Five Common Mistakes Entrepreneurs Make with Patents

There are five common mistakes that entrepreneurs make with patents that can be avoided.  These include:

1.       Filing a patent application before developing a working prototype. 

By developing a prototype, the inventor learns what structure will work and what structure won’t work.  And, by doing so, the inventor often develops a minimally viable product that operates as desired.  If a patent application is filed before the prototype is developed, the patent application may not describe and protect the actual product that will be sold, because it may describe and claim components that are not needed or that have been subsequently replaced with other components.  Also, if no prototype is ever developed, the inventor may not be able to provide sufficient structural information and detailed drawings which would enable a solid patent application to be drafted. 

2.      Publicly disclosing a product for more than 1-year before filing a U.S. patent application. 

The U.S. has patent laws which prohibit an inventor from filing a patent application on a product that has been publicly disclosed more than 1-year beforehand. So, if an inventor publicly discloses the product more than 1-year beforehand, the inventor cannot file a patent application to protect the product.  It is often a good strategy to file the patent application before publicly disclosing your product.

3.       Filing the wrong type of patent application.

A utility patent protects the functional structure of the product, and a design patent protects the external look of a product.  For some products with relatively a simple structure, it may be difficult to obtain a utility patent since patent examiners often raise numerous rejections based on prior patents.  For the same product, the likelihood of obtaining a design patent may be significantly higher. 

4.       Trying to go through the patent process without a patent attorney.

Some inventors who initially prepare and file a patent application themselves have encountered solid rejections from the patent examiner.  After filing the patent application, no new matter or information can be included in the patent application. So, when a rejection is encountered, the inventor or a patent attorney can only use the originally disclosed information in the patent application to try to overcome the rejections of the patent examiner.  In some cases, the rejections cannot be overcome by the original information in the patent application because the original information was not detailed enough, and the inventor is not able to obtain a patent.  It is often a good idea to hire a patent attorney upfront to prepare and file the patent application.

5.       Hiring a patent attorney or company with the lowest cost quote.

The old adage “you get what you pay for” also applies to hiring a patent attorney.   Rarely, in my experience, did I get the best service from a provider that gave me the lowest quote.  It is typically a better approach to look at the customer reviews of a patent attorney in selecting a patent attorney to protect your most valuable product.