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Patents & Prototypes


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This presentation provided by Joseph Donoghue of Leardon Solutions and Eric Hanscom of Intercontinental IP, describes the critical aspects of intellectual property and prototyping your product ideas. Please go to if you wish to submit questions or watch the live web show.

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Patents & Prototypes

  1. 1. Eric Hanscom Joe DonoghueInterContinental IP Leardon Solutions
  2. 2. PatentsEric Hanscom InterContinental IP
  3. 3. Patent v. Prototypeo Prototypes: How to show that an invention works and can be effectively mass-produced.o Patents: How to protect an invention.
  4. 4. IP: Patents, Trademarks & Copyrights Patents Trademarks Copyrights• A right to exclude • Any • The legal right others from name, symbol, figur granted to an manufacturing, selli e, letter, word, or author, composer, pla ng, or using your mark adopted and ywright, publisher, or invention for a used by a distributor to number of years. manufacturer or exclusive merchant in order publication, productio to designate his or n, sale, or distribution her goods or of a services and to literary, musical, dra distinguish them matic, or artistic from those work.
  5. 5. Patents: Provisional, Utility and Design Type of Average time Expect to pay Practical Length of Renew-Intellectual Protects until issue or (attorney fees examples in protection able? Property final rejection? + costs)* business 20 years from Devices, substances,Patent (Utility) How something works 3 years $7,000 - 50,000 date of filing No business methods. application* 1 year grace period to Patent 1 year "grace Devices, substances, file a utility patent 1 year $3,000 - $6,000 No (Provisional) period" business methods. application Patent (US 14 years from Unique shapes of How something looks 1 year $2,000 No Design) date of issue products
  6. 6. Barriers to getting a patent •You must invent or discover something new and useful •Only the following subject matter can be patented: •Processes (business methods) Can A Patent •Manufactures (products)Protect Your Idea? •Compositions of matter (substances) (35 U.S.C §101) •Is there a patent, published paper (including published patent applications), or other public disclosure? •Did it happen before your invention date or more than 1 year before the filing of the application?Did Someone Else •This is true even if you had no knowledge of the other public disclosure Beat You To It? (35 U.S.C. §102) •No patent if your invention is an “obvious improvement” over someone else’s public disclosure •Usually the largest hurdle in obtaining a patentIs Your Invention •This is true even if you had no knowledge of the other public disclosure Truly Unique? (35 U.S.C. §103)
  7. 7. Prior Art Searches: is it worth trying for a utility patent?Prior Art Search Analyze the Results• Looks for issued • Should I apply for a utility patents, published patent patent? applications, and products • Business decision based on the marketplace that are upon prior art references similar to yours found and economic benefit• Everything cannot be found of obtaining (or at least filing• Use a Prior Art Searching for) a patent company that ONLY does prior art searches; Do NOT use invention submission companies who will give you a “package deal” that includes a prior art search and a patent application
  8. 8. Patent Application Process File Allowance IssuedApplication Patent Renewal Fees (Utility Rejection Response /Office (written, phone Patents Action call, visit only) USPTO)
  9. 9. Parts of a Utility Patent Background of Detailed Abstract Drawings Claims the Invention Description• Summary of • A simple • This section • This is the 150 words or introduction to describes section that Less what your exactly how protects your invention is. the invention ideas Describes the works by • It lays out the general field of referring to individual the the drawings. elements of invention, and Describes in your idea – sets up why detail why basically what the prior art your invention you “claim” as fails to solve is not a mere your invention. the problem “obvious that your improvement” invention over existing fixes. patented inventions.
  10. 10. Infringement: Is the patent any good? Your Invention Patent 1: Narrow Claims Patent 2: Broad Claims• A Laptop that includes Claim 1: A Laptop A Scanner A Scanner Comprising• A Scanner• A Copier• A Fax Claim 2: A Laptop A Copier A Copier Comprising• A Printer Claim 1: A Laptop Comprising Claim 3: A Laptop A Fax A Fax Comprising Claim 4: A Laptop A Printer A Printer Comprising Francoise’s Computer Center: In Hing Wong: A Hong Kong the U.S., he builds a laptop company importing into the U.S. a computer that contains a fax. He laptop computer with a does not sell it in the U.S., but photocopier and a scanner built rather exports all of the laptops to into it. France.
  11. 11. PrototypesJoe Donoghue Leardon Solutions
  12. 12. Why a Prototype? TMo Use for obtaining intellectual propertyo Validation and feasibility of ideao Show to investors for raising moneyo Work out the design and manufacturing detailso Validate functionality and qualify designo Feedback from distributors, buyers, and retailerso Obtain customer feedback from beta units
  13. 13. Product Development Life Cycle Production Prototype Design PrototypeProof-of-Concept Prototype
  14. 14. Three Types of Prototypes TMo Proof-of-Concept Prototypeo Design Prototypeo Production Prototype
  15. 15. Proof-of-Concept Prototype TMPrototype that bears little resemblanceto the final product and is used tovalidate of the idea and provefeasibility.
  16. 16. Making a Proof-of-Concept Prototype TMUse whatever you mayhave available to create aProof-of-Concept Prototypebut call in the pros ifnecessary.
  17. 17. Design Prototype TMPrototype that has the functional,engineering, and aesthetic propertiesof the final product and is producedusing quick fabrication methodsrather than high volume methods.
  18. 18. Making a Design Prototype TMRapid Prototyping MachiningForm testing with for 1 to 2 parts Form, fit, function testing for 1 to 20 parts Polyurethane Casting Form, fit, function testing for 15 to 100 parts
  19. 19. Production Prototype TMPrototype that is fabricatedusing the final design andmanufacturing methods.
  20. 20. Making a Production Prototype TMIt takes manufacturingtools and machines toproduce a productionprototype.
  21. 21. Eric Hanscom, Managing AttorneyInterContinental IPwww.iciplaw.comeric@iciplaw.comJoe Donoghue, President & CEOLeardon