well the benefits – get them to sign and date the page in the book that you use to explain
Explore other intellectual property presently secured through the USPTO (http://patft.uspto.gov/netahtml/PTO/search-bool.html)to determine present state of the art in our product. It is also possible to outsource this patent search Legal Zoom has an example https://www.legalzoom.com/business/intellectual-property/patent-search-pricing.html.
Explore other patented products that are similar, and use these as citations, noting the limits of those patents and describing the advantage of your design over these previous state of the art.
Explore and record the technical attributes of the product (these will become claims)
Explore other incarnations, but delineate the preferred incarnation from the others
Consider a provisional patent (https://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/provisional-application-patent) if the product may be displayed at marketing events or to the customer before the full patent is submitted also found at LegalZoom (https://www.legalzoom.com/business/intellectual-property/provisional-application-for-patents-overview.html)
Consider lawyer or developing the patent submission on your own or generate your own submission documentation.
Build prototype parts (rough model or mock up) of the system to learn about the product
Conduct exploration test and demo to potential customers refine design and subsequent patent claims (record in the notebook this learning – date and sign)
Note learning in book as well as updates to the design
Prepare documentation for the patent labeled (call outs) drawings.
Update the claims and the preferred incarnation of the design – that is the most valuable – best solution. However, record your product permutations that provide alternative approaches / solutions - that can cover variation in how the objective can be achieved. In doing so, you are announcing other incarnations which would render those incarnations established precedence not new or novel and block other attempts to usurp the patent.