What can you do after Filing your Application?
Once you are filed, what do you do?
Can I show my invention? You can be barred from obtaining a patent if you fail to file an application within 1 year of your first sale or public disclosure of your invention. Once you have filed your application, you can publically disclose your invention without having it count against you. Another reason to get a patent application filed is to get your filing date such that anyone who sees your invention and tries to steal it by filing their own patent application on your invention, will have a filing date behind your date. So, many inventors try to promote / license / sell their invention immediately after filing the application.
First Action Prediction Letter. First, many inventors get quite impatient to see their patent applications examined. Inventors should realize that once the application is filed, they, and the patent attorneys, have no control over when it will be examined. The rapidity with which the USPTO gets to examining an application depends on a number of ever-changing factors, including the number of applications received by the “art unit” or section of the USPTO that handles your type of invention, the number of examiners in that art unit and how hard they work, and USPTO examination policies and procedures. We can, at any time, get on the USPTO website and see the expected date of examination. Once your application becomes “public”, you too can pull up this information on the PAIR program. If you want us to look on the website and give you the latest expected date of examination, we can do so for around $50 per request.
Prototypes, packaging, manufacturing, names/brands. Most inventors should consider trying to have a prototype made of their invention, either to show that the invention truly works or to give prospective licensees an idea of what the eventual product would look like on the market.
Make it and sell it yourself or try to license out your pending patent? This is something that inventors should be thinking about. The main advantage of making it and selling it yourself is that you get to keep all the profit, but it is a lot of work. By licensing out your pending patent application, you shift much of the risk to your licensee – they need to make it and find a buyer, your main risk is that you pick the wrong licensee and they don’t sell many products, thereby paying you fewer royalties. This problem can be avoided with a properly drafted licensing agreement that gives you a minimum quarterly royalty or a percentage of the sales, whichever is greater.
Continue your business education. Many inventors fail because they are not honest with themselves about what aspects of the invention business they are good at, and which they need help with. For those living in San Diego County (or willing to travel), the North County Small Business Development Center (http://www.sandiegosmallbiz.com/) offers a number of free and low-cost courses on many types of business development, along with offering free one-on-one consultations on how to develop your business.
Keep up with developments in patent law, court decisions relating to patent law, and USPTO changes in examination policies. I am always surprised how many clients will pay us thousands of dollars for a patent application, and then never bother to look at our website to find out what changes are going on in the patent world that may affect their patent application. Just in the last three years we have had three major court decisions that have radically affected the patent world (KSR reduced the utility patent allowance rate from over 70% to around 40%, Bilski severely limited the types of business methods that are patentable, and Egyptian Goddess expanded the protection offered by design patents). In many cases, when the Office Action comes in and we notify the clients, they have no idea of the important changes to patent law that we (and they) are going to have to deal with (or have benefitted from). It is important to remember that your patent application will be examined under the laws that exist at the time the patent is examined – not under the laws that were in place at the time the application was filed. We urge all of our clients to keep up with changes to these laws by subscribing to our newsletter, or at the very least trying to keep abreast with these changes by regularly reading the articles on our website or on the internet in general.
