A prototype is not required to obtain a U.S. patent.  However, assuming the prototype is kept confidential, and there is no offer for sale, sale, public use, commercial use, or other problematic activity, prior to filing a complete and timely patent application, it may be helpful for various reasons for a prototype to be prepared.  Generally, an inventor may have a 1 year grace period from their own first disclosure to file a U.S. patent application, but many foreign countries may not provide any grace period for foreign patents, so keeping an invention and prototype confidential prior to filing is important to attempt to preserve any possible patent rights.          

                One of the reasons for preparing a prototype is that although an invention needs to be described in writing and generally with drawings in a patent application, some inventors may have difficulty completely describing all the details of the structure and operation of their invention or of preparing drawings needed for filing.  

                However, depending on the complexity of the invention, the inventor may be able to prepare at least a crude prototype.  If the inventor provides a prototype it may help a registered patent attorney to have a better understanding of how the invention works, and to prepare a complete patent application that has a better chance of being allowed, and may result in an issued patent which provides stronger protection.       

                In addition, it is also possible that a prototype may make it easier to prepare both a design patent application and a utility patent application.  Generally, a design patent relates to appearance and a utility patent relates to function.  A physical prototype may have appearance aspects that can be protected by a design patent and functional aspects that can be protected by a utility patent. 

                A prototype may be especially helpful for a design patent application.  Design patent application drawings generally need to include multiple views which are consistent; and need to comply with precise standards specified by the USPTO.  Having an actual prototype helps a patent draftsperson to prepare accurate design patent drawings as required. 

Firstly, a provisional patent application is not a U.S. patent.  It is an application.  Secondly, a provisional patent application will never result in a U.S. patent unless it is followed up, at least, with a timely filing of either a non-provisional patent application or a petition to convert to a non-provisional patent application.  Thus, to obtain a U.S. patent, a provisional patent application is not required, but a non-provisional patent application or petition to convert to one, is.    

Generally, if an inventor can provide sufficient support for a patent application, the inventor may be able to file a non-provisional patent application, without filing a provisional, thereby saving on the costs for the provisional.

However, the USPTO costs for filing a provisional application are lower than what is required for a non-provisional application.  For example, for a micro entity, as of July 8, 2020, the USPTO fees due on filing for a typical provisional application are $70, while the USPTO fees due on filing (includes USPTO filing, search, and exam fees) for a non-provisional application are typically $430 assuming no extra claims fees or other additional fees.  

Although the USPTO costs may be less for a provisional application, a provisional application like a non-provisional application must, at least, contain a written description of the invention satisfying all requirements of 35 U.S.C. §112(a), which include:

“(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.” (for applications filed on or after September 16, 2012). 

In addition, although the USPTO may provide a filing date for a provisional application even if no drawings are provided, any drawing necessary for the understanding of the invention should be provided on filing, or one may not be able to provide it later, potentially preventing an inventor from getting a patent or subjecting a potential patent to invalidity. 

If a properly prepared provisional patent application is filed, it can be relied on for a priority date, generally, assuming a non-provisional patent application is filed within a year of the provisional application filing.  However, failure to properly prepare a provisional patent application may prevent an inventor from getting a patent or subject a patent to invalidity. 

An inventor may, for example, need a priority date of a provisional application to obtain priority versus another or to have an application priority date that is prior to the expiration of one year from the inventor’s own disclosure.  Failure to obtain the priority date may prevent an inventor from obtaining a patent or subject a patent to invalidity.        

If an inventor wants to rely on the provisional application filing date, the provisional needs to be done correctly, which arguably takes as much effort, and as much in attorney’s fees if you use a registered patent attorney, as preparing a non-provisional application, except generally, that a provisional does not require one or more claims, or an oath/declaration.      

So when would an inventor want to file a provisional application?

If there is insufficient time or insufficient money to file a non-provisional patent application it may be helpful to file a provisional patent application.  However, any provisional application should be filed by a registered patent attorney, with as complete a disclosure as possible, claims, and with drawings if necessary for understanding the invention.  Although claims are not required for a provisional, it may be helpful to provide one or more claims.  In addition, if an inventor files a provisional without the help of a registered patent attorney, which is not recommended, the inventor should keep the invention confidential, before, during, and after the filing of the provisional patent application, until a patent application is filed, as soon as possible, by a registered patent attorney with as complete a disclosure as possible, claims, and with drawings if necessary for understanding the invention. 

If the inventor is not sure if they want to obtain a patent, they may want to file for a provisional patent application.  This may sound strange since you would think that someone filing a patent application would want to obtain a patent.  However, some inventors may want to file a provisional application with a complete disclosure, drawings, and claims through a registered patent attorney and may generally decide prior to the expiration of a year from the provisional filing date, that they don’t want to proceed with a non-provisional application, if the invention does not appear to be desirable in the market, or due to other reasons.

If the inventor does not want to continue to try to get a patent, the provisional application filing does not count for determining micro entity status in the future.  Generally, an inventor may be able to claim micro entity status, and pay less USPTO fees for a particular non provisional application, if they have not previously filed for more than 4 non provisional patent applications, and if they meet certain income limitations. 

Filing provisional applications, when an inventor is not sure if they want a patent, may help to preserve micro entity status and thereby save the inventor money on USPTO fees. 

                However, there are a number of situations where you may not want to file for a U.S. trademark registration for a particular name.  Attorney Tencza has obtained many U.S. trademark registrations during more than 25 years of practicing patent/trademark law, and can provide free feedback on the name you want to file for and give you guidance on whether it is a good idea to file for that name for the particular goods/services.

                There are various reasons why you may not want to file for a trademark registration for a particular name.  If Attorney Tencza determines that your proposed trademark name is likely to be rejected by the US Patent and Trademark Office, then you can move on to another name, and avoid the cost of filing for a trademark registration that you will never get.  

                Some of the reasons your trademark application may be refused or suspended include the following:

                Trademark is Confusingly Similar to Existing U.S.P.T.O. Trademark Registration/Application

                If the USPTO feels there is a likelihood of confusion between your proposed trademark and a prior existing, and currently active USPTO trademark registration your application will typically be refused. 

                Your proposed trademark does not have to be the same as the particular USPTO trademark registration.  Similarities of sound, meaning, and appearance will be looked at to determine whether there is a likelihood of confusion between the proposed mark and the existing mark. 

                Your trademark application may be suspended based on a prior pending USPTO trademark application using similar likelihood of confusion analysis.  If, and when, the prior pending USPTO trademark application matures into registration, your trademark application will then be refused. 

                Trademark is primarily geographically descriptive or primarily geographically deceptively misdescriptive

                If the USPTO feels that your proposed trademark is primarily geographically descriptive or primarily geographically deceptively misdescriptive, then your trademark application will be typically refused.  However, this refusal may be overcome by a showing of acquired distinctiveness.  Attorney Tencza can help you overcome this refusal in an appropriate case. 

                   Trademark is merely descriptive or deceptively misdescriptive

                If the USPTO feels that your proposed trademark is primarily geographically descriptive or primarily geographically deceptively misdescriptive, then your trademark application will be typically refused.  However, this refusal may be overcome by a showing of acquired distinctiveness.  Attorney Tencza can help you overcome this refusal in an appropriate case. 

Trademark is Primarily Merely a Surname

If the USPTO feels that your proposed trademark is merely a surname or last name, then your trademark application will be typically refused.  However, this refusal may be overcome by a showing of acquired distinctiveness.  Attorney Tencza can help you overcome this refusal in an appropriate case. 

                Proposed Trademark is Generic

                When a proposed trademark is actually a generic term for the particular goods/services, then the USPTO will refuse registration, and that refusal cannot be overcome.  For example, one cannot obtain a trademark, stating only the word “Apples” for the goods “Apples”. 

                Proposed Trademark is Deceptive

                When a proposed trademark is found to be “deceptive” then the USPTO will refuse registration, and assuming the finding of deceptiveness is not overcome, then one will not be able to get a U.S. trademark registration for that mark for the particular goods/services.  There is a difference between a “deceptive” mark and a “deceptively misdescriptive” mark.  Marks that are “deceptive” under 15 U.S.C. §1052(a) cannot be registered, whereas marks that are “deceptively misdescriptive” under 15 U.S.C. §1052(e)(1) can be registered upon a showing of acquired distinctiveness.

                Name is used merely for Ornamentation

                If a name is used merely for Ornamentation, and not as an indicator of source of goods/services sold/rendered in interstate commerce or international commerce with the U.S., then there may be no trademark use of the name, and the USPTO may refuse registration.  However, it is possible to file an intent to use trademark application, and to thereafter use a name as an indicator of source, not merely as ornamentation, after the filing date of the application. 

1. SELECT A NAME THAT HAS NOTHING TO DO WITH YOUR GOODS/SERVICES

Generally, a word or phrase may be “fanciful”, “arbitrary”, “suggestive”, “merely descriptive”, or “generic” when applied to particular goods/services. 

“Fanciful” words or phrases are made up.   

“Arbitrary” words or phrases have a common meaning which has nothing to do with the particular goods/services.

“Suggestive” words or phrases suggest some characteristic of the goods/services.

“Merely Descriptive” words or phrases describe characteristics of the goods/services.

“Generic” word or phrase are actual common names for the goods/services. 

                Assuming no one else is using a confusingly similar term, “fanciful” and “arbitrary” words or phrases are the strongest trademarks and provide the best chance of being registered at the US patent and Trademark Office. 

                Although “suggestive” words or phrases provide the next best chance of being registered, it is often difficult to distinguish between “suggestive” words or phrases and “merely descriptive” words or phrases as applied to the particular goods/services.  Generally, “merely descriptive” words or phrases require a showing of acquired distinctiveness, whereas “suggestive words or phrases do not require such a showing. 

                In addition, if words or phrases are “suggestive” or “merely descriptive” it is far more likely that others have used the same words or phrases to describe the particular goods/services.  Thus, if you pick “suggestive” or “merely descriptive” terms, you are more likely to come into conflict with trademarks or terms used by others, and your name or phrase may not allow you to “stand out in a crowd”. 

                A “generic” word or phrase, by itself, as applied to particular goods/services, cannot be registered with the USPTO and cannot be a trademark.   For example the word “Apple” can never be a trademark for the apple fruit, but can be a trademark for a computer company.  In the case of the computer company, the word “apple” is an arbitrary word. 

• SELECT A NAME THAT IS NOT CONFUSINGLY SIMILAR TO ANYONE ELSE’S

Prior to using a name for a trademark, you can do free searching on the USPTO web site, www.uspto.gov to see if there are confusingly similar names used for similar goods/services.  The USPTO website provides information regarding USPTO registered trademarks and USPTO pending trademark applications.     

You can also do free searching on various search engines, such as google® to see if the name is used by others. 

                However, generally, you should have a US full trademark search done, which would include at least, USPTO registered trademarks, USPTO pending trademark applications, US state registrations, common law trademarks, business names, and internet domain names to see if there are confusingly similar conflicting trademarks.

                It is possible for someone to have common law trademark rights, without a trademark registration, and a U.S full trademark search, typically done by an experienced trademark search service may determine any potential trademark infringement concerns.    

• SELECT A NAME THAT IS NOT A FAMOUS TRADEMARK

Although trademarks generally apply to particular goods/services, it is possible that one may be liable for at least trademark dilution for use of a famous trademark for any goods/services, even goods/services that are not related to the original trademark owner’s goods/services.   

                So, generally, it is not recommended that you use someone else’s famous trademark, such as possibly, for example “Coca Cola®”, for anything, even if the owner of that trademark is not using it for that purpose at the moment. 

FASTER UTLITY PATENTS

                Track One Prioritized Examination

                The utility patent process can be greatly sped up by filing a petition for track one prioritized examination.  The USPTO reports an average time of less than 12 months to get a utility patent using prioritized examination (or until abandonment) and Attorney Walter J. Tencza Jr. has obtained a number of utility patents in less than six months, and some much faster, using prioritized examination.  For example, Attorney Tencza obtained US Utility Patent No. 10,706,857, on July 7, 2020,  about 2 and ½ months from filing; US Utility Patent No. 10,624,436 on April 20, 2020, about 4 and ½ months from the filing; and US Utility Patent No. 10,549,826 less than 4 months from filing. 

Prioritized examination has various requirements, including limitations on the number of claims, and it is very important that a registered patent attorney be involved with the process to ensure that the petition for track one prioritized examination is granted.  Although the prioritized examination process has many advantages, it does not provide the application with special expedited status upon filing an appeal. 

                Petition Based on Age or Health

                A petition based on Age or Health is another way to speed up the utility patent process; and can also be used for a design patent application.  If an inventor is sixty-five years of age or older or has significant health issues that inventor may be able to speed up the patent process.  Unlike prioritized examination, a petition based on age or health does not require additional USPO fees, does not have claim limitations, and an application expedited based on age or health will be sped up for purposes of appeal.  Attorney Walter J. Tencza Jr. filed a patent appeal in an expedited case based on age, and received a favorable decision in a matter of months from the USPTO Patent Trial and Appeal Board, as opposed to the years that a non-expedited appeal may take.

FASTER DESIGN PATENTS

                Rocket Docket Expedited Process

                The track one prioritized examination process cannot be used for design patent applications.  However, design patents can be sped up using a “Rocket Docket” process.  That process requires that an applicant conduct a patent search before filing and provide the results of that search with a petition, and USPTO fees.  It is very important that the search be conducted and reported in a proper manner for the petition to be successful. 

                Attorney Walter J. Tencza Jr. has filed a number of Rocket Docket petitions and obtained design patents in a matter of months as opposed to the nearly two years it may take in a normal case.  For example, Attorney Tencza obtained US design patent D869,589 on December 10, 2019, less than two months after filing;  US design patent D839,383 on January 29, 2019, about 4 months after filing; and US design patent D823,430 on July 17 2018, about 4 months after filing. 

FASTER PATENT APPEALS

                New Expedited Patent Appeals

                As previously noted, a patent appeal will be expedited when a proper petition based on age or health has been granted.  However, in addition, the USPTO has introduced a process for Expedited Patent Appeals which is somewhat similar to the Track One Prioritized Examination Process.  The new appeal expediting process has various requirements, including the payment of USPTO fees and request for an expedited appeal.  As with Prioritized examination, it is very important that a registered patent attorney be involved with the process to ensure that the request for expedited appeal is granted.  Although this expedited appeals process is very new, Attorney Walter J. Tencza Jr. anticipates filing a request for expedited appeal in a number of patent applications, and anticipates that decisions will take months as opposed to years.   

OTHER METHODS OF SPEEDING UP PATENT APPLICATIONS

                There are various other methods of speeding up patent applications.  Some of these may involve the type of technology applied for.  However, most if not all, of these methods require extensive patent searches and/or other documentation, and USPTO fees, which may make these other methods cost prohibitive.  However, Attorney Tencza has filed patent applications and obtained patents using so called “Accelerated Examination” methods, which are different from prioritized examination.  However, arguably the “Track One Prioritized Examination” process, may have greatly eliminated the need for “Accelerated Examination” in many cases.  

Instructions on how to build a fireplace.

Blogs concerning the diagnosis of medical conditions.

Videos for everything from how to fix a leaky faucet to how to seed your lawn.

It is overwhelming and confusing.

Similarly, there is plenty of information on the internet concerning filing your own U.S. patent applications.

As a registered U.S. patent attorney with about twenty-five years experience (Walter J. Tencza, Jr., Esq., 732-549-3007; PATENTNOW.COM®, email: patent@patentnow.com) I have come in contact with many inventors who have tried to get a U.S. utility patent without legal assistance.

Nearly all of them fail.

Some of them fail in a way that makes it impossible to get a U.S. Patent. For example, their actions may have caused the invention to be put in the public domain.

Does anyone get a U.S. utility patent without legal representation?

Well let’s start with this, the overwhelming number of utility patents are granted to corporations or other organizations, who have legal representation.

For example, according to U.S. Patent and Trademark Office Statistics, in 2015, out of 298,407 granted utility patents, only 18,899 were granted to individuals (as opposed to U.S. and foreign corporations, and U.S. and foreign governments). http://www.uspto.gov/web/offices/ac/ido/oeip/taf/h_at.htm#PartA1_1b

That means only about 6.3% of patents were granted to individuals in 2015.

Of these “individual” patents, were any done without legal representation? Well, since I didn’t feel like looking up thousands of patents, I instead did some searching on the internet and found this article:

“The Lone Inventor: Low Success Rates and Common Errors Associated with Pro-Se Patent Applications” http://www.ncbi.nlm.nih.gov/pmc/articles/PMC3310007/

The article, dated March, 2012, refers to a study which indicates that pro-se applicants (applicants without legal representation) have a 76% abandonment rate versus 35% for applicants with legal representation.

Bottom line is this: You are much better off getting a patent attorney to prepare, file, and prosecute your patent application, than doing it yourself.

Call Walter J. Tencza Jr., Esq. at 732-549-3007, email: patent@patentnow.com; PATENTNOW.COM® to file for your patent now.

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Copyright 2016 Law Office of Walter Tencza, Jr. All Rights Reserved.

Legal Disclaimer- the information provided herein is not legal advice.  Transmission of this information is not intended to create, and receipt by you does not constitute, an attorney / client relationship.  Although effort has been made to ensure that the answers are correct, Law Office of Walter Tencza Jr. and Patentnow.com® cannot and does not offer any warranty, express or implied that the answers contained are accurate statements of law. This document is provided for informational purposes only.  Viewers must not act upon any information without first seeking advice from a qualified attorney outside the context of this document.

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