Kelly Slater’s Rough Ride: Part 1
Kelly Slater is best known for being an 11-time World Surfing Champion to date, but he is also the first listed inventor on a patent application, 12/274,321, SURFACE GRAVITY WAVE GENERATOR AND WAVE POOL, published on May 20, 2010, as publication number 20100124459, soon to become a patent, on a wave pool device that generates surfing waves. The application and patent prosecution process is an interesting one, and provides some common sense knowledge for the novice inventor. Everything in this article was obtained through a public record search of the United States Patent & Trademark search engine.
Why use this as an example? Well, first, surfing technology is interesting to me. Second, any invention relating to generating surfing waves in artificial environments is of particular interest to me, as my wife and I have small resort on an island in Thailand which is so blocked from the Indian Ocean that a big day of surf is 6 inches (don’t believe me? Just go to www.Thai-West.com and look at the pictures – trust me, we need any wave machine technology we could get).
So, let’s go through the patent application and prosecution process and see how Kelly ended up with a patent nearly four years after first taking off on the wave.
Step 1. Invent something, get patent application filed.
In November of 2008, Kelly’s application was filed. It included separate documents for the abstract (150-word or less summary of the invention), specification (written portion), drawings (black and white illustrations showing the key parts of the invention and how it works), and claims (the most important part of a patent, where his patent attorney set forth the key parts of the invention he hoped to protect). His application also included an oath, where Kelly and his co-inventor swore that they with the “first and true inventors” of this device. In it, Kelly and his co-inventor, Adam Fincham, also claimed “small entity status”, which allows them to pay half the usual fees for patent application filing.
Small Entity Status: The United States Patent & Trademark Office has a program under which small entity inventors, generally considered those with fewer than 500 employees, qualify for a 50% reduction in fees, as compared with large businesses with over 500 employees. So, Kelly and Adam are two guys – not Microsoft – so they filed as a small entity. Small entity status can actually get a bit tricky, as you can lose small entity status if you enter in a number of business transactions, including licensing, with a large entity.
….to be continuedread more
Provisional or Non-Provisional Patent Applications
Recently a viewer of the live monthly web show ” Patents & Prototypes ” asked this question.
“Can you tell me what is a non-provisional patent application and what is a provisional patent application?”
A provisional patent application is not a “patent”, but rather you are buying yourself a year-long grace period during which you can try to attract investors, do some more R&D on your invention, or even try to sell it outright. Bottom line on provisional is that they are a good way to buy yourself a year of grace period; you are “patent pending” from the day the provisional is submitted, and if you later file a utility patent application based on the provisional within the year allotted, your utility application will claim the date of the provisional. Provisionals cost roughly half of a utility patent application (generally around $3,000 to $5,000) and can be prepared relatively quickly, usually within 1 – 2 weeks.
Provisional patent applications generally work well for inventors who:
• Currently don’t have the money for a utility patent application, and would like to get “patent pending” before they try to raise money from investors, venture capitalists, hedge funds, etc.
• Need to become “patent pending” ASAP and don’t want to wait for the 2-4 weeks it usually takes to have a quality utility patent application prepared.
• Want to do a bit more R&D, prototyping, market testing, etc. before they commit to a final version of the invention for the utility patent application.
The main dangers of relying on provisional applications include:
• The year will fly by very quickly and if the inventor is not motivated, organized and self-directed, they would probably have been better off filing the utility patent application in the first place (as now they will have to wait until the utility patent is examined, and the inventor does not “move to the head of the examination line” just because the utility relied on a provisional filing date).
• The provisional has to provide “support” for what is being claimed in the utility patent, so if the inventor changes the invention so much that it is not reasonably related to the contents of the provisional application from which it claims a filing date, that earlier filing date can be denied by USPTO. We often find the inventors who try to save money and write their own provisionals (or use the on-line provisional-writing websites) and prepare a provisional that is of such poor quality that it will not adequately support a utility application.
If the inventor, during the year of patent pending status, decides to file a utility patent application based on the provisional, he/she will pay additionally for the utility patent application (we usually take ½ of the cost of the provisional off the cost of the utility patent application so long as we prepared the provisional, we offer no such discounts for provisionals prepared by other law firms, and most definitely do not offer any such discounts for inventor-prepare provisionals or on-line, fill-in-the-blanks provisionals).
There are also advantages and disadvantages to going immediately with a utility patent application.
The main advantage (for some inventors) is that you get in line to have your patent examined by the USPTO, and you don’t delay the examination by first filing a provisional, waiting up to a year, and then filing the utility. Other inventors may prefer to drag out their patent pending status as long as possible before examination, and so they would rather tack a utility onto the end of a provisional. We have also found that inventors are usually taken more seriously by venture capitalists, investors, prospective licensees, etc., with a pending utility patent rather than a pending provisional patent.
Many inventors are extremely eager to see their patent applications examined. In other cases, it is very important for the commercial success of a company to know as soon as possible whether or not their patent will be approved. Inventors in either of these positions should consider one of the USPTO’s fast-track programs such as Accelerated Examination Application. Accelerated Examination is a program that tries to give the inventor either a patent or a final rejection within a year of the filing date. The catch? Cost. You need to begin an Accelerated Examination application by having an extensive prior art search performed, which usually runs $3,000 to $8,000. Drafting the application is also considerably more expensive (usually double the normal rate) as we have to prepare a support documents that can go well over 100 pages in length. There is also a Track 1 program in effect at the USPTO. This also costs additional money, so contact us for details if you want.
However, before you decide which (if any) type of patent protection you may want to file for, I would highly urge you to do a prior art search first.
A Prior Art Search is an important step in helping the inventor decide whether to proceed with a provisional or utility patent application. With a Prior Art Search, you are trying to find patents, published patent applications, other publications, products being sold, and any other item that may be used to prove that either a) the inventor was not the first inventor of this particular invention, or b) that the combination of the prior art renders this particular invention a mere “obvious improvement”, and not worthy of a patent.
First and foremost, prior art searches are not perfect. Even if you hire 10 different prior art searching companies, they will probably not find everything that an examiner could use in trying to shoot down your application, but the prior art search will hopefully at least give you some idea of what else has already been invented, and from that you determine how to proceed. To repeat, just because you have done your own prior art search and found “nothing” and a professional prior art searching company did not find a patent that was, in your opinion, “not very close” to your invention, it is no guarantee that you will get a patent.
We often tell inventors to do their own prior art search first. Using a combination of the most popular patent searching programs (www.USPTO.gov, www.FreePatentsOnline.com, Google.com/patents and others), enter what you think are the “key words” for your invention and see what kind of patents and published patent applications you get. Start keeping track of them by number and “sort” by number for easy reference. Once you start getting duplicate results from all the search engines, you may have exhausted your searching abilities. You should also look for products similar to yours on the internet, and if your invention is a technical one, consult with the relevant trade, professional and scientific journals. If you found that someone beat you to inventing your invention by more than a year, perhaps you should pay for a consultation/patent assessment to confirm your suspicions and consider going with a design patent. If you think you still have a decent chance to get a utility patent, we advise you to consult a professional prior art searcher.
Turn to a professional. After you feel you have taken the prior art search to its limits, we urge you to have a professional prior art searching company do a prior art search. When you approach the company, make sure you know the price before you start, and give them all the patents, published patent applications, and other prior art you found. Most prior art searching companies budget a certain number of hours to a prior art search, and if you show them what you found, they will focus their efforts on finding additional prior art, rather than reinventing the wheel by spending time finding what you already found. If you like, you can hire two or more different companies and see what each can find.
Prior Art Searches are not perfect and in no way guarantee the success of a patent application.
You can find more information on this in our article on Prior Art Searches (www.icipLaw.com in the “Education” section). Prior art from anywhere in the world can be used against your patent application (just as your published patent application can be used against any patent application in a foreign country). Don’t rely on the prior art search as a final determination of whether you will get a patent. Instead, you should use the prior art search results as a general guide to what other inventions are out there, and proceed knowing that even if the prior art search discloses nothing, there is no guarantee that your patent application will be allowed.read more
Once you have reviewed the results from the prior art search, you need to decide how to proceed. It may be necessary to have a patent attorney review the results and advise you and the likelihood of success(usually around $1,500 to review a prior art search, but can vary depending upon the number of references found).
Please realize before you spend money having the prior art results analyzed that a) the analysis will be based only on the prior art found, and b) that patent laws and the USPTO’s interpretation
of them can change dramatically from the time of the analysis to the time your application is examined, which can render the analysis relatively useless in light of changes to law or USPTO
So, how to decide the next step of the Patent Process? Our advice is first to decide if you think you have a reasonable shot at a utility patent. If not, you should consider a design patent, if possible. Design patent applications
are (again) relatively inexpensive, quick, and have a high likelihood of success. Because they only protect the shape of an invention, they usually offer less protection than a utility patent
application, but they may be the best that you are going to get.
Even if you think there is not a reasonable chance of getting a utility patent, there are still additional reasons for considering filing a utility patent:
The inventor is willing to take a chance that the application will be approved anyway. If an issued utility patent would be extremely valuable, it may be worth risking the costs in
filing an application.
Patent laws and their interpretation by court decisions and the USPTO examination procedures may change to the point where an “unpatentable” invention at the time of
filing becomes patentable by the time it is examined (note: the reverse also can happen).
If you decide to go the utility route, you have to decide whether to file a provisional patent application or a utility patent application. A provisional application is a good way to buy
yourself a year of grace period; you are “patent pending” from the day the provisional is submitted, and if you later file a utility patent application based on the provisional within the
year allotted, your utility application will claim the date of the provisional. Provisionals cost roughly half of a utility patent application (generally around $3,000) and can be prepared
relatively quickly, usually within 1 – 2 weeks.