Patent Attorney and Founder
Woohoo!! You’re Patent Pending!!! Now What??? …. Well, don’t just sit there!
Seriously, one of the worst things you can do while your patent is pending is wait for the USPTO, wait to time the market out just right, or wait until your product is perfect (hint: it will never be perfect).
“Do the thing, and you will have the power.”
Ralph Waldo Emerson
In this article, I hope to inspire you to honestly do ANY-thing, but more importantly, I’ll give you some advice on what 3 things to do in order to improve your chances of commercial success with your invention, and get the most bang for your buck while you’re at it.
Step 1: Know what type of patent application you’ve got pending
There are three main types of patents that can be filed at the USPTO:
- Design patents
- Utility patent applications
- Provisional
- Non-Provisional
- Continuation/CIP/Divisional
- Plant patent application
If you’re not sure, just ask your attorney and have them confirm it. You don’t want to get this wrong, as it will affect which course of action is best for you.
Design Patent Application
If you filed a Design patent application, you will note that what your attorney focused on was the drawings! In fact, what you will hopefully own someday is the 3D representation of your product – so those drawings are super important. Now, because there is no “provisional” design patent available, this will be examined by the USPTO straight away, so time is of the essence! Skip ahead to Step 2.
Utility Patent Application
If you filed a Utility patent application, you will remember having to work with your attorney to write out (ad nauseum) everything there is to know about your invention. You also submitted a lot of drawings to help explain each of those aspects of your invention. You need to know whether you filed a provisional, nonprovisional, or continuation. If you filed a provisional patent application, you’ve got more time on your hands, and thus more opportunity to prepare to go to market. If you file a nonprovisional or a continuation of a prior-filed patent application, then you’ve got less time, and you need to focus! Skip ahead to Step 2.
Plant Patent Application
If you’ve come up with a novel botanical plant and have just submitted your application, you’ve likely done a ton of work on the specification where you had to explain, at the molecular level, how to make and reproduce your plant variety. There are no provisional Plant patent applications, so what you filed is the equivalent of filing a nonprovisional utility patent application. Time is of the essence, as the USPTO examination will be starting soon.
Step 2: Label it; Build it; Test it; Sell it; Improve it; Repeat!
Whether you are putting together digital renderings, or making physical products, whenever you share them with the public or third parties, make sure you properly label “patent pending” on the product (put it on the packaging if its too hard to put it on the product itself). These two words will help you in any future litigation if you can show willful infringement later.
As mentioned above, acting will give you the power!!! So, don’t squander the time it takes to get your patent granted (which can take upwards of 3+ years by the way). As the subtitle states, by building and testing, even if on your own, you will learn a great deal about how to improve/change your invention for better results when it reaches the market. And then, once you sell it to the public, you’ll get another round or two of changes/improvements. The benefit is to be able to try to update your patent application while pending to be able to capture/protect the improvements/changes that you find while testing/selling. Here’s how to do that for each patent application type.
Design Patent applications:
Because there are no provisional design patent applications, you’re filing for this parent application is locked-in to the figures and brief descriptions you submitted already. Don’t give up though! You can file what are called continuation applications on any new ornamental shapes or substantial changes to your design even while the first (parent) application is pending. Design patent applications are usually a lot more straightforward than utility patent applications, and therefore usually carry a smaller financial burden. So, worst case scenario, after doing your market testing, if you decide to sell a new design, just file a new design patent application before going to market.
Utility and Plant Patent Applications:
If you were wise enough to file a provisional patent application, you’re in the best position to iterate, change, and improve your invention during the entire 12 months you have before your final/formal patent application must be submitted. The key here is to do as much development on your product/services as possible to confirm/validate your invention is a market success. This includes working with a manufacturer to make sure it can be built well and with minimal cost to improve your margins when you sell it. This also includes getting the proper feedback loops in place with customers and test groups to give you that valuable information you need on what is not working well, so you can adjust. All these changes/updates/improvements can usually be added into the nonprovisional just prior to filing. Occasionally, the improvements are so significant, that they will require a separate patent application to protect it. Check with your patent attorney to confirm.
Step 3: Don’t just get One Patent, ALWAYS file a Continuation Application
This last step goes for ALL types of applications that are still pending. Never forget that before your first application gets granted, that you’ve filed at least one continuation/child application which will go for more rights and protection than you were awarded on the first one.
The way this works, is after submitting your final/formal application (Design Applications, Nonprovisional, or Plant application), the USPTO examiner will usually come back with an office action or two, and the original application claims will need to be modified (usually narrowed) to get the claims to be allowed/granted. So, by filing a continuation, you can attempt to broaden those claims that you narrowed in your parent application. The other HUGE benefit of this, is that you can now import your improvements and changes that you have after doing testing/selling. You did start testing and selling, right?
The last MAJOR benefit of having a pending application is enforcement. If ever you find that your product is being infringed on, and a competitor is ripping you off/copying your product. When you go after them, seeking a settlement, you will have SO much more power if you’ve got the ability to change/morph your pending application to match their product, even if they try to design around your parent/initial patent filing. That’s making smart moves.
In Summary, make sure you know what type of application you have pending, properly label, then test, build, and sell your invention so you can learn and improve it prior to the patent granting. Then, don’t stop at just one patent, build a portfolio that will help you enforce and monetize your invention best.