Filing a US Patent

My Patent Experience
by Kayli, Former Owner of Ditto Daddy™

I will call this my patent experience, as that is all this is.
Please keep in mind as you read the following; I am in no way legally
trained or offering any guarantees or legal advice.

Nitty Gritty:

I’ll start here, because these are the most common questions asked.

Is a patent application expensive?

YES. To the typical work-at-home mom, it is rather expensive. Think in the thousands.

Where do I start?

Check out www.uspto.gov. First, you need to discover if your idea is patentable. The
most common thing I hear from WAHMs is a great confusion between patent and copyright. Empower yourself by educating yourself about both matters! MOST WAHM items fall under copyright laws.
The next
thing to do is go through the US Patent and Trade Office’s site and find yourself a lawyer who deals with your type of invention. From there, you should be able to have a patent search done for a ‘nominal’ fee (less than a thousand dollars).

Do I HAVE to have a lawyer?

Nope. But I would highly recommend the investment. If you do the
papers yourself and have an error, a resubmission could potentially
cost you a substantial delay, a loss of rights, or a lot more money
than you would have spent had you gone to a lawyer in the first place.

How long does it take? What is “Patent Pending?”

The time question is very subject to the back-up of the USPTO, your
lawyer’s schedule, etc. From everything I’ve read, a minimum of 18
months. “Patent Pending” status is granted upon a submission of a
Utility Patent Application or Provisional Patent Application. During
this time, you are NOT protected from copycats, *BUT* rip-off artists
beware – a patent could be granted any day, and you could face some
serious legal action for infringement after that date.

Isn’t there a CHEAPER way?

So you have a great idea, but the thought of dumping $3-7K into an
invention that you really can’t even talk to people about is churning
your stomach… You have the option of filing a Provisional Patent
Application (PPA). A PPA is only good for one year. It will still cost
you, but much less. This can give a new inventor time to test the
waters before throwing the purse into the pool. You MUST, however, file
a Utility Patent Application (UPA) within a year in order to retain
rights. Your lawyer may discount part of the UPA processes if you have
previously filed a PPA for work already completed.

Background:

I am a regular mommy, just like any other. I quit my job as an
import/export coordinator and set out to stay at home with my two
little guys and play and sing all day… I never set out to be a
work-at-home mother, but that’s where I happily ended up! One day, as I
was going through my 6th towel with my youngest for naked time, I
realized there had to be a better way. I’ll go look online and see if I
can find a wicking waterproof blanket – that should be easy enough……
right??? There are tons of people practicing Elimination Communication
out there, I know there has to be more than felted wool in pillowcases
that are offered up. So my search started. For a couple weeks I looked
and looked to no avail. Well, no one else is making them – maybe I
should – but what about protecting myself? If this is truly a new
invention, the last thing that I want is some big name corporation
swooping in and making millions of my sweat and tears to find the
perfect solution.

The patent application research:

From there, I started to research copyrights and patents. This
should be easy… or so I thought. I started with the US Patent and Trade
Office www.uspto.gov.
I proceeded to do my own mini-search trying to see if there was
anything like what I was thinking of out there with a patent already on
it. This was important not only for my adventure in applying for a
patent, but also to protect myself against infringement. I came up with
nothing. By this point the thoughts are racing about how neat of an
opportunity this could be! At the same time though, it was very
difficult not to share my thoughts with friends in person or online.

In the mean time, I was working on my design and raising two
children with a husband who is often gone for long periods of time.
Finally, after much reading and careful consideration, I decided to
contact a lawyer for a patent search. I did NOT and do NOT recommend
going to one of these ‘Free Invention Help’ places. There is nothing
free. The filing alone for a patent application is very spendy. Please
research on this! Call a lawyer and ask what s/he thinks of these
companies. This could be the next best thing that’s in your mind. Don’t
mess it up by taking the seemingly cheap way out!

So, why did I go to a lawyer? I speak five languages fluently, and
all those years in college made me pretty savvy in technical writing,
why not write the patent application myself? Well, after having been to
a lawyer, I will say that the application that he wrote, versus the one
I had drafted, were completely and totally different. You *can* try it
yourself, but if you do the papers yourself and have an error, a
resubmission could potentially cost you a substantial delay, a loss of
rights, or a lot more money than you would have spent had you gone to a
lawyer in the first place. And that is why I opted for a lawyer.

How did I find a lawyer? I went to www.uspto.gov
and did a search of lawyers in my area. From there, I tried to research
their reputations as best as I could online and see if I could
ascertain what their ‘niche’ seems to be (some lawyers deal primarily
with software patents, while others are familiar with textile
industries, etc). I interviewed three lawyers before making my choice.
I wrote out a long list of questions for the lawyer. Not only what I
needed to know about the patent process, but what I needed to know
about them.

Of course, the first question I had was “who can I tell?” The answer
was/is anyone… anyone that will sign a legally binding
Non-DisclosureDisclosure Agreement (NDA). What is that you ask? It’s a
pretty standard legal form that you can get at just about any place
that carries legal forms. Hey, your acquaintances, friends and testers
are lucky enough to be privy to your invention, don’t be shy about
protecting yourself! An NDA basically says that they won’t go blabbing
about your ideas and sell you out – you aren’t asking them for their
first born.

The process begins:

The next big question is patentability. The terms in regards to this
are “prior known art” which is a very difficult thing, as it is not
well defined as to what falls under that category and is up to the
discretion of the USPTO. There are certain steadfast rules though such
as the item cannot be currently well known. Basically, it can’t be in
use in this country or in any other or described in print. So if you
see an article detailing “your invention” and you set out to get a
patent, well, that’s not your invention, and more likely than not, you
will get a denial.

Now, to this point, I hadn’t even had testers! But I had enough
faith in my close friend and family’s reaction that I went ahead and
had a formal patent search done. The cost of this was $600. I went
through my lawyer, who actually contracted someone to do it. You can
also have someone do it individually. Make no mistake though – just
because nothing is found does not by any means you will be granted a
patent. Actually, it doesn’t even guarantee that the invention does not
already have a patent. Sounds like a crazy waste of money then, but
whoever is drafting the patent application needs the information of the
most closely related inventions as well.

Money, money and more money:

I flat out asked from day one what the lawyer would charge me. It
was best for me, and may be best for you, to work on a flat rate rather
than an hourly fee schedule. I paid one flat rate to my lawyer to have
my application done. This meant that if he had to do 2 hours or 200
hours of research, I would pay the same. Personally, I found this to be
beneficial with my lawyer because I knew that he was not specifically
niched to textile items, but was still capable of the job. That way,
any research that he did and all the copies he made, etc. did not keep
draining my pocketbook. I have been to lawyers in the past where
something that was estimated to cost me a couple thousand wound up
costing me over five thousand as time went on.

Types of patent applications:

The next big question is what do I file? There are two types of patent applications that I am familiar with. The first is a Provisional Patent Application (PPA).
A PPA is only good for one year. It will still cost you, but much less
(around one or two thousand dollars in legal and filing fees). This can
give a new inventor time to test the waters before throwing the purse
into the pool. The second type of patent, which you MUST file within
one year in order to retain rights, is a Utility Patent Application (UPA).
Your lawyer may discount part of the UPA processes if you have
previously filed a PPA for work already completed. Now, a UPA is ‘big
bucks’ by average work-at-home mom standards. Having a lawyer do it
will run you about three to five thousand dollars – possibly even more
depending on your area and lawyer of choice. The application fees alone
through the USPTO can be thousands (it fluctuates). I kept remembering
though all the horror stories I’d read about people doing it themselves
incorrectly and losing more than that with having to fix their errors.

Time and more time:

It may take your lawyer a while to complete your application no
matter which route you choose. After having read several patent
applications, I drafted pieces that I thought would be relevant in
order to try and save both time and money. Once the filing is done, be
prepared for a wait. The time question is subject to the back-up of the
USPTO, your lawyer’s schedule, etc. From everything I’ve read, a
minimum of 18 months. “Patent Pending” status is granted upon a
submission of a Utility Patent Application or Provisional Patent
Application. During this time, you are NOT protected from copycats,
*BUT* rip-off artists beware – a patent could be granted any day, and
you could face some serious legal action for infringement after that
date.

Conclusion:

While my lawyer was drawing up the papers, I had testers sign NDAs,
and I started doing product testing. You can do it in either order. If
you are very unsure of your invention, it’s probably best that you have
people sign an NDA and do some market testing before you even have a
search done. The lawyer said 4 weeks – it took a good 8 weeks – before
things were in a final stage. Finally, the day came that I could claim
“Patent Pending” status (which is illegal to do without filing, by the
way), and I proudly opened shop! My greatest advice would be to believe
in yourself! Sounds cheesy, but so many times, we all sell ourselves
short. The big personal question that I had to ask was: If I don’t try
this, will I regret it? Yes, yes, I would. It’s a lot of money for us,
no question, but worth it to know that I had tried.