Getting to Computer-Drafted Patents

A Rock-Solid Patent for under $1,000? AI Can Get Us There if We Have the Right Focus.

Jedi Knight

Patent & Trademark Attorney

I love working with entrepreneurs. I admire their charisma and abundance of positive energy. That’s why my practice focuses on serving entrepreneurs. That’s also why I hate telling them the reality of getting a patent: It’s going to be expensive. The attorney’s fees alone can often run over ten thousand dollars just to get a patent granted. This pales in comparison with the cost of enforcing a patent, which can run hundreds of thousands and even millions of dollars. The worst part of my job is telling an excited entrepreneur how much it will cost to protect what they are constitutionally entitled to (yeah, a patent is a constitutional right!).

But what if I told you that in the next ten years, a patent could cost only a few hundred bucks? I think we’re a lot closer to that than most patent attorneys are willing to admit. The biggest driver of patent cost is attorney time. Focusing technology development on automating the meat of an attorney’s work, rather than the fluff as most current solutions do, has the potential to dramatically reduce the cost of obtaining a patent.

It’s no secret that hiring a patent attorney is not cheap. But this is rightfully so; patent law is deeply complex, to put it mildly. There’s an adage among patent attorneys: “There is no such thing as a cheap patent.” You can pay the price up front to have a well-drafted, broad patent that accurately covers your invention and potential design-arounds. Or, you can pay the price later when your patent application never gets granted, when your patent is too narrow to enforce, or when your patent gets invalidated when you try to enforce it.

This is why attorneys and savvy business people alike always recommend using a skilled patent attorney to draft a patent application. And because it takes the time and detailed attention of a highly-skilled professional to draft a quality patent application, applying for a patent is expensive.

Despite this, there are a number of aspects of a patent attorney’s job that are simple or repetitive enough to be automated. A number of artificial intelligence (AI) companies have built tools that automate these repetitive or simple tasks, purportedly saving patent attorneys time and, ergo saving inventors money. For example, Specifio®, a startup incubated by the legal innovation accelerator LexisNexis® Legal Tech, touts their software allows a patent attorney to “offload the rote parts of patent preparation.” Indeed, the founders of Specifio® were recently granted U.S. Patent No. 10,417,341 for “Systems and methods for using machine learning and rules-based algorithms to create a patent specification based on human-provided patent claims such that the patent specification is created without human intervention” (say that 10 times fast!). Another AI patent company, Turbopatent®, similarly offers software described on their website as designed to help to “limit the tedious drafting tasks” and help patent practitioners “focus on high-value work” (I think this is a brilliant marketing strategy because every patent attorney I know has bemoaned not getting to focus more time and energy on “lawyer work,” as opposed to other more mundane tasks).

However, in my own *admittedly armchair* assessment, these solutions still fall far short of the real potential AI has to revolutionize the patent industry. A lot of the savings of automation are already reflected in the market price of a patent application because patent attorneys, being inventive themselves, have found their own ways to reduce time on these tasks. Thus, the additional cost of the software is not sufficiently offset by time savings. Indeed, my firm did an assessment of one patent automation company’s products and found that, in comparing the cost of the software to the amount of time saved, there would be ZERO net savings we could pass on to inventors.

Unfortunately, after all the mundane tasks are automated or otherwise streamlined, there still remains the bulk of the arduous and time-consuming tasks associated with preparing a legally and technically sound patent application. This is where we should be focusing technological development.

The reason current efforts to revolutionize the patent drafting and prosecution industry are falling short is because the industry seems to have lost touch with a foundational concept. In a patent attorney’s world, an invention is a set of words in the form of a claim. Those words set the bounds of what the invention is. But this is simply an effect of the massive bureaucracy we deal with on a daily basis (i.e., governments).

In the real, tangible world, an invention is a thing. So if we want to build AI tools that truly revolutionize the patent industry, “[w]e must think things, not words, or at least we must constantly translate our words into the facts for which they stand, if we are to keep to the real and the true.” (Thank you for that famous and prescient wisdom, Justice Holmes). In other words, current AI patent drafting solutions focus too much on the words used to describe an invention. The right solutions will focus on the invention itself. 

I envision one such solution looking something like this: An invention disclosure is input into a program. The program performs a search based on the disclosure to identify inventive concepts. Perhaps there is some back-and-forth with the inventor to get missing information and hone in on the core inventive concepts. Simultaneously, the inventor works with an attorney to identify the strategy best suited to the inventor’s goals (although this is something I also believe a computer can do). When the inventive concepts and strategy are identified, the program drafts claims and a specification, and perhaps even drawings, for a patent application. After all this is done, the inventor reviews the application draft for technical accuracy and the attorney reviews for legal (and maybe technical) accuracy. Any changes made to the application by the inventor or attorney are fed back into the program so the program can learn, and the application is filed.

And I believe all that can be done for under $1,000.

But do the tools currently exist to build the right solutions? In my estimation, while there are some technological hurdles that put this problem at or just beyond the cutting edge, the real issue is building the right team. What does that team look like? Well, let’s have lunch and talk about it.

Jedi

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Provisional Patent v. Non-Provisional Patent

A good invention is rare. That flash of genius is fleeting so be ready to protect it when it comes.

A patent provides protection for your invention. To protect your invention, should you file a provisional patent application or a non-provisional patent application?

It's all about the priority date.

Before you go out and tell the world about your invention, find investors, and get your start-up launched, you want to make sure your invention is covered. A priority date is that date that you represent to the patent office as the day by which you created your invention. It lets everyone know that anyone that comes up with your invention or copies it after the priority date is infringing on your rights. You can establish your priority date two different ways. Either by filing a provisional patent application or by filing a non-provisional patent application. So what is the difference between a provisional patent application and a non-provisional patent application? 

Provisional Patent Application

A provisional patent application is an informal patent application that can be prepared and filed at a reduced cost. The provisional patent application temporarily holds your priority date for a year while you decide whether you want to invest a greater amount of time and money to prepare a non-provisional patent application. By the 1-year deadline, you must decide either to convert your provisional patent application into a non-provisional patent application or lose your

A provisional patent application is a temporary patent application.

priority date. Provisional patent applications are a great avenue for start-ups and small businesses with a limited budget that are trying to decide if they want to invest in a full non-provisional patent application. During the year time frame, you can also mark your invention as patent pending.

A word of caution regarding provisional patent applications.

A word of caution

Some investors may largely disregard a provisional patent as having little value because provisional patents do not get examined by the patent office until they are converted into a non-provisional patent application. If you are seeking investors for your start-up you may want to explore going straight for a non-provisional patent application.

Non-provisional Patent Application

Typically when you hear about patent applications, people are referring to a non-provisional patent application. A non-provisional patent application is a formal patent application that includes drawings, a description section, and a claims section. It includes a full description of your invention with all the variations and designs. A non-provisional patent application puts your

A non-provisional patent application is a formal patent application.

invention in the queue at the patent office for examination. The non-provisional patent application also allows you to mark your invention as patent pending. With a filed non-provisional patent application in hand, you can go out to investors to raise money or start selling your invention in the marketplace. 

Choosing between provisional and non-provisional patent applications.

So which door should you choose?

If you are just getting started and am not sure whether your invention will be valuable or if you have a limited budget, file a provisional patent application. If you are looking for investors or are already committed to bringing your invention to market get a non-provisional patent application.

Our Products

Flat Fee Pricing - Straightforward for Patents and Trademarks


Provisional Patent Application

$1700

Non-Provisional Patent Application

$5500

Trademark Application

$750

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Can I get a refund on my patent if it isn't patentable?

Devin Miller 
Founder of Miller IP Law

Inventors often ask me if they are able to get a refund if their patent is denied or rejected (i.e., if the US Patent and Trademark Office refuses to issue a patent for their invention).

The simple answer is No. Law firms (including patent law firms) do not offer any refunds for the legal work that they have already performed. Generally, attorneys are prohibited by the bar associations from offering guarantees or warranties for the outcomes of their legal work. Offering a refund may be considered a guarantee or warranty.

The reason a refund, guarantee, or warranty can't be offered is simple, whether the USPTO (United States Patent and Trademark Office) issues a patent for an invention depends on many factors. The majority or all of these factors are out of the control of the patent attorney. For example, the USPTO may refuse to issue a patent application for an invention when an Examiner at the USPTO finds a previous patent or patent application (prior art) that anticipates the invention or renders the invention obvious. Alternatively, the inventor may run out of money or decide not to pursue the invention any further once the patent application has been filed with the USPTO.

Additionally, there are governmental fees associated with filing and prosecuting a patent at the USPTO, and the USPTO does not issue refunds for those fees. The governmental fees may include filing fees, fees for processing the patent application, publication fees, and examination fees. The USPTO collects these fees regardless of whether the patent application for the invention is subsequently issued as a patent.

There are options to increase the likelihood of a patent application being allowed and issuing as a patent. For example, before filing a patent application the inventor may have the patent attorney do a landscape or patent search (also known as a “prior art search”) to better understand the inventions and patents already in the public domain, i.e. what has already been invented. While a prior art search does not guarantee the patentability of an invention, the prior art search gives the inventor a better idea of what they may face during the examination of the patent application. If the prior art search turns up a patent application or patent that is close to or identical to the invention, then the inventor may decide not to even apply for a patent for the invention.

So, the simple answer is that there are no refunds by the USPTO or a patent attorney for a patent application that is denied or gets rejected, but there are ways to improve your odds of getting a granted patent before you file for a patent.

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Can I get a refund on my patent if it isn't patentable?

Devin Miller 
Founder of Miller IP Law

Inventors often ask me if they are able to get a refund if their patent is denied or rejected (i.e., if the US Patent and Trademark Office refuses to issue a patent for their invention).

The simple answer is No. Law firms (including patent law firms) do not offer any refunds for the legal work that they have already performed. Generally, attorneys are prohibited by the bar associations from offering guarantees or warranties for the outcomes of their legal work. Offering a refund may be considered a guarantee or warranty.

The reason a refund, guarantee, or warranty can't be offered is simple, whether the USPTO (United States Patent and Trademark Office) issues a patent for an invention depends on many factors. The majority or all of these factors are out of the control of the patent attorney. For example, the USPTO may refuse to issue a patent application for an invention when an Examiner at the USPTO finds a previous patent or patent application (prior art) that anticipates the invention or renders the invention obvious. Alternatively, the inventor may run out of money or decide not to pursue the invention any further once the patent application has been filed with the USPTO.

Additionally, there are governmental fees associated with filing and prosecuting a patent at the USPTO, and the USPTO does not issue refunds for those fees. The governmental fees may include filing fees, fees for processing the patent application, publication fees, and examination fees. The USPTO collects these fees regardless of whether the patent application for the invention is subsequently issued as a patent.

There are options to increase the likelihood of a patent application being allowed and issuing as a patent. For example, before filing a patent application the inventor may have the patent attorney do a landscape or patent search (also known as a “prior art search”) to better understand the inventions and patents already in the public domain, i.e. what has already been invented. While a prior art search does not guarantee the patentability of an invention, the prior art search gives the inventor a better idea of what they may face during the examination of the patent application. If the prior art search turns up a patent application or patent that is close to or identical to the invention, then the inventor may decide not to even apply for a patent for the invention.

So, the simple answer is that there are no refunds by the USPTO or a patent attorney for a patent application that is denied or gets rejected, but there are ways to improve your odds of getting a granted patent before you file for a patent.

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Can I have more than one invention per patent application? (What is a restriction requirement?)

A common question startups have regarding patents is "Can I put more than one invention into my patent application?"

The simple answer is "yes". The less simple answer is "yes - but the patent examiner may ask you to split them into separate patent applications later".When you file your patent application you have to pay the US Patent and Trademark Office (USPTO) a "filing fee", a "search fee" and an "examination fee". The total of all three of these fees is currently $400 for inventors who can qualify as a micro entity status. If you have more than one invention in your application, an Examiner at the USPTO will likely ask you to separate them out because you only paid the USPTO one fee for one search and one examination. Each different invention needs to have it's own search and examination done. 

Why squeeze multiple inventions into just one application?

The main reason people want to add multiple inventions into a single patent application is cost savings. If you have multiple inventions, one cost-saving strategy is to combine as many inventions as you can into a single application and pay just one fee filing fee (you will still have to pay for attorney time). 

You can go back later and separate them out as needed or wait for the examiner to force you to separate them.

* Note, if the inventions are really all the same invention with different variations then you can and should file the variations in a single application.

The downside to multiple inventions in a single application?

There are risks and drawbacks to combining multiple inventions into the same patent application.

One drawback is that all the inventions filed in the same application will be given the same expiration date. If you want to extend the life of some of the inventions you stagger their filings.

Another potential drawback is that patents and patent applications can be very valuable assets to a company.  If you have just one patent or patent application, some investors or potential business partners may not value that as much as if you had multiple patents or patent applications.   A new start-up company could potentially get more funding if they had multiple patents surrounding their inventions versus just having filed a single patent application.

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Flat Fee Pricing - Straightforward for Patents and Trademarks

Provisional Patent Application

$1700

Non-Provisional Patent Application

$5500

Trademark Applications

$750

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How to Draw Patent Drawings

The old saying “a picture is worth a thousand words” rings true in patent law. As any inventor knows, patent drawings are one of the most important aspects of a patent application. The United States Patent and Trademark Office (USPTO) “requires applicants to submit drawings of their invention if such drawings are necessary to understand its workings.” (1). These drawings illustrate to the patent examiner and the general public the complex processes, formulations, or descriptions contained within the rest of the patent application.

Given the tremendous importance of patent drawings, many inventors may wonder about the best way to make such drawings. In general, an inventor has two options: 1) make the drawings themselves or 2) hire a professional draftsperson to make the drawings. Both options come with their advantages and disadvantages. By drafting the drawings yourself, an inventor can save time and money but may not know what aspects of the drawing are relevant to a patent application. On the other hand, hiring a professional draftsperson, despite the additional cost, yields drawings that are often more in line with what the USPTO is looking for.

Hand-drawing requires that the illustrator pays great attention to maintaining the proper dimensions and proportions described in the rest of the patent. Furthermore, the illustrator must produce images that provide the viewer with a clear perspective of the various components of the invention. Most patents contain only black and white drawings, however colored drawings “may also be submitted to the USPTO” so long as you “file three sets of the color illustrations with the USPTO, complete a petition explaining why color is necessary, pay a petition fee, and include a statement in your patent application that it contains color drawings.”

In addition to hand drawings, computer drawings generated from Computer-Aided Drawing (CAD) software are becoming increasingly common. CAD programs, such as SOLIDWORKS, allow the user to design a digital 3D model of their invention and produce precise drawings from the 3D model. The user can make changes to the format, the included dimensions, and views of the drawings, thereby offering a more realistic and accurate representation of the claimed invention. Furthermore, some programs allow the user to make accurate 3D drawings by scanning a real-life 3D object.

 

In summary, whether through good old pen and paper or through high-tech CAD software, including detailed and accurate drawings is an integral component of almost all patent applications.

 

Sources 
https://www.nolo.com/legal-encyclopedia/patent-drawings-draw-own-30248.html
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Can you patent a game, such as a board game or card game?

As we rapidly move forward toward Christmas the holiday season is more and more on my mind.  As I started contemplating what to write my mind wandered to a topic I have wanted to write about for a while, and which seems particularly appropriate at this time of year.  Board games.  I have so many good memories of receiving various board games as gifts over the years, particularly at Christmas.  Santa Claus always knew that I enjoyed playing board games, so every year there was at least one under the tree.

It might come as a surprise to some that board games are patentable, but they are indeed.  Processes have always been patentable and at its core a board game is just a method of playing by a predetermined set of rules.  The goal is to crown a winner and sequential and repeatable steps are engaged by two or more players.  Board games are definitely patentable, provided of course they are unique.  I won’t spend time discussing whether a board game is unique, but rather will assume that to be the case.  It is, however, always wise to first do some kind of a patent search to verify that you are not wasting your time and money following a path that will not likely lead to a patent being granted.  For more information on patent searches see Patent Search FAQs, Patent Searching 101 and Patent Searching 102.

Of course, no single article can teach you how to write a patent application, but if you understand some of the basics of what will need to go into the patent application you are ahead of the game, and I think you may wind up with a better, more complete game in the process.

 

Title

It is simple enough I know, but I am a fan of starting with something easy.  What is your invention in one sentence or less?  Not surprisingly that will be the title. While coming up with a title seems like a trivial step frequently I find that the way you characterize the invention in that pithy first sentence can focus the direction of the entire patent application, setting the tone and theme for how you want to present your invention.

If you do a Google Patent search for “board game” you will find page after page after page of patents simply titled “Board game.”  Not very creative to be sure.

The title should be a brief but technically accurate, descriptive and should contain fewer than 500 characters, although a 500 character title is rather rare and really unnecessary.  Typically you want to come up with a short title and I typically suggest is that you consider a title that is descriptive and 8 words or less.  Here are some examples of titles that convey at least a little more information that “board game.”

 

Alternatives

In my experience one of the things that inventors of board games frequently forget is the inclusion of alternative methods of play.  Don’t just focus on the preferred method of play and preferred rules, but think about ways that the game can be modified and changed.  Let me use an example from the extremely popular game Monopoly.

One of the things that keep many people from playing Monopoly is the length of the game.  That has lead to any number of various “house rules” to be implemented by those who love the game but want it to be played faster so the game can be completed in a reasonable time frame, or at least before everyone loses interest.  So if you invented Monopoly in addition to the traditional rules you should give some thought to rules associated with accelerated play.  For example consider text like this:

Alternatively, in order speed up play one or more of the following rules can be agreed upon by a majority vote (or unanimous vote) of all players prior to the commencement of the game: (1) the title cards to each of the properties can be divided amongst the players at the beginning of the game; (2) only need 3 houses are required to be on a property in order to purchase a hotel rather than the 4 described in the regular game rules; (3) a predetermined time limit can be placed on the game (i.e., such as 90 minutes) with the winner being declared at the end of the given time period based on the player with the most cash.

Obviously, there is no particular magic to the above paragraph, and if you you wanted to write down all the various methods to accelerate play you would need multiple pages of text.  But that is exactly what you want in your patent application.  You want to cover whatever you can no matter how imperfect.  If it works on any level it should be included because if it is not then you don’t own those rights, it is that simple.

If want  your patent to be as broad as possible you will want to include any number of alternatives.  That is true for any invention, but no where is it more true than with respect to board games.

What kind of rules do you use when you play at home? Give it some thought.  In the meantime check out The Key to Drafting an Excellent Patent – Alternatives.

[Enhance]

 

Prior Art

While you probably do not want to talk very much about “prior art” in your patent application it is always helpful to appreciate what is in the prior art.  If you do not know what is in the prior art how can you ever hope to describe your invention in a way that accentuates what is most likely unique?  Without knowing what is in the prior art for all you know you might just be describing exactly what is in the prior art without anything unique being added.  You just don’t know.

What kind of understanding of the prior art do you need?  Obviously, you need an honest view of the prior art, but beyond that you need to be able to tell the story of the prior art in writing so that you can set up the uniqueness of your invention.  For example:

In a conventional trivia game, an objective question is posed to a player, and if the player answers the question correctly, he or she is entitled to advance toward a winning position. If the player cannot answer the question correctly, no advancement occurs. Typically, such games are won by the player whose movement piece has traversed a predefined movement track. The questions of such games usually have specific answers, and generally comprise subject matter—often obscure—that can be divided into categories such as sports, arts, geography, politics, history, science and so forth. Such games generally require players to recall specific pieces of information for strategic advantage, and thus do not require players to think critically, answer subjective questions, collaborate, or make strategic decisions.

Now you may NEVER write something like that in a patent application, or if you do you might have it be extremely abbreviated.  Why goes beyond the scope of this article, just trust me for now.  Nevertheless, you absolutely need to be able to explain what is out there in this type of fashion.  By describing the prior art for yourself you start your creative wheels in motion.  If this is how someone would fairly characterize the prior art how do I convince them that my invention is unique?

Truthfully, if you cannot fairly describe the prior art and then articulate distinguishing features you really don’t have an invention.  However, if you do fairly describe the prior art and then critically look at your invention you may well be able to identify things that are lacking in the prior art and then modify your invention to exploit those missing pieces.

Uniqueness

Now you understand what is in the prior art and have started to figure out how to explain the differences between your invention and the prior art.  The next step is to put this into some kind of workable framework that is likely to lead you to an articulation of the invention that has a chance to be deemed unique enough to obtain a patent.

If you are going to obtain a patent you are going to have to describe an invention, in this case a game, that is unique.  It cannot be identical to anything in the prior art (a novelty consideration under §102) and it cannot be obvious in light of a combination of prior art games (a consideration under §103).  You absolutely need to be able to articulate how and why your game is unique.  If you cannot do that then you really don’t have an invention, although the game might be quite entertaining.

At the risk of oversimplifying this very important step allow me to encourage you to work on something of an “elevator speech” that will explain WHY your game is unique.  An elevator speech needs to be able to be delivered in about 15 to 20 seconds.  Imagine you were in the elevator with the CEO of Toys R Us.  You have from the 1st floor until whatever floor they are going to get off to pitch your board game and generate enough interest to get to the next phase.  This needs to be rehearsed, delivered precisely and leave the CEO wanting more.  For example:

My board game is unique when compared with other known educational games because it requires players to go beyond mere recollection of specific, and often obscure, facts, and requires the participants to think critically, answer subjective questions, collaborate and make strategic decisions.  By playing the game children develop skills that help them bridge the gap between regurgitation of facts to synthesis and presentation of information.

If this were really an elevator speech you would want to weave in a bit more, but for our purposes it is sufficient for now.  What you have here is an articulation of WHY the game is unique, not HOW the game is unique.  In my experience inventors are good at either explaining why their invention is unique or explaining how their invention is unique, but rarely both.  My theory is that is because most people don’t distinguish between why and how, but in the inventing world this is crucial.

You can point to steps of play that make your invention different from a HOW perspective, but why is that difference really unique?  What underlies the difference, if anything?  Similarly, the game may be educational in nature and work toward building a skill set for players, whether children or adults.  The fact that there isn’t anything known that delivers the same WHY factor is helpful, but not enough to get a patent.  Patents need to focus on mechanics and process.

Before progressing let me give you an example of a HOW statement:

The game is unique because the playing surface is made up of three similar boards or grids lying in three vertically spaced planes. Each of the three boards is divided into thirteen similar spaces or squares. Nine of the spaces form a square, three spaces on each side of the square surrounding a central space. The remaining four spaces lie outside the square with one space lying next to the center space of each of the four sides of the square.

Did you follow along?  Probably not, but hopefully get the idea.  Here the HOW is associated with the game board and if you were describing this you should have an illustration and refer to that illustration to assist the reader in following along.  Pictures are worth 1000 words — if not more — so for goodness sakes never skimp on professional drawings. In any event, the unique playing surface almost certainly influences the objectives of the game and the playing steps, so you can use a structural uniqueness to build upon to further explain process step uniqueness.

[Inventors-Google]

In my opinion the several paragraphs you will write that address the why and how are critical.  They set the theme for the invention and can help provide that critical “A Ha” moment.  In my experience if there is really an invention there is it usually clear, but along the journey to describe the invention so that others will appreciate the magnitude of the uniqueness you need to capture them and give them a reason to understand that same “A Ha” that you have.  Thus, spending time figuring out the how from a process level and the why that underlines the process level will be very beneficial.

Before leaving this topic let me return to the WHY statement about the education board game above.  Here is one way that you might be able to envision the WHY and the HOW coming together:

The present invention is an educational board game. The invention goes beyond mere recollection of specific, and often obscure, facts, and that requires the participants to think critically, answer subjective questions, collaborate and make strategic decisions. In particular, the game challenges players’ knowledge and understanding of important information about United States government, history and culture. The game comes with instructions, a game board, and multiple player pieces, question cards containing easy, intermediate and difficult questions, and an answer key. Each question card will have both an objective question with point total and a subjective question. Players advance their player movement pieces along the player movement track the number of spaces corresponding the number of points achieved, with the subjective questions being evaluated and scored by other players. The object of such a game is to be the first player to traverse the player movement track.

As you can imagine, there is so much more that can be told about inventing and then patenting a board game.  This only scratches the surface, but hopefully it will give you some actionable ideas about how to move forward.

 

 

Today, many board game players design games and look to crowdfunding to create marketable game sets. If a game is unique and original, they can patent their work. Main reasons why game inventors apply for patents include opportunities to earn revenue from sales or licensing, credibility in the marketplace, and sole rights to the concept.

Group of friends playing a board game

How to File

To receive a patent on your board game invention, you'll need to file a patent application with the United States Patent and Trademark Office (USPTO). First, to avoid rejection due to similar, existing works, search the USPTO database.

An inventor who applies for a utility patent files a written description and drawings with the USPTO. Today's preferred method is online filing, using forms supplied on the USPTO website. Utility patents last for 20 years and must meet three basic criteria to qualify.

1. Originality

Your game must be novel, meaning it cannot replicate prior work. Study available games and explain the prior state of the art in writing, as a backdrop for the uniqueness of your own invention. If you created a flying game, are other flying games already available? Explain clearly, step by step, what distinguishes yours from the pack. When you describe the existing works, you become likely to refine your own, making it distinct. What do your players do that they won't do in any other game? Why does the difference matter? Does it help teach or reinforce a skill, for example? Explain how the game keeps track of players' progress and success. In your explanation, link the mechanics and the graphics of your game to its novelty and originality.

2. Nonobviousness

File for a patent only if other game makers couldn't think up the idea through experience with other games. Simply put, your game may not be an obvious take on an existing game or a blend of existing games.

3. Utility

An innovation must have value. New games, as long as they work, have value. Education and even entertainment value meet this standard.

Elements of an Application

An application for a game patent has several key elements, including:

  • The name of the game: Title your work within a few descriptive words. "Ailerons: A Game About Learning to Fly" is a straightforward, succinct title for a patent.
  • A detailed description: Explain and describe your board game with care and in detail.
  • Drawings, with a brief description of the drawings: Prepare detailed, understandable illustrations of the game. Have a designer work with you to supply professional illustrations of the moves (Fig. 1, 2, etc.), with key features enlarged as necessary to make them clear. Explain the uniqueness of your game through every aspect with a brief description of the drawings.
  • Alternative game modes: Devise variations on the rules so that players can accelerate or vary the game. This can prevent another gamer from thinking up an alternative version of your game and applying for rights to it.
  • Application fees: The current fee schedule appears at the USPTO website. Be aware that the maintenance fees for successful patent applications raise the overall costs.

Option to File a Provisional Application First

A provisional patent application is a simpler way to start marketing an invention. The application comprises a cover sheet, a description, and detailed illustrations. Once submitted, it allows its author to call the concept "patent pending."

The provisional patent application represents a cost-efficient, confidential, legally protected chance to take time exploring your game's market potential. You must proceed to patent the game when it is new—within a year of introducing it commercially. A provisional patent does not transform into a patent on its own.

Descriptions in a provisional patent application must be precise. Yet, if they are broad enough to allow you to adjust the game and still match the application, they allow you to tweak your game based on other players' reviews.

A great game is not only a contribution to people's social lives. It is also the inventor's intellectual property. Securing a patent allows you to protect your original work. If you need help in protecting your work, you could always speak to a qualified attorney specializing in the patent industry.

This portion of the site is for informational purposes only. The content is not legal advice. The statements and opinions are the expression of author, not LegalZoom, and have not been evaluated by LegalZoom for accuracy, completeness, or changes in the law.

 

People have been playing board games for thousands of years. The Royal Game of Ur, which originated in Mesopotamia more than 4,500 years ago, is reportedly still played in Iraq.1 (Game equipment has been found that predates the Royal Game of Ur by as much as 900 years, but the rules to those games have been lost to history.2)

In the modern era, though venerable games like chess and backgammon remain popular, many people associate the phrase “board games” with established staples such as Monopoly, Scrabble, Chutes and Ladders, and Candyland. More complex strategic games have been generally relegated to hobbyists and niche gamers, such as war gamers, who enact historical or fictional battles using cardboard chits or miniature figures on map boards. However, in recent years, there has been a rising tide of new board games being developed, marketed, sold, and played around the world. In 2013, board games accounted for more than $1.8 billion in sales in the United States, out of a $22 billion domestic toy market.3 These sales figures, while dwarfed by the size of the video game industry, are quite respectable and suggest that board games have become a mainstream source of entertainment. Digital and mobile versions of board games are also becoming quite common.

As a result of this transition from “kid stuff” and fringe hobby to mainstream entertainment, board game developers and publishers have found themselves facing intellectual property (IP) issues with increasing frequency. Lawsuits or threats of legal action—especially at the interface between offline and digital board gaming—are not uncommon. Message boards frequented by gamers and game makers contain questions such as “I am making a game; how can I prevent someone else from copying it?” and “I am making a game that is similar to Game X; how can I avoid getting in trouble for copying?” Board games occupy a nexus of the three primary forms of intellectual property protection—copyright, trademark, and patent—so these questions are not always easily answered.

Copyright

To discuss copyright in board games, we must look back to an 1879 Supreme Court case ironically having nothing at all to do with games. In Baker v. Selden,4 the plaintiff had developed a new method of bookkeeping and published a book containing an introduction, an explanation of the method, and some examples that consisted mostly of blank bookkeeping forms. His book met with little success, but when another publisher began successfully selling a book containing very similar forms, his widow filed a copyright infringement suit. The Supreme Court held that although the book was subject to copyright, the bookkeeping method itself was not a suitable subject of copyright, and because the forms were merely implements for performing the method, they were not copyrightable subject matter. Justice Joseph Bradley wrote, “[W]hilst no one has a right to print or publish his book, or any material part thereof, as a book intended to convey instruction in the art, any person may practice and use the art itself which he has described and illustrated therein. . . . The copyright of a book on book-keeping cannot secure the exclusive right to make, sell, and use account-books prepared upon the plan set forth in such book.”5

The principle laid down in Baker v. Selden was later codified in the Copyright Act of 1976, which says clearly: “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.”6 Thus, the idea-expression dichotomy that is fundamental to copyright law can be traced back to Baker v. Selden.

Therefore, the systems or processes that make up the core of a game—generally referred to as the “game mechanics”—are not subject to copyright, even though the written rules, game board, card artwork, and other elements—often referred to as the “theme” of the game—may be. Game mechanics can be as simple as “roll dice and move a token along a track,” or far more complex. Regardless of the complexity or originality of a given game’s systems and processes, its game mechanics will likely not be protected by copyright.

Trademark

A trademark can protect the name and other aspects of a board game. Trademarks serve to identify the source of a particular product or service and to distinguish the products of one seller from those of others in the marketplace. If a game’s name is not generic or merely descriptive of the game, it may warrant trademark protection. Similarly, other aspects of a game—character names, logos, graphic designs, and so on—may qualify as trademarks. As with any other trademark in the United States, registration is not required, as trademark rights begin to accrue as soon as the mark is used in commerce, and thus the game’s developer may prevent others who come later from using marks if there is a likelihood of confusion among the consuming public.

A battle over one of the best-known board games in history led to a change in trademark law. Parker Brothers, publisher of Monopoly, was embroiled in a decades-long series of legal battles with an economist named Ralph Anspach, who had designed and begun selling a game he called Anti-Monopoly. The dispute addressed a variety of claims, but the trademark infringement claim predominated. Finally, in 1983, the Supreme Court let stand an appeals court ruling that the word “Monopoly” had become generic, because purchasers associated the name with the product rather than with the source.7 Specifically, evidence showed that purchasers of Monopoly were motivated by their knowledge of the game, and not by its association with Parker Brothers. Directly as a result of this case, Congress amended § 14(c) of the Lanham Act, which addresses cancellation of a registered mark, later that year. Congress added language clarifying that a mark becomes generic only if its “primary significance . . . to the relevant public” is as the generic description of the particular goods or services, and that purchaser motivation is not used as the test.8

Since the 1983 decision, and notwithstanding the legislative “fix” to the issue, the status of the MONOPOLY trademark is somewhat muddy. Hasbro (the current owner of the game via a series of mergers and acquisitions) is listed as the owner of the original 1935 MONOPOLY trademark registration, which was theoretically canceled in 1983. Notwithstanding the registration, Hasbro contends with a relatively steady stream of “-opoly” games. The U.S. Patent and Trademark Office has more than 400 records of applications to register game names ending in “-opoly.” Most of them have been abandoned or canceled, but there are several “-opoly” trademarks registered to other owners. (Interestingly, Hasbro also owns the trademark registration for ANTI-MONOPOLY, though the game itself is sold by the apparently unaffiliated University Games.)

As noted above, game names are an obvious option for trademark protection, but game designers and publishers have also sought to register and protect trade dress in game board designs, distinctive card layouts, and even game tokens. Hasbro, for example, owns registrations for the design of the Monopoly game board, much of the artwork (e.g., the railroad icon; the images for the “Jail,” “Go to Jail,” and “Free Parking” spaces; and others), the Chance and Community Chest card designs, and the layout of the game’s money.

Patent

Although methods of play may not be suitable for copyright protection, patent protection may be available. A utility patent grants its owner the right to exclude any other person from practicing the patented invention. As applied to a board game, a patent would therefore allow the patent owner to prevent anyone from marketing a game that employed the game mechanics covered by the patent. In order to be patentable, the game mechanics must be unique and nonobvious, meaning that (1) the mechanics for which patent protection are sought are not already known or in use by others; and (2) differences between the game mechanics and prior games must not be obvious to someone with ordinary skill in the area of game design. If granted, a patent lasts for 20 years from the date of application. However, identifying the unique attributes of a game can be difficult, and the cost of obtaining patent protection and policing one’s patent can be prohibitive. As a result, individual and small game designers may not be in a position to pursue this avenue.

In 1935, Parker Brothers obtained a patent for the Monopoly board game, invented by Charles Darrow.9 The patent described the rules of the game and claimed the apparatus of a board game consisting of a continuous path around the board, and groups of spaces, each indicating the required rental for an opponent’s piece, with such rentals increasing as the owners acquired more spaces in the same group. Eight additional claims added or modified aspects of the game: for instance, Claim 2 added Chance cards; Claim 3 added title cards corresponding to the spaces, buildings, and player tokens; and so on. Claims 4 through 9 all specified that the spaces around the board represented “real estate locations, railroads, utilities, chance, community chest and penalties,” which narrows the scope of those claims and represents the theme of the game more than the mechanics. Nowadays, a company seeking to patent a game might be less likely to be so theme-specific in its claims to avoid limiting the protective value of the patent.

For example, in 1993, Wizards of the Coast (WotC, now a division of Hasbro Inc.) released a game based on collectible trading cards entitled Magic: The Gathering (M:tG), which became an instant success. In 1995, WotC was granted a patent for a “Trading Card Game Method of Play” that claimed a method of playing games in accordance with the rules of M:tG (an extended version of which made up the description of the preferred embodiment of the claimed invention).10 The claims of this patent detail various elements of game play, but are devoid of any reference to the fantasy and magic theme represented by the artwork of the game.

Patent law provides some traps for the unwary that may impede a hopeful game designer’s plans. Frequently, a game developer will ask gamers to play the game in a prototype form and provide feedback, which can be used to refine the design. Although playtesting can identify design problems that may make the game less enjoyable—or even impossible—to play, in the United States, public disclosure may invoke the on-sale bar, which prevents a patent from issuing if the invention was “in public use, on sale, or otherwise available to the public” more than a year prior to the application date.11 (In some foreign countries, there is no one-year grace period; any public disclosure prior to the application precludes the patent.) Thus, playtesting—particularly in a public setting, such as at a game convention or trade show—could be considered a public disclosure that will bar patentability. Also, some designers offer “print-and-play” versions of their games, which allow players to download and print out simple versions of the components and rules of a game and play it before the game is published. This too may be public disclosure sufficient to defeat a patent application.

Patent law also contemplates design patents, which may be awarded to new and original ornamental objects. While a utility patent applies to how an article works, a design patent addresses how the article looks. As such, a design patent may be an avenue for protecting novel game components, allowing the owner to prevent others from using similar-looking components. The design patent protects only the ornamental features of the article in question; any aspect of the article that performs a function will not be suitable for a design patent.

IP Complications in Board Gaming

Expansions/Fan Modifications

The stereotype of the lone inventor puttering around in his or her garage or workshop can actually be a reasonably accurate depiction of the independent game designer. Game design is often an iterative process over months or years, during which the designer adds, subtracts, modifies, and otherwise tinkers with an initial concept. A brief perusal of the “Board Game Design” forum at BoardGameGeek.com,12 a community website dedicated to board game news, reviews, and forums, shows a multitude of posts from designers explaining their works in progress and asking for advice from other game designers and gamers in general, about rules, mechanics, and how to publish a game (or get a game published).

Once a game is published, it may be the subject of one or more expansions—additional components or rules that change or enhance the initial game. Often such expansions are made by the original designer or a publisher that acquired the right to publish the game from the designer; in such cases, the allocation of IP rights—copyright, trademark, and/or patent—will remain the same as for the underlying game. However, some games are published in one country and licensed to a different company for publication and distribution in another country. Depending on the terms of the license, the foreign company may have the right to develop an expansion.

This situation may complicate the question of ownership. An expansion may include, for example, an additional game board, or new components designed to integrate with the original components, or revised or expanded rules. The expanded version of the game would then be considered a derivative work of the original game. If the license or distribution agreement does not clearly define the parties’ respective rights, the individual or company that creates the expansion will own the copyright in those items. Many distribution agreements in the strategy board game arena are one – or two-page contracts setting forth little more than revenue sharing terms, meaning such rights are often not clearly delineated. The owner of the underlying game may not have the right to distribute the expansion, which can threaten sales if the consuming public is more interested in the expanded game than the original.

Going Online

It can sometimes be difficult to get enough players together in one room at one time to play games. Computer program versions of board games—loaded onto a computer and played by one player against the computer—have been around for some time. The transition to an online format playable by multiple players in real time or asynchronously makes perfect sense for a board game developer. However, gamers can be impatient, and if a game publisher is not quick enough in creating and publishing an online version of a popular game, those among the community who are enterprising programmers may take matters into their own hands and come up with a homegrown, “unofficial” version of the game. Of course, such vigilante game development has IP implications that can lead to trouble.

In 2005, an Indian company released a game patterned on the popular word game Scrabble, which it called Scrabulous. The game was originally available on the company’s website, and in 2007, they released the game on Facebook, where it quickly became very popular. Shortly thereafter, in 2008, Hasbro, the owner of the original Scrabble game, filed a lawsuit against the company,13 and sent a notice to Facebook requesting that Scrabulous be removed from the service under the Digital Millennium Copyright Act (DMCA). Facebook complied for U.S. and Canadian subscribers. Mattel Inc., which owns the international rights to Scrabble, filed suit in India and initiated a DMCA action to have Scrabulous removed from Facebook for the rest of the world. The Delhi High Court ruled that the game of Scrabble itself was not copyrightable, but that the name “Scrabulous” infringed the SCRABBLE trademark.14 In the end, the Indian company re-released the game as “Lexulous” and made changes to the board layout and the point values of the letter tiles, hoping to distinguish the game from Scrabble sufficiently to avoid infringement. Ultimately, Lexulous returned to Facebook, after reaching agreements with Mattel and Hasbro; but it has never regained the same level of popularity.

In part, the failure of Lexulous to regain its former standing is due to a different Scrabble-like word game that popped up on Facebook in 2009 called Words With Friends. The creators of Words With Friends designed their game from the beginning to be different from Scrabble, using a different board layout, different point values for letters, and a different tile distribution. The creators also focused on the social aspects of the game, resulting in one of the most popular games on Facebook. Words With Friends now coexists on Facebook with an official Scrabble Facebook game developed by Hasbro. In an illustration of some of the oddities of IP issues in the game industry, Hasbro and Zynga (which acquired Words With Friends and added it to a stable of online games) entered into a relationship in 2012, under which Hasbro released a Words With Friends board game—effectively making a board game based on a Facebook game that was in turn based on its own board game.

Conclusion

Board games occupy a somewhat eccentric niche in intellectual property law, often not fully protectable by copyright, trademark, or patent, and thus susceptible to knock-offs and alternate themes. A would-be board game designer should understand which kinds of IP protection apply to which aspects or components of the game, and take appropriate steps to protect them accordingly: registering the copyright in the rules and other copyrightable components; ensuring that all agreements with contributors (such as artists) assign all rights to the game developer; exploring the possibility of patent protection for truly novel game mechanics; and making sure that any license or distribution agreements clearly delineate the IP rights of each party.

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How long & how much to get a patent?

How long and how much for a patent?

The short answer is it takes about 22-30 months and costs about $12,000-$14,000. Before you abandon all hope, read below to find out more about the patent process.

According to the United States Patent and Trademark Office (USPTO), the average time it takes to get a patent is about 25 months. If you want to expedite the process you can pay an extra fee ($1000-$4000) to the USPTO to get prioritized examination utility patents you can cut the time down to 6 to 12 months.

A good patent attorney can help you with the process from start to finish, including:

Patent Searching & Analysis (1-2 Weeks & $500)

This step is optional, but it can help you understand what other inventions are out there, what may be novel/unique about your invention and if you may be infringing some else's patent.

Patent searches take 1-2 weeks and cost $1000
Patent applications take 2-4 weeks to prepare and cost between $5800-$6500

Prepare a Patent Application (2-4 Weeks and $5500)

If the patent search turns up nothing, you're ready to draft a patent application. It usually takes an attorney 2 to 4 weeks depending on the attorney's workload, the complexity of the invention, how much information is provided from the applicant, and any changes necessary. 

Office Actions (18 months & $3500-$5000)

An office action is a rejection from the patent office indicating that your patent is not patentable because it is not novel or is obvious compared to previous inventions. 

Office actions take about 18 months to get the first one and cost $1850 each

As life is full of rejections, don't get too worried if your patent application gets rejected. Typically a patent application gets 2-3 Office actions before it gets allowed. This is because the Examiner at the USPTO may require you to identifying how your invention is different, clarify the scope of your invention, and/or change how many inventive features you are claiming.

Each Office action you takes 2-3 months to receive from the Examiner and 1 month to respond.

If you patent is allowed it cost about $800 to allow the patent

Abandonment or Allowance (3 months & $0-$800)

After you have gone a few rounds with the Office action you typically get a pretty good idea if your patent application will be allowable you should be abandoned. If you abandoned your patent application, it doesn't cost you anything. If your patent application gets allowed, it usually takes a couple months once you get the notice and cost about $800.

Maintenance Fees (3.5 years/$800 - 7.5 years/$1800 - 11.5 years/$3,700) 

If your patent application gets allowed and issue into a patent, then the USPTO charges maintenance fees for up to 11.5 years after issues if you want to keep your patent active. You pay the first fee of $800 at 3.5 years after the patent issues, the second fee of $1800 at 7.5 years, and the third fee of $3,700 at 11.5 years.

You have to pay to maintain you patent

Depending on the patent and the invention you may decide to keep the patent active the entire length of the patent or let it go abandon once it is no longer valuable.

Patents can cost a lot and take a while to get, but they can be worth it.

Why does it take so long and cost so much?

At any given time, the USPTO has hundreds of thousands of patent applications being examined. In 2012, 542,815 applications were filed. As of 2014, there were only 7,966 examiners and a backlog of 604,692 patent applications. With the amount of examination required, this causes longer wait times. 

High-traffic fields such as computer software have even longer wait times. Also, some applicants will fight the USPTO's decision, further slowing the process.

Patents are expensive. Depending on the invention and the business they can be a great investment or a waste of time and money. To help you understand if a patent is right for your business/invention, talk to an experienced patent attorney.  

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What is not patentable?

Sometimes the best way to determine whether your invention is patentable is to learn what is not patentable. 

There are three main reasons why an invention may not be patentable.

What isn't patentable?

You come up with a great idea and want to know if it is patentable before you invest time and money to create it. Sometimes the best way to determine whether your invention is patentable is to learn what is not patentable. There are three main reasons why an invention may not be patentable..

Abstract

First, if the idea is abstract and you can do it all in your head without any hardware or software, it is not patentable. For example, let’s say people normally use a phonebook to look up people’s telephone numbers and all your invention does is download the telephone book into an excel spreadsheet. This is an abstract idea that is not patentable. Other abstract ideas include methods for doing business, perpetual motion machines, and cold fusion machines. book.

Already been invented

Second, if someone has already come up with your idea before you have, your invention is not new and is not patentable. The patent system is set up to encourage new ideas. If your idea is not new, it is not patentable..

Combination

Third, if no single person has come up with your invention, but you could combine two known inventions that are already patented or out in the public, your invention may not be patentable. For example, if you were to take a pencil and eraser and take the eraser to the pencil, the pencil and eraser are both already invented and taping the eraser to the pencil is a very obvious use of the products. If however, you invent a brand new way to attach the eraser to the pencil, like the little metal clamp on the top of most pencils, then your invention may be patentable.

If your invention can overcome these three hurdles, you are well on your way to getting a patent.

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How the USPTO knows when you created an invention?

Few things are more exciting than coming up with an idea, reduce it to a prototype, and beginning to sell it.

There is also nothing worse than having your invention stolen, ripped off, and claimed as being invented by someone else.

First to Invent

Being the first to invent something is exciting. Few things are more exciting than coming up with an idea, reduce it to a prototype, and beginning to sell it. There is also nothing worse than having your invention stolen, ripped off, and claimed as being invented by someone else.

Priority Date

To establish who invented something first, the government sets priority dates. The United States Patent and Trademark Office (USPTO) assigns a priority date to your invention the day you file your patent application. The priority date represents the day that the USPTO defines as the day you created your invention. Once your priority date is set, anyone who comes along after you with the same or similar invention runs into your patent.

Setting the date

When do you want to set your priority date? As early as possible. Typically startups and small businesses will go through a few iterations for an invention before landing on the final product. Once you have defined your product and can fully explain the details of your invention and before you begin showing prototype/product to others, you should contact a patent attorney. The patent attorney can help you prepare and file a patent application to set your priority date.

Patent Pending

Once you set the priority date, you are free to mark your invention as patent pending and begin pitching to investors or selling your product. Also, keep in mind that once you show your invention to the public or start selling it, you have a year from that day that you have to file your patent application or you lose your ability to file that patent application for good.

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Provisional Patent Application

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What are the steps to get a patent?

What are the steps to getting a patent?

Going through the steps of getting a patent for the first time can feel a bit like exploring a jungle, you don't want to get lost.

A patent attorney for small businesses and start-ups.

Devin Miller (IP Attorney)

Electrical Engineer

Lawyer

Small business owner

The steps to getting a patent.

To get a patent, you will need to prepare a patent application and have it examined by the United States Patent and Trademark Office (USPTO). During examination, you may need to clarify with a patent examiner how your application is different and work with the examiner to reach an agreement regarding what your patent covers. If an agreement can be reached, the USPTO will grant your patent.

Initial meeting with a patent attorney

Once you have come up with your invention and understand it well enough to explain it to another person, it is time to meet with a patent attorney. When you meet with a patent attorney, the attorney will sit down with you and have you walk him/her through your invention and how it works. Once the patent attorney understands the invention, he/she will get to work preparing your patent application.

Free meeting with a patent attorney.
Preparing a patent attorney.

Preparing a patent application 

To prepare the patent application, the patent attorney will have formal drawings done illustrating your invention. The patent attorney will also prepare a draft of the patent application that describes in full your invention and several variations of your invention. Once the draft is prepared, the patent attorney will work with you to make any clarification or changes needed to make sure your invention is fully described.

Submitting your patent application

Once your patent application has been prepared and any necessary revisions made, the patent attorney will submit your patent application to the USPTO for examination. Because of a backlog at the USPTO it can take anywhere from 18 months to 3 years before an examiner at the USPTO will examine your patent application.

Filing a patent application.
Examining a patent application.

Patent Application Examination

When the patent examiner examines your patents, he/she will determine whether it meets the standards of novelty and non-obviousness. If the examiner believes the patent application meets these standards, he/she will grant your patent. If the examiner does not believe the patent application is novel or non-obvious, the examiner will issue a rejection (known as an office action).

Dealing with Rejection

If your patent application is rejected, your patent attorney will prepare a response to the rejection arguing why your invention is different. The patent attorney may also change the claims of your patent to clarify how your patent application is different. The examiner and the patent attorney may go through one or several rounds of arguments before an agreement may be reached. 

Dealing with a rejection of a patent application.
Overcoming a rejection of a patent application.

Disagreement

If an agreement cannot be reached with the examiner, you may appeal the patent examiner's decision by escalating the case to have other examiners review the patent application. Alternatively, you may decide to no longer pursue the patent application, which is called abandonment.

Agreement

If an agreement can be reached with the examiner, the examiner will allow your patent and issue a notice of allowance. When the notice of allowance is issued, you pay a fee and are then the proud owner of a patent application. To maintain your patent for its full life, you will periodically have to pay maintenance fees to the USPTO.

Getting a notice of allowance for a patent application.

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What is a Create-It-Yourself (CIY) patent?

What is a Create-It-Yourself (CIY) patent as opposed to a Do-It-Yourself patent?

Create-It-Yourself is when you get to do all the fun parts related to making something new

like designing the flames emblazoned on the side of your Mustang or choosing the exact ingredients in your gluten-free nutrition bars, without having to do the hard work of stencil painting or wheatless cooking yourself.

A patent attorney for small businesses and start-ups.

Devin Miller (IP Attorney)

Electrical Engineer

Lawyer

Small business owner

Recently I have been reading a book by Anthony Flynn and Emily Flynn Vencat titled Custom Nation. The book discusses how we are becoming a nation of customizers. We want everything customized from our build-it-yourself hamburgers and on-demand video streaming to our custom homes. The book shares, in part:

Custom Nation

Before the Industrial Revolution, customization was the norm because we did everything ourselves, like cooking stews and sewing curtains. But today’s customization isn’t Do-It-Yourself (DIY), it’s Create-It-Yourself, or what I like to call CIY. Create-It-Yourself is when you get to do all the fun parts related to making something new, like designing the flames emblazoned on the side of your Mustang or choosing the exact ingredients in your gluten-free nutrition bars, without having to do the hard work of stencil painting or wheatless cooking yourself.

Customize your patent application.

The book makes a great point. While DIY forces you to do everything on a project, including the less than fun parts of the project, CIY allows you to just do the fun parts of a project.

The same principle applies to patents. As an inventor, in-house counsel, or applicant, you likely do not want to sit down and explain in minute detail every aspect of your invention. You likely do want to be involved in the overall process and building assets for your company. So what are some of the CIY aspects of the patent process that enables you to customize your patent?

How to come up with an idea for a patent.

Coming up with the idea

For most inventors, coming up with the idea and figuring out how to make it work is the most exciting part of an invention. This is also a crucial part of the patent process because you have to know how your invention works to be able to explain it to others. You also get to figure out other ways people might design around your invention and protect against this.

Creating drawings of your invention

It is also fun to see your invention come to life. As part of the patent process, you can come up with drawings and sketches to show what your invention is. The drawings and sketches are also a great way to explain your invention to others.

Creating drawings for patents.
File a provisional patent application or a non-provisional patent application.

Provisional v. Non-Provisional Patent Application

If you are a start-up, a solo inventor, or just trying to decide if you want to invest in the preparation of a patent application, a provisional patent application is a great option. The provisional patent application is a cheaper option that holds your place for a year while you decide whether to invest in a full patent application. If you have already made up your mind and are ready to get going then a non-provisional patent application is the way to go.

Fast Track v. Normal Track

Sometimes you want your patent and you want it now. While it does take some time for a patent to go through the patent process, if you would like to get your patent more quickly, you can put it on a fast track and get it sooner.

Fast track your patent application.
Publication or non-publication request for a patent application.

Non-publication v. Publication

Do you want everyone to know what your invention is and how it works or do you want to keep it secret for as long as possible to keep your competition guessing? You can decide whether your patent is available to the public sooner or later.

What Countries to file your patent in21>

What countries are you going to be selling your invention? You can choose to only file for a patent in the US or file it in multiple countries.

File a foreign patent application.
Mark your product as patent pending.

Patent Pending Status

Next, to having an issued patent, it is always exciting to put patent pending on your product. Once you have filed your patent application, you can put patent pending on your product or website and let everyone know your patent is pending for your invention.

Distinguishing your invention from other inventions

When your patent is being examined by the patent process, you get a chance to see what other inventions are out there that may be related to your patent application. You can also help the patent attorney in strategizing how your invention is different from other inventions.

Distinguishing your patent from other patents.
Framing your patent application.

Getting an Issued Patent – Framing it as a plaque

When you finally make it all the way through the patent process and have an issued patent you should be proud of your invention. Now it is time to get a plaque to show your achievement. You can get your custom plaque at online stores such as iplax.com

Good luck with your inventing and your CIY patents!

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Flat Fee Pricing - Straightforward for Patents and Trademarks


Provisional Patent Application

$1700

Non-Provisional Patent Application

$5500

Trademark Application

$750

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Is a patent worth the money?

Patents can be a great asset or a money drain

Most inventors think they have come up with the next big thing. Some do and most do not. Before investing your life saving, take a minute to think about the best way to invest your time and money.

Devin Miller IP attorney for start-ups

Devin Miller (IP Attorney)

Electrical Engineer

Lawyer

Small business owner

Salvation or Anchor

Most inventors believe they have come up with the next big thing. They believe that everyone will want to steal it. They believe that a patent is their ultimate salvation. Inventors will mail themselves postmarked letters, record phone calls, hire attorneys to draft disclosure agreements, and generally act paranoid. Too often, inventors never stopping to think about whether it's really worth it.

The anchor of your business

Should you go after the treasured paper with the gold seal from the patent office? Here are a few questions to ask yourself before you invest in intellectual property.

Is a patent worth it?

Patentable and Valuable?

Is your invention really likely to be patentable and worth protecting? If it is a revolutionary new technology, probably. If it is a new widget for a small niche market, maybe not. 

Invest a little time and money and meet with a good patent lawyer (not a general practice attorney or business attorney). A good patent lawyer will give you solid guidance about how to proceed. If you are serious about investing in your invention, a good invention search can save you money in the long run. Provisional patent application can also be a great option to consider as they are comparatively inexpensive and buy you a year to think, sell, or test out your invention before jumping all-in.

Time and Money

Do you have the time and money? Patents are an expensive investment for start-ups and small businesses and take years to get. The average cost from start to finish to get a patent is $15,000-$20,000. 

Time and money for patents

When there are hiccups along the way you will have to pour more money and time into the patent process without a guaranteed outcome. Are you prepared for what it might cost? Have you considered if it will still be worth it in the two to three years it typically takes to get?

Cost and benefit for patents

Cost v. Benefit

Do the potential benefits justify the investment? Many inventors never think past "my idea is great, I need a patent." But will you sell enough? Is anyone really likely to steal the idea? Will your product even be relevant by the time the patent is issued? Will the patent have real value to investors or acquiring companies?

 I have several patents and patents-pending, and when I ask myself these questions in honest retrospect, there are some patents that are very valuable and others that I should not have pursued. So when you are trying to decide if you need a patent, ask yourself these questions. If the answers are positive, I would love to help.

Our Products

Flat Fee Pricing - Straightforward for Patents and Trademarks

Provisional Patent Application

$1700

Non-Provisional Patent Application

$5500

Trademark Applications

$750

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Tired of wait? Accelerating Your Patent Application: Quick Tips for Faster Examination

Obtaining a patent can be a lengthy process, but for innovators and inventors seeking quicker examination, there are several strategies available. By taking advantage of specific programs and initiatives offered by patent offices, applicants can expedite the examination of their patent applications. In this article, we will explore various options that can help accelerate the patent examination process, providing a valuable guide for individuals or businesses seeking faster results.

  1. Prioritize Track: One effective approach to expedite patent examination is by utilizing a prioritized track program offered by patent offices. These programs, such as the Track One Prioritized Examination program provided by the United States Patent and Trademark Office (USPTO), enable applicants to request accelerated examination for an additional fee. By opting for this track, applicants can significantly reduce the average processing time for their patent application.

  2. Patent Prosecution Highway (PPH): The Patent Prosecution Highway (PPH) is a global initiative that allows applicants to leverage positive examination results from one participating patent office to expedite examination in another. Under this program, if an application receives favorable examination results in a first patent office, the applicant can request accelerated examination in a second participating patent office. The PPH streamlines the examination process by utilizing existing examination work, resulting in quicker and more efficient patent grants.

  3. Accelerated Examination Programs: Several patent offices offer specialized programs designed to accelerate the examination process. These programs often require applicants to meet specific requirements or provide additional information at the time of filing. For instance, the European Patent Office (EPO) offers the Program for Accelerated Prosecution of European Patent Applications (PACE). By submitting a more detailed application that meets the PACE requirements, applicants can expedite the examination timeline.

  4. Patent Cooperation Treaty (PCT) Patent Prosecution Highway (PCT-PPH): For international patent applications filed under the Patent Cooperation Treaty (PCT), the PCT-PPH program allows applicants to accelerate examination in specific national or regional patent offices. By leveraging a positive examination result from a specific PCT participating office, applicants can request expedited examination in other participating offices. The PCT-PPH facilitates a streamlined process, ensuring faster examination and potential patent grants in multiple jurisdictions.

  5. Patent Examination Support Services: Some patent offices provide additional services to expedite the examination process. These services often involve paying an extra fee to receive accelerated treatment. For instance, the USPTO's Patent Prosecution Highway (PPH) Accelerated Examination Support Document (AESD) program enables applicants to request accelerated examination by paying a fee. This service can be a valuable option for those seeking faster patent examination.

While the patent examination process traditionally requires time and patience, several strategies can help expedite the timeline for applicants. By understanding and utilizing programs such as prioritized tracks, Patent Prosecution Highway (PPH), accelerated examination programs, Patent Cooperation Treaty (PCT) PPH, and patent examination support services, inventors and innovators can accelerate the examination process and potentially obtain their patents more quickly. It is crucial for applicants to consult the specific guidelines and requirements of the relevant patent offices to determine the best options available to expedite their patent applications. By employing these strategies, inventors can navigate the patent examination process more efficiently, protecting their intellectual property and advancing their innovations in a timely manner.

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Can I take/acquire a URL owned by someone else if they aren't using it?

The digital landscape is vast and ever-expanding, with millions of websites and URLs circulating across the internet. As individuals and businesses establish their online presence, the question of ownership and availability of URLs becomes increasingly relevant. However, it is crucial to recognize that claiming someone's URL solely because they aren't actively using it is ethically and legally problematic. In this article, we explore the reasons why you cannot take someone's URL just because they aren't using it and the importance of respecting digital identities.

  1. Ownership and Intellectual Property Rights:

URLs serve as digital addresses that uniquely identify websites and online resources. When individuals or organizations register a domain name, they acquire ownership rights and establish their digital identity. Ownership of a URL is protected under intellectual property laws, and infringing upon someone's rights by taking their unused URL can lead to legal consequences.

  1. Respect for Branding and Reputation:

Unused URLs may be associated with a specific brand, individual, or organization. Even if a website is inactive, the URL may still hold value in terms of brand recognition, marketing potential, or future use. Taking someone's URL without their consent undermines their branding efforts and potentially damages their reputation. Respecting the digital identity of others is not only a matter of courtesy but also a way to maintain trust within the online community.

  1. Unforeseen Future Plans:

It is important to acknowledge that people may have legitimate reasons for not using a particular URL at a given time. They may be planning a future project, keeping the URL as a placeholder, or simply experiencing a temporary hiatus from online activities. Assuming that an unused URL is up for grabs disregards the individual's autonomy over their digital presence and their potential plans for the future.

  1. Abandonment and Releasing URLs:

While unused URLs may seem available, determining whether a URL has been truly abandoned can be challenging. The mere absence of a website or activity does not automatically grant ownership rights to another party. In cases where a URL has been abandoned or released intentionally, there are established protocols and processes for acquiring such URLs, such as domain name auctions or registration through authorized channels.

  1. Legal and Ethical Considerations:

Engaging in URL squatting or cyber-squatting, which involves registering or using a domain name with the intention of selling it at an inflated price, is widely regarded as unethical and can be illegal. Authorities worldwide recognize the importance of protecting digital identities and intellectual property rights, and there are mechanisms in place to address domain name disputes.

In the vast digital realm, it is crucial to respect the ownership, branding efforts, and future plans of individuals and organizations. While unused URLs may appear available, taking someone's URL without permission or legal entitlement is not only ethically questionable but also potentially illegal. Preserving digital identities and intellectual property rights fosters a healthier and more trustworthy online environment where individuals and businesses can thrive. Let us promote a culture of respect and understanding by recognizing the value of each unique digital presence and the significance of maintaining a sense of ownership over one's digital identity.

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Is there such thing as an 'international' patent?

Patents are granted by national governments, which means that there is no such thing as an 'international' patent that provides worldwide protection. However, there are several options available for inventors who want to protect their inventions in multiple countries.

One option is to file a Patent Cooperation Treaty (PCT) application, which provides a unified procedure for filing patent applications in multiple countries. The PCT application allows inventors to delay the decision of where to seek patent protection while their invention undergoes an initial international search and examination.

The PCT application does not grant international patent protection but instead provides a centralized procedure for filing patent applications in multiple countries. After filing a PCT application, inventors have up to 30 months from the priority date to file separate patent applications in each country where they seek patent protection.

Another option is to file separate patent applications in each country where an inventor seeks patent protection. This option can be time-consuming and expensive, as patent laws vary from country to country, and inventors will need to work with local patent attorneys to navigate the application process.

It is important to note that each country has its own patent laws and procedures, and an inventor's patent may not meet the requirements for patentability in other countries. Therefore, it is crucial to conduct a patent search and consult with a patent attorney in each country where an inventor seeks patent protection.

In addition, even if an inventor obtains a patent in another country, it will only be enforceable in that country's legal system. This means that if someone infringes on a patent in another country, an inventor will need to pursue legal action through that country's court system.

In conclusion, there is no such thing as an 'international' patent that provides worldwide protection. However, inventors can apply for patent protection in multiple countries through a Patent Cooperation Treaty (PCT) application or by filing separate patent applications in each country. It is recommended to conduct a patent search and work with a patent attorney in each country where an inventor seeks patent protection, as each country has its own patent laws and procedures.

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How much is a patent worth?

The value of a patent depends on several factors, including the invention's uniqueness, commercial potential, and the market demand for the invention. In general, a patent can be worth millions of dollars or nothing at all, depending on these factors.

One way to determine the value of a patent is to look at the licensing fees or royalties that the patent holder can charge for the use of the invention. These fees can range from a few cents to several dollars per unit sold, and the value of the patent will depend on the expected volume of sales.

Another way to determine the value of a patent is to look at the potential revenue that the invention can generate. For example, if the invention is a new drug or medical device, the value of the patent will be based on the estimated market size and the potential revenue from sales.

In some cases, the value of a patent can be determined through a patent auction or sale. In these cases, the patent holder can sell the patent to the highest bidder, and the value of the patent will depend on the level of interest from potential buyers.

It is important to note that the value of a patent can also depend on the legal protection it provides. A strong patent with broad claims can provide more legal protection than a weak patent with narrow claims, and this can affect the patent's value.

In addition, the value of a patent can also be influenced by the patent holder's ability to enforce their rights. If the patent holder does not have the resources or legal expertise to enforce their rights, the patent's value may be limited.

In conclusion, the value of a patent can vary greatly depending on several factors, including the invention's uniqueness, commercial potential, market demand, and legal protection. While a patent can be worth millions of dollars, it is important to conduct a thorough analysis of the patent's value before making any decisions about licensing, selling, or enforcing the patent. A patent attorney or intellectual property specialist can help to evaluate the patent's value and provide guidance on how to maximize its value.

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Do US patents apply in other countries

If you are a US inventor, you may be wondering if your US patent protection applies in other countries. The short answer is no - US patents do not automatically apply in other countries. However, you can apply for patent protection in other countries through several options.

One option is to file a Patent Cooperation Treaty (PCT) application, which provides a unified procedure for filing patent applications in multiple countries. The PCT application allows you to delay the decision of where to seek patent protection while your invention undergoes an initial international search and examination.

Another option is to file separate patent applications in each country where you seek patent protection. This option can be time-consuming and expensive, as patent laws vary from country to country, and you will need to work with local patent attorneys to navigate the application process.

It is important to note that each country has its own patent laws and procedures, and your US patent may not meet the requirements for patentability in other countries. Therefore, it is crucial to conduct a patent search and consult with a patent attorney in each country where you seek patent protection.

In addition, even if you obtain a patent in another country, it will only be enforceable in that country's legal system. This means that if someone infringes on your patent in another country, you will need to pursue legal action through that country's court system.

It is also important to note that some countries have reciprocity agreements with the US, which may make it easier to obtain patent protection. For example, under the Patent Prosecution Highway (PPH), patent applicants can accelerate the examination process in participating countries based on a positive examination in the US or another participating country.

US patents do not automatically apply in other countries. To obtain patent protection in other countries, you can file a PCT application or file separate patent applications in each country. However, it is important to understand that each country has its own patent laws and procedures, and your US patent may not meet the requirements for patentability in other countries. It is recommended to conduct a patent search and work with a patent attorney in each country where you seek patent protection.

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How to patent a hair product

Developing a new hair product can be an exciting and rewarding process. However, to protect your intellectual property and prevent others from copying your product, you may consider patenting your invention. Patenting a hair product involves a specific process that is important to understand.

The first step in patenting a hair product is conducting a thorough search of existing patents to ensure that your product is unique and does not infringe on any existing patents. This search can be conducted through the United States Patent and Trademark Office (USPTO) website or with the help of a patent attorney.

Once you have confirmed that your hair product is unique, the next step is preparing a patent application. A patent application for a hair product should include a detailed written description of your invention, highlighting its unique features, how it is different from other hair products, and any supporting diagrams or illustrations.

After preparing your application, you will need to file it with the USPTO and pay the appropriate fees. Then, you will need to wait for a response from the patent examiner, who will review your application and may ask for additional information or make objections.

If objections or rejections are raised, you will need to respond to them to clarify your product's uniqueness and how it differs from any existing patents. If your patent application is approved, you will receive a patent that gives you exclusive rights to manufacture, use, and sell your hair product for a specific period, usually 20 years from the date of filing.

In conclusion, patenting a hair product involves conducting a thorough patent search, preparing a detailed patent application, filing the application with the USPTO, responding to any objections, and ultimately receiving your patent. By patenting your hair product, you can protect your intellectual property, prevent others from copying your product, and have exclusive rights to manufacture, use, and sell your hair product for a specific period.

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How to know if you are infringing on a patent

If you are developing, manufacturing, or selling a product, it is essential to ensure that you are not infringing on any patents. Patent infringement can result in significant legal and financial consequences, including paying damages to the patent holder, paying the patent holder's legal fees, and being prohibited from selling the infringing product. Here are some ways to know if you are infringing on a patent:

  1. Conduct a patent search: The first step in determining whether you are infringing on a patent is to conduct a patent search. A patent search can help you identify any patents that are relevant to your product or technology. You can conduct a patent search on the United States Patent and Trademark Office (USPTO) website or hire a patent attorney to conduct a more comprehensive search.

  2. Analyze the claims of the patent: Once you have identified relevant patents, you should analyze the claims of the patent to determine whether your product infringes on any of the claims. The claims describe the specific elements or features of the invention that are protected by the patent. If your product includes all of the elements or features described in one or more of the claims, then you may be infringing on the patent.

  3. Consult with a patent attorney: If you are unsure whether your product infringes on a patent, you should consult with a patent attorney. A patent attorney can help you analyze the patent claims and determine whether your product infringes on the patent. They can also advise you on potential legal strategies to avoid infringement.

  4. Monitor patent litigation: Even if you have conducted a patent search and determined that your product does not infringe on any patents, it is important to monitor patent litigation in your industry. Patent holders may file lawsuits against companies that they believe are infringing on their patents. By monitoring patent litigation, you can stay informed about any potential infringement issues and take action to avoid infringement.

  5. Consider obtaining a freedom-to-operate opinion: A freedom-to-operate (FTO) opinion is a legal opinion provided by a patent attorney that assesses whether a product or technology infringes on any patents. Obtaining an FTO opinion can provide additional reassurance that you are not infringing on any patents.

In conclusion, knowing whether you are infringing on a patent is essential for any company that is developing, manufacturing, or selling a product. To determine whether you are infringing on a patent, you should conduct a patent search, analyze the claims of the patent, consult with a patent attorney, monitor patent litigation, and consider obtaining a freedom-to-operate opinion. By taking these steps, you can avoid infringement and protect your company from legal and financial consequences.

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