When should I call the patent attorney?
“When should I call the patent attorney?”
About 24 years ago, I went with my boss (a patent attorney with 35 years of experience) to do a patent training presentation for a room full of engineers at a large client. We were joined by the client’s in-house patent attorney. My boss and the other attorney gave a very nice PowerPoint presentation on the requirements for a patent, which are “usefulness,” “novelty,” and “non-obviousness.” Importantly, they explained what these terms mean so that the engineers would understand what we are looking for when we try to figure out if their invention might warrant a patent application. They then asked me if I would like to add anything.
I stood up and said something completely different.
The terms “usefulness,” “novelty,” and “non-obviousness” are legal terms with definitions determined by statutes and court decisions. These are the sorts of issues that good patent attorneys are paid good money to argue about. However, I don’t want to turn engineers into good patent attorneys. Instead, I want to turn them into good patent clients.
A good patent client is someone who knows when to call their patent professional (aka patent attorney, patent agent and the like). (Other characteristics may also apply.) Then together, we can decide whether we have something that we want to try to get a patent on.
So, when should you call your patent attorney?
When you have created something that gives you a competitive advantage, we want to try to find something that we can protect with a patent. In the field of electronics, for example, the competitive advantage is in the usual buzzwords: smaller, faster, cheaper, easier to make, more efficient, or uses less power. Similar considerations can be determined for other fields.
So, what did you do that made it smaller, faster, cheaper, easier to make, more efficient, or use less power? It often helps to simply start talking about it with the patent attorney and let the attorney ask questions to guide the discussion. Together, we can often find something that is “patent-interesting.”
Of course, this doesn’t guarantee that it is patentable. Rather, it means that it’s worth rolling the dice, spending the time and money, and trying to get a patent, because of that competitive advantage.
Are there guidelines to help determine if a creation is patent ready?
Sometimes the engineer is too “close” to the details of their project after having been totally absorbed in it for several months. So, in addition to asking about the usual buzzwords, I also like to use a few simple rules of thumb to get the discussion going.
The “bug-fix rule”: With the first iteration of your design, you turned it on or powered it up with high hopes, but it didn’t work. So, what bug fixes or extra features did you have to make to get it to work? In this situation, you might consider that the first design was the “obvious” way to do it, and the bug fix was the “non-obvious" solution. So, there might be a patent opportunity there.
The “impressed co-worker rule”: Engineers who have been around a while may be hard to impress with a run-of-the-mill solution. So, when they see your work and say “cool,” there is a good chance that you’ve done something they haven’t seen before. That should raise a flag to let the patent attorney know. Engineering supervisors should pay attention to this and suggest the engineer approach the attorney.
The “impressed marketer rule”: You’re in a meeting with the marketing team, and you describe the product’s features. Suddenly, the marketer shows interest in a particular feature because they think it will help sell the product. Marketers love to showcase “Our unique patented feature X” in their marketing materials. When you get back to your office, call the patent attorney.
We might go through all of this, file a patent application, and be unsuccessful. That would be a shame. But worse than that is not even getting a chance to try. There’s also marketing value and copying deterrent when you have “patent pending” on your product. So, call your patent attorney.
Secure Your Competitive Edge with MLO
Don’t miss the opportunity to secure the competitive edge your invention deserves. MLO is here to help you assess and protect what sets your product apart. Whether you’re ready to explore a new feature’s patent potential or need guidance on when to move forward, our experienced patent professionals are here to assist you. Contact us today to start building your intellectual property strategy with confidence.