4 Common Patent Mistakes

The United States patent system is arcane and convoluted. Its intricacies are boundless, sometimes leaving even seasoned patent attorneys scratching their heads.

Although the processes for filing a patent application and obtaining an issued patent are complex, it is almost always a worthwhile endeavor. This is because a patent grants the owner the exclusive right to produce and sell their invention.

Unfortunately, many mistakes are commonly made throughout the patent prosecution process. Avoiding these mistakes helps to ensure that your intellectual property gets the protection it deserves.

Let’s examine some of the most common mistakes that are made in connection with patent applications.

Waiting Too Long to File

The process of obtaining patents is time sensitive. Waiting too long to file an application may mean that the inventor entirely misses out on the opportunity to obtain a patent.

The U.S. patent system is a “first to file” system. This means that the first person to file an application for an invention has the right to obtain patent protection. Also in play is the one-year grace period that is available under U.S. law.

This grace period makes it possible for a company or individual inventor to market, sell or otherwise publicly disclose their invention up to one year before they file a patent application. For example, if you announce a new product at a trade show in June of 2021, you’ll need to file a patent application in the U.S. covering that product before June of 2022.

The problem with publicly announcing an invention and filing a patent application subsequently is that someone else might steal your idea. If they are able to file a patent application for your invention before you do, then they may be legally entitled to a patent.

This is bad enough, but here is an additional reason to consider filing a U.S. patent application before public disclosure of your invention. Patent protection may not be available in many foreign countries if your product was publicly announced before a patent application was filed. If you expect to have an overseas market for your product, then it’s smart to get a U.S. patent application filed as one of your first steps.

Forgetting Deadlines

It’s vital that you file a patent application before publicly disclosing your invention, but that’s not the only deadline that it’s necessary to bear in mind.

For instance, examiners at the U.S. Patent and Trademark Office minutely examine the claims of each patent application. These claims are compared to the claims of existing patents and patent publications. If the examiner determines that the claims of your patent application are too similar to the claims of an existing patent or publication, then an Office action is issued.

The applicant has an opportunity to respond to these Office actions with amendments and arguments, but it is essential that this is done within the deadlines. When you receive an Office action, pay special attention to the issue date of the document. Typically, you will need to respond to the Office action within two or three months of this date. Extended deadlines are available, but you have to pay increasingly expensive extension fees depending upon when you respond. If you fail to respond to the Office action by the final extended deadline, your patent application will be abandoned.

Another deadline to be aware of is the deadline to file a non-provisional or foreign patent application. If you file a provisional patent application in the U.S., then it is necessary to file a non-provisional patent application within one year of the filing date of the provisional patent application. Similarly, foreign patent applications must be filed within one year of filing a provisional patent application or a non-provisional patent application that does not claim priority to a provisional patent application.

Inaccurate or Vague Descriptions

It’s an unfortunate reality that many patent applications are filed without including sufficient detail. This makes them vulnerable to cancellation or other issues that may make the patent unenforceable. Accordingly, it is imperative that the invention disclosure be as precise and detailed as possible. Accurately describe each component, and ensure that you include drawings that fully illustrate the invention.

If drawings are included as part of the patent application, make certain that you include a brief description of the figures in the specification. This is a requirement of the U.S. Patent and Trademark Office.

Failing to Pay Required Fees

When inventors file patent applications without benefit of legal counsel, they frequently forget to pay the necessary fees. Examples of some fees include those that are due upon filing of the application. These include fees for filing, search and examination of the application. Additional fees may be due depending upon the number of claims that are included in the application. Failure to pay the fees within the designated time period will result in the abandonment of the application.

Ask Williams IP Law to Help with Filing Patent Applications

These and other common patent mistakes can be avoided when you work with a qualified intellectual property attorney. Your lawyer will use the invention disclosure that you provide to craft the application’s specification and claims. Thanks to training and experience, he can draft a patent application that provides a meaningful scope of enforceable patent protection.

If you want to make certain that your patent application is timely filed, appropriately detailed and doesn’t become abandoned through a failure to pay required fees, work with the patent prosecution professionals at Williams IP Law. Call us today to set up a complimentary consultation.

Back-to-School Inventions That Were Revolutionary

Back to School

As autumn draws near, thoughts turn to the upcoming school year. One of the most highly anticipated parts of going back to school is the supplies.

Here’s a look at the invention of some of the most common and best-loved school supplies.

Crayons

Is it possible that Pennsylvania cousins C. Harold Smith and Edwin Binney could have known how popular and timeless their 1903 invention would become?

Of course, this pair of inventors didn’t invent the crayon. That honor belongs to European inventors who created a crayon using a mixture of oil and charcoal. Eventually, pigmented hues would take the place of charcoal, giving artists a rainbow of colors.

The Crayola Crayons that are the staple of every child’s desk were first offered for sale in 1903. Alice Binney, the wife of one of the crayon’s innovators, coined the name “Crayola” from the French word for a stick of chalk “craie” and by shortening the oily word “oleaginous.”

Made from colored pigments and paraffin wax, Crayola Crayons started out with eight colors. Today, there are hundreds of options.

Eraser

The eraser is an indispensable tool in any classroom, but this technology wasn’t as obvious in earlier centuries as it is today. Throughout the decades, people tried a variety of substances to get rid of mistakes written in ink or lead.

A tablet of wax, some rough sandstone or even a piece of soft bread might have been able to obliterate written mistakes in those days. Then, English engineer Edward Nairne tried to use a piece of natural rubber instead of a morsel of bread. The year was 1770, and Nairne began selling rubbers. However, these rubbers had drawbacks like a peculiar odor and a tendency to crumble during use.

Charles Goodyear refined the process of making rubber erasers in 1839 when he developed a process for vulcanization of rubber. This made erasers more durable, and they became a household staple. Inventor Hymen Lipman later patented his idea for attaching an eraser to the tip of a pencil, though the patent later was invalidated.

Nonetheless, the eraser, whether attached to a pencil or not, remains an indispensable tool in the classroom.

Pencil Sharpener

Long gone are the days of needing a knife or sandpaper to sharpen a pencil. Today, students use a mechanical or electric pencil sharpener. It’s much faster and more convenient, but how did we arrive at this marvelous innovation?

It was Bernard Lassimonne, a French mathematician, who received the first patent for a pencil sharpener. The year was 1828, and the device relied on a block of wood inset with metal files set at 90 degrees to each other. Cumbersome to use, the device never caught on.

However, another Frenchman, Thierry des Estivaux, was waiting in the wings with an improvement. This device consisted of a single blade in a cone-shaped housing. Today, this is called a prism sharpener, and it’s still in use.

One of the most important pencil sharpener improvements was created in the U.S. by John Lee Love, an African-American inventor. While working in Fall River, Massachusetts as a carpenter, Love invented the Love Sharpener, the first portable pencil sharpener. Love was able to patent his invention in 1897.

Lunch Box

Choosing the right lunch box is something of a declaration of the carrier’s personality. However, lunch boxes had a much more utilitarian beginning in the 19th century. Those lunch boxes were plain and functional, most often carried by working men, and usually were constructed of metal to ensure durability even in places like mines and quarries.

It wasn’t until 1902 that lunch boxes designed for kids were introduced. These were often made to resemble small picnic baskets, but it wasn’t long before entrepreneurs saw an opportunity.

One of the earliest of these was Walt Disney. His hugely popular animated character, Mickey Mouse, was the first character to be featured on a lunch box. Soon, Hopalong Cassidy and the Lone Ranger, and later the Beatles, the Partridge Family and the Harlem Globetrotters, were showing up on lunch boxes everywhere.

Today, metal lunch boxes are rare as most are now manufactured from molded plastic.

White-Out

Sometimes also called liquid paper, typist Bette Nesmith Graham invented White-Out in 1956. Initially, the substance consisted of tempera paint that was run through Graham’s kitchen blender. She began distributing bottles of her “Mistake Out” to her colleagues.

Two years later, Graham founded the Mistake Out Company, still working in her kitchen and garage. The venture finally became a full-time one, and Graham sold the company to the Gillette Corporation in 1979.

Whether your invention belongs in the classroom, the factory or the operating room, it’s wise to protect it with a patent. Speak with the IP professionals at Williams IP Law to learn more about how to protect your innovation.

Strange Inventions of April Fool’s Day

This year’s April Fool’s Day is different than most. With most of the country on lockdown, it’s gotten far more difficult to play a prank on those who are nearest and dearest.

With a little luck, next year the country can get back to its usual first of April shenanigans. Until then, here’s a lighthearted look at some of the weirdest invention ideas ever to cross the desks at the U.S. Patent and Trademark Office … or did they?

Smellovision

Who wouldn’t want to be able to smell the things that they are seeing on their television? That appears to have been the inspiration behind the Smellovision. Ostensibly created by a professor at London University around 1965, the invention was introduced on BBC TV. The inventor claimed that the technology would allow viewers to smell things like coffee and onions when they appeared on the screen.

Advising viewers to stand some six feet away from their television and sniff to get the best results, the inventor asked that people call in before noon the following day to report whether or not they had been able to smell anything.

Fortunately or unfortunately, this “invention” was really just an experiment dealing with the power of suggestion. Although many people claimed to have actually smelled the items presented on BBC TV, the reality is that we are still waiting for someone to invent a real Smellovision.

The Kodak EyeCamera 4.1

When inventors at the Kodak company proposed an idea for eye glasses that had a camera lens attached, the idea seemed like an outlandish one. While the advertisements for the product didn’t exactly promise X-ray vision, they certainly did make some claims that were difficult to believe. However, what was even worse was the appearance of the product, which was effectively a pair of eyeglasses with an actual camera lens occupying one side.

This was only an April Fool’s joke, but similar technology for facial recognition that is embedded in eyeglasses exists today.

Teleportation Machine

In 2013, the University of Michigan College of Engineering revealed the development of a working teleportation machine. Professor Xavier Vlad released a video demonstrating the teleportation of a key from one location to another.

Unfortunately, Vlad was later forced to admit that this video was produced in the name of good fun rather than scientific advancement.

A Clutter-Vaporizing Smartphone App

Are you ever bothered by the sheer amount of stuff that’s cluttering up your house? Are you embarrassed to invite people over for fear that they might think you’re a hoarder?

If so, then you need this app from Houzz that vaporizes clutter with the click of a button on your smartphone. Unfortunately, this one is prank from 2017.

Invisible Glasses

This is the invention for the person who hates to wear glasses and contacts but still requires vision correction. GlassesUSA.com came up with the idea for TruSkin Invisible Glasses as an April Fool’s joke a few years ago. The product was advertised on their website with enough technical language and jargon to make it sound really convincing. How many people fell for this clever ruse?

A Drone-Powered Hologram that Attends Meetings for You

Have you ever wished that you could attend a meeting without having to actually be there? If so, then this one is for you. This 2017 prank advertising Prysm Avatar made some pretty outlandish claims, but it’s a cinch that there were some tech-loving people who fell hard for the idea of combining drones with holograms.

If you have a real invention that you would like to protect with a patent, feel free to contact us at any time. We are always ready to review new ideas and go over all of the possibilities that are available for protecting your intellectual property.

Patents issued for 2014 is 300,000.

Oct 2, 2014

300,000 patents issued for first time in a fiscal year. Over the last few decades the number of patents issued at the USPTO has been showing a general trend upward. However the filings have also been increasing, at times more quickly then issuances. This has led to the extreme backlog of patents waiting examination. Over the last 4 years the USPTO has made some considerable steps to decrease the backlog. As seen in the chart on the link, more allowances have been issued. There is still a lot of work to do to get the backlog to a reasonable level but at least progress is being made.

If you are wondering how long you have to wait until the patent is examined, the last I recall was about 19-20 months on average. Total pendency is around 33 months. Long time, I know. It is getting better.

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