patents & prototypes

Eric Hanscom Joe Donoghue

InterContinental IP Leardon Solutions

patents

Eric HanscomInterContinental IP

o Prototypes: How to show that an invention works

and can be effectively mass-produced.

o Patents: How to protect an invention.

Patent v. Prototype

Patents

• A right to exclude others from manufacturing, selling, or using your invention for a number of years.

Trademarks

• Any name, symbol, figure, letter, word, or mark adopted and used by a manufacturer or merchant in order to designate his or her goods or services and to distinguish them from those manufactured or sold by others.

Copyrights

• The legal right granted to an author, composer, playwright, publisher, or distributor to exclusive publication, production, sale, or distribution of a literary, musical, dramatic, or artistic work.

IP: Patents, Trademarks& Copyrights

Type of Intellectual Property

Protects

Average time until issue or

final rejection?

Expect to pay (attorney

fees + costs)*

Length of protection

Renew-able?

Practical examples in

business

Patent (Utility)

How something works 3 years$7,000 - 50,000

20 years from date of filing application*

NoDevices,

substances, business methods.

Patent (Provisional)

1 year grace period to file a utility patent

application1 year

$3,000 - $6,000

1 year "grace period"

NoDevices,

substances, business methods.

Patent (US Design)

How something looks 1 year $2,00014 years from date of issue

NoUnique shapes of

products

Patents: Provisional, Utilityand Design

Can A Patent Protect

Your Idea?(35

U.S.C §101)

•You must invent or discover something new and useful

•Only the following subject matter can be patented:•Processes (business methods)

•Manufactures (products)

•Compositions of matter (substances)

Did Someone Else

Beat You To

It?(35

U.S.C. §102)

•Is there a patent, published paper (including published patent applications), or other public disclosure?

•Did it happen before your invention date or more than 1 year before the filing of the application?

•This is true even if you had no knowledge of the other public disclosure

Is Your Invention Truly Unique

?(35

U.S.C. §103)

•No patent if your invention is an “obvious improvement” over someone else’s public disclosure

•Usually the largest hurdle in obtaining a patent

•This is true even if you had no knowledge of the other public disclosure

Barriers to getting a patent

• Should I apply for a utility patent?

• Business decision based upon prior art references found and economic benefit of obtaining (or at least filing for) a patent

Analyze the Results

• Looks for issued patents, published patent applications, and products on the marketplace that are similar to yours

• Everything cannot be found

• Use a Prior Art Searching company that ONLY does prior art searches; Do NOT use invention submission companies who will give you a “package deal” that includes a prior art search and a patent application

Prior Art Search

Prior Art Searches: is it worthtrying for a utility patent?

File Application

Rejection /Office Action

Response (written, phone

call, visit USPTO)

Allowance Issued Patent

Renewal Fees (Utility Patents

only)

Patent Application Process

Abstract

• Summary of 150 words or Less

DrawingsBackground

of the Invention

• A simple introduction to what your invention is. Describes the general field of the invention, and sets up why the prior art fails to solve the problem that your invention fixes.

Detailed Description

• This section describes exactly how the invention works by referring to the drawings. Describes in detail why your invention is not a mere “obvious improvement” over existing patented inventions.

Claims

• This is the section that protects your ideas

• It lays out the individual elements of your idea – basically what you “claim” as your invention.

Parts of a Utility Patent

Claim 1: A Laptop Comprising

A Scanner

A Copier

A Fax

A Printer

Claim 1: A Laptop Comprising A Scanner

Claim 2: A Laptop Comprising A Copier

Claim 3: A Laptop Comprising A Fax

Claim 4: A Laptop Comprising A Printer

Patent 1: Narrow Claims Patent 2: Broad Claims

Hing Wong: A Hong Kong company importing into the U.S. a laptop

computer with a photocopier and a scanner built into it.

Francoise’s Computer Center: In the U.S., he builds a laptop

computer that contains a fax. He does not sell it in the U.S., but

rather exports all of the laptops to France.

Your Invention

• A Laptop that includes

• A Scanner• A Copier• A Fax• A Printer

Infringement: Is thepatent any good?

prototypes

Joe DonoghueLeardon Solutions

TMWhy a Prototype?

o Validation and feasibility of idea

o Use for obtaining intellectual property

o Show to investors for raising money

o Work out the design and manufacturing

details

o Validate functionality and qualify design

o Feedback from distributors, buyers, and

retailers

o Obtain customer feedback from beta units

Product DevelopmentLifecycle

Proof-of-ConceptPrototype

Design Prototype

Production Prototype

TM

o Proof-of-Concept Prototype

o Design Prototype

o Production Prototype

Three Types of Prototypes

TM

Prototype that bears little

resemblance to the final product

and is used to validate of the idea

and prove feasibility.

Proof-of-Concept Prototype

TM

Making a Proof-of-Concept Prototype

Use whatever you may

have available to create

a Proof-of-Concept

Prototype but call in the

pros if necessary.

TMDesign Prototype

Prototype that has the

functional, engineering, and

aesthetic properties of the final

product and is produced using

quick fabrication methods rather

than high volume methods.

TM

Making a Design Prototype

Polyurethane Casting

Stereolithography Machining

Form testing with for 1 to 2 parts Form, fit, function testing for 1 to 20 parts

Form, fit, function testing for 15 to 100 parts

TMProduction Prototype

Prototype that is

fabricated using the final

design and

manufacturing methods.

TM

Making a Production Prototype

It takes

manufacturing tools

and machines to

produce a production

prototype.