Patent Attorney and Founder
JD: Hello, I have an invention that has both a utility and a design patent. It’s very difficult for me to prototype, and I’m looking to sell it outright. Everything is done and paid for, including attorney fees and patent costs. I’m not in a position to build it. Any advice or help?
JD: Okay, well, it sounds like you’ve at least filed the patent. I’m not sure if it’s been granted yet, but kudos to you for going after both utility and design patents. Not all inventors do that.
JD: For physical products that will be for sale, having both patents is crucial. The utility patent protects the functionality of the device, while the design patent protects its appearance. This dual protection is great for enforcing your patent and can help in potential legal disputes. If an infringing product looks the same, even if its functionality is different, the jury is likely to rule in your favor.
JD: Since everything is done and paid for, it sounds like your patent is at least pending. You mentioned you’re not in a position to build it, but that’s okay. The patent office doesn’t require you to prove that your invention has been built. You just need to provide specifications and drawings that show it can be built.
JD: Many inventors aim to have their product patented so they can license or sell it. You don’t have to start a company, although that often yields the biggest return on investment. Starting a company involves growing your product line, raising money, hiring employees, and handling marketing and sales. This traditional approach is a lot of effort, risk, and money.
JD: If prototyping and building your invention is too challenging, consider licensing it. This involves putting your invention in the hands of a company that already has a robust manufacturing system. You could then earn royalties without the need to manage production yourself.
JD: If you decide to prototype, I suggest working with a local designer or engineering company. This ensures you have control over future iterations and confidentiality. If you need to work with someone out of state, involve attorneys in both states to ensure the contract is binding. International work carries the highest risk due to enforcement challenges and potential confidentiality breaches.