To begin the analysis, we must first answer the following:

  1. Is the “invention” something that exists already and you are applying it to an existing product to improve the existing product’s performance? OR
  2. Is the “invention” unique and you are applying it to the existing product to improve the product’s performance?
  3. Does the “invention” have a utility outside of the existing product that it is applied to?

If any of the answers above are “YES” – then you may qualify for a utility patent filing. If not, then you may qualify for a design patent filing. This article assess the utility patent prospects of the invention.

You can file a single patent application to cover the invention, the invention/equipment combo, and the improved equipment integrating the invention as a whole. If you are just at a ‘proto-type’ stage, you have two options 1) file a provisional patent application on the proto-type, secure “patent-pending”, or 2) try to develop a finalized design and file for the full patent.

I usually recommend method (1). It will enable you to go to manufacturers with the security of knowing that they won’t ‘steal’ your design or face federal consequences if they do. Then, working with a manufacturer/engineer, you can develop the final product and convert the provisional to a full patent at that time.

Having a full patent-pending, you can then begin to approach equipment companies for licensing of your ‘invention’. Licensing will enable you to collect royalties on the use/sale of any equipment that incorporates your invention.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.



Source: Smartup Legal