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By J.D. Houvener
Patent Attorney and Founder

Hey everybody, welcome. I am J.D. Houvener, patent attorney, and owner here at Bold Patents Law Firm, and you’ve made it to our live broadcast. We’re live on Facebook, LinkedIn, and YouTube. It’s my pleasure to be here with you to answer live questions about the patent process. Maybe you’re just getting started, you’ve got an idea, maybe it’s a bold idea, and you want to know what to do, what’s that first step. Or maybe you’re all the way past getting a patent granted, you’ve got the rights, but you don’t know exactly what to do now. You may have found an infringer, anything in between. There’s no question too simple here, so please bring it on.

As I do want to let you know, I am an attorney, but this is not a legal consultation, so please do not ask specific confidential legal issues here. Keep things hypothetical, ask your questions as if you’re bringing it up to a live public audience, and just know this is not the time to have an attorney-client relationship. If you do think that you’re ready to move forward and you want to consider hiring our firm to help you with your invention, I will provide you a link here to do that. The best place to get started is to do a screening session. Much like you, we want to make sure that you’re a good fit for us as much as we’re a good fit for you. So, we found this screening session to be really valuable, and there’s a link for you if you’re interested in moving forward with that with us, to have a session, a 20-minute free phone call with one of our trained advisors to see if now is the right time.

Okay, I’m excited to bring on our guest today. He’ll be coming in just a minute. His name is Pete Weresbicky, and he is a client of ours. It’s always fun to have clients come on that are brave enough to share what they’ve been working on, and you’ll be pleased to see this is a refreshing topic right, a way to stay cool in the summer. As you can see from the sunlight coming in, I’m getting a lot of sun over here. Our family actually just moved to Moses Lake, Washington, which is right in the center of Washington state, quite a bit warmer out here, a little more desert-like. So, we’re going to be getting plenty of sun. It’ll be fun having Pete on to share his invention. He’s calling it Safe Sip.

After that, we’re going to jump to our AVO questions. So, if you’re listening and you’re coming from our AVO community, know that we do have, I’ll be getting to that after the interview here with Pete. So, hang tight, and please feel free to hang out and listen, watch this. If you’re watching after the fact, and know that if you’re watching live, I do see we have one live viewer, hopefully we get some more, I will prioritize live questions. So, if you have anything that’s on the top of your mind, don’t be afraid to put that comment in there. I will get back to you, put it in order ahead of anybody else before we end this segment. All right, thank you for that like and thumbs up. If anybody else is coming in new, you’re watching this maybe after the fact, and this is your first time seeing a patent attorney in front of a live audience, and you like that idea, give me a thumbs up. Love to hear that feedback and share it with your social community as well. We want to make this a growing, thriving thing. I know that we’re here every week, every Wednesday, 9 a.m. Pacific, noon on the East Coast.

All right, so all that said, let me bring on our guest, Pete. Thanks for hanging out backstage. How are you?

Hi JD, I’m doing great. How are you?

I am excellent. Thank you so much. I appreciate you coming on the show. I’m excited to share and kind of hear about what you’ve been up to lately. So, you’ve been working with one of our patent attorneys, Anitha Singh, on your patent application, and you’re not quite at the end. But before we get to talk about the patent, could you share with us what Safe Sip is all about?

Safe Sip is the world’s first and only full-flow, one-handed auto-closed drinking spout for commercial bottles. It’s designed to work with water, soda, beer, and wine. So, I don’t have a prototype built yet, but to give you a demonstration, if you could picture a typical industry-standard drinking water bottle, if you were to pick this up with one hand, there’d be a little trigger or lever. You could depress that with one finger; it would open the valve, and you’d be free to drink from your water or soda bottle, full flow without any inhibited flow. If I were to drop the bottle or knock it over, it would not spill. The advantage of this is it could prevent damage to electronics, paperwork. To me, one of the things that really excites me about Safe Sip is you don’t need two hands to open the bottle. So, for example, driving a vehicle, you don’t need to take both hands off the wheel to take a sip. You could just reach down, pick up your bottle, and with one hand and one finger, open the bottle and be able to drink freely.

Awesome. Yeah, I’m thinking of all sorts of reasons why it’d be nice to have one hand free, you’re holding your kid, crossing the street or whatever, walking the dog. I mean, you’re going to be less encumbered. So, Pete, I wanted to actually show—I did get from you some renders. Do you mind if I share that with everybody? You can kind of tell me, walk us through that.

Okay, let me share my screen, and I got those pulled up here on our PDF. Hopefully, they’re coming through okay. So, I’ve got this first one here. Do you want to start with this one or the others?

Sure, we can start there. So, Safe Sip is designed to come in two different embodiments. You’re looking at the built-in embodiment where it can be manufactured directly into a bottle by Coca-Cola or Aquafina, where they would actually manufacture it right into their bottles, and in a disposable bottle. You can see the lever there that allows you to open the valve and pour the bottle before the water.

Switch to the next one.

Redesigned, there wouldn’t be an aftermarket add-on; this would be built into their actual production box.

Yeah, I’m excited about the licensing possibilities here, JD. I’m thinking that it’s probably where the real money is at. If I could sign a deal with Coca-Cola or Pepsi or one of the major water bottling companies where they would actually build this in, and I

could collect even a small royalty. From my research, I have found that the world consumes 2 billion disposable bottles annually. If you could get a fraction of that, I would imagine that could be quite profitable.

This is the second embodiment, and this is a universal attachment whereby it could attach to a water, beer, wine, soda bottle, and this could be mass-marketed either online or through Amazon or Walmart, retail. In this embodiment, it’s designed to snugly fit any existing commercial bottle and just simply attach it. The little white square in the front is the trigger; you depress that, and it opens the valve. One of the other things that I didn’t mention earlier is that not only does it prevent spillage and distractions from using two hands, but it’s also designed to prevent contamination and also retain effervescence in soda bottles.

That’s cool. That’s really cool. So, it attaches here, and you separate from the top, right?

That’s correct.

Awesome. Let’s look at this last pic. It’s a little zoomed in here. Okay, this is a sort of a locking mechanism.

I thought that it would be nice to be able to lock it so that you don’t accidentally press the trigger. For example, if you stick your bottle in your purse or in a suitcase where you wouldn’t want it to spill. On the left, the little blue section that bumps out is intended to be like a bell clip where you could attach it to your belt or a keychain. In this rendering, it actually looks quite large, but I think it’s a little bit misleading. I want it to be as small and compact as possible so that it’d be easy to carry around. Keep one in your kitchen, keep one in your car, keep one in your office, just have one available at all times whenever you expect to be buying a soda or a bottle of water.

Yeah, and as you were saying, I was taking a sip from one of my other water bottles. This is probably one of the most popular contigo-style bottles, but it requires it to have a separate bottle.

Absolutely, and I have my contigo bottle here, too. The drawback is you have to provide your own bottle to carry that around, which could be quite cumbersome. But also, I want to be able to just pull into a 7-Eleven or a convenience store, grab a bottle, and get on the road. I don’t want to spill this while I’m driving; I don’t want to have an accident. I want to just grab my Safe Sip, throw the cap away, attach my Safe Sip, and I’m good to go. So, it’s designed to be obviously reusable, dishwasher-friendly. You can put it in the refrigerator so that it’s just a handy device that everybody should have around because I really do feel like it’s so beneficial that it’s almost a must-have if you drink a lot of bottled beverages.

Thank you for sharing that awesome invention, definitely a great way to stay cool in the summer. Give us a little insight on where you’re at in the patent process.

I’m hoping that we could be approved any day now. I’ve been working on this with Bold Patents. My attorney was Anitha, and I believe Huda also assisted on the case. I’ve been real happy with both of them. I did a little research on my examiner and found out that they’re rated a bit differently on how difficult they are to get a patent approved. I just happened to get one of the most difficult examiners, and I really needed somebody that was going to understand my device and my concepts and how it works and what I’m trying to achieve. Anitha was great; she has an excellent understanding of what I’m trying to do. Her replies with the examiner have been fantastic. The examiner is doing anything he can to try to disqualify my patent, and Anitha has been using previous cases as examples and because she has such a good grasp of how Safe Sip works, she’s able to come up with some really good responses and try to overcome some of the objections of the examiner. So, she’s been doing a great job.

Wonderful. It’s so great to hear. Thank you for sharing that. Pete, what we’re going to do is we’re going to hopefully get some questions coming in. If you don’t, I’ll put you backstage briefly while I address three questions that did get submitted over the week, and we’ll bring you back on to close out, all right?

Thanks, JD. I’ll be here.

Excellent, and keep those questions coming. I know sometimes there’s a one or two-minute delay, so if you don’t see your question being addressed, just wait a couple of minutes, and please do keep sending those in. All right. So, this first question here on avo.com submittal is about a novel packaging method. This would be kind of neat to look at, and I’m going to look at this for the first time, so I haven’t reviewed these yet. All right, let’s pull it up.

Can I patent my novel packaging method? I want to package an everyday product in a unique way. Other products have been packaged similarly before, but not my everyday product. Can I patent my packaging method? And if so, how?

Packaging methods are something that would be patent-eligible. The order of operations and how you package it is probably still eligible—the series of steps, the process that you go to follow that. And also probably the utility or the actual packaging itself, the way that it looks, the structural integrity that it has, may also be separately eligible. Maybe two separate claim sets depending on what it is that’s unique. So, if it’s what it ends up looking like—the actual form and function that ends up having it at the end—if it provides additional transparency to see the product while also having structural stability, then that’s a utility. If what it looks like or the actual ornamentation, the form, and the feel, the way that it appears could be protected under a design patent. So, there’s a lot of different things to think about when it comes to packaging.

Now, for the most part, you’re going to want to think carefully about is it worth the investment? Patenting is definitely something that’s not low on the cost or the investment side, and you want to make sure there’s a sizable market for the actual packaging itself. So, typically, you’ll want to think of products that are sold a lot, that have a mass quantity or have a large sale base. If you’ve done some initial market research and can confirm that whatever it is that’s inside that package is going to be moved through in a large quantity, I think the market makes sense. So, the next question—the last question that sort of remains in this series—is it patentable?

So, is the packaging the first of its kind in the whole world? Does it actually have non-obviousness to it? Is it so similar to a previous package that it’s only going to have marginal differences, and those differences are what you’ll actually get the patent on? Is a customer willing to pay more for those differences? And sometimes, yes. Sometimes, those improvements, you think about the new upgrades in automobiles or the latest gadget, the bell and whistle that you’re adding on, might actually move the needle in terms of what customers are willing to pay for. A lot of those things will play into it, but in terms of eligibility, you bet packaging can be patented; it’s eligible. You just want to be careful about the market size, the opportunity, and indeed what the scope of rights is. So, I encourage you to speak with a patent attorney, and of course, our firm would be happy to work with you to discuss patentability and what the scope of rights looks like. So, thank you, that question out of Dallas.

All right, the next question here is out of Wichita, Kansas, and this one is about a product with the bottom piece and asking about a design patent. So, let’s see if this comes through here.

Alright, this will probably cover most of the screen; it’s a long question. I have a product that can have a bottom piece or not, and if I get a design patent, can I cover both designs? Okay, so there’s sort of multiple embodiments here. I have a product, for instance, a cup shape. The product is functional with or without the bottom. I’d like to include the bottom piece, but if I get a design patent, could someone copy the idea and just take out the bottom piece? What are my options? Should I get two patents or one?

A couple of things to think about here. Firstly, I want to mention design patents. Design patents cover just the shape of one specific design. In general, design patents are more narrow, much more narrow than utility patents. Utility patents protect the functionality, right? What the invention does. In your case, a cup. It’s going to hold a liquid or a solid or some sort of product or quantity of whatever it is holding. The proportions, the structure, the shape of the actual cup, maybe a handle, other base structure, or any other materials that add to the benefit, make it lighter weight – those are all the utility, functional benefits of that cup. And whether it has a bottom or not is certainly something that plays into that utility.

So, what’s nice about utility patents – if you can get one, if you can demonstrate that the functionality, the structure is new, then you can get many different embodiments covered under one claim set. What you end up owning with the utility is usually a numbered set, one to 20 written English word claims that can have a lot of different versions. You can have a cup with a handle in the top and the sides, and you not necessarily don’t necessarily need to mention that it has a base, right? Because you’d like to have the option of having bulk, and then only in the dependent claim would you decide to put a base on one of them, which would allow you to have broad protection over anyone that tries to sell that cup with or without the base.

Now going back to design patents, if all you have is the belief that all that is novel is the way that the cup looks, you don’t think there’s much having to do with utility that’s really new or functional, then you still have an option. So with design patents, there are two types of lines. If you look carefully at a design patent, some lines are solid black lines, the way the drawings are shown, and some are in dashed or hashed lines. The hash lines are areas of the design that are not being claimed, meaning they’re left ambiguous. In a way, that’s one way a very careful patent attorney that’s working with the drafter can actually get broad.

For you, if it worked out perfectly after conducting a search, we could confirm that the features of the cup were unique and we could still keep that base generic. We would put that base in dashed lines and allow the design to be basically bottomless where you would have control over and protection on everything but the base. So, that’s a little bit complicated. Hopefully, you’re able to follow along with me there. If you have additional questions, I encourage you to reach out directly to me. I’ve got my email address and a text-only phone number.

Next question on AVO – this one is on the patent application category. This one is from Cedar Rapids, Iowa, this came in four days ago.

Okay, so I filed a non-provisional patent application a week ago. How do I make an update to it? I realized a minor mistake was made. Are there ways to make an update to it, or do I want to wait for an unrelated office action to make my update? Or are there other ways to make updates sooner? Yes, there are ways to file a correction. It’s been a while since I personally have done the actual filing. There are a couple of different ways to modify an application. For the most part, as long as you are not adding new matter, and this is the big important one, as long as you’re not saying, “Oh, I forgot about this major structural or improvement or major part of the functionality that wasn’t disclosed in the original spec as filed,” you’re probably going to be okay if you’re adding just more detail to what was already discussed when you initially filed this back. You’ll probably be just fine.

But if you really did forget a major functional structure or something that wasn’t discussed at all in the original submittal, you might lose that initial filing date. You might need to submit a new specification. So, if you filed it, for purposes of June 1st, 2021, and what you forgot to add would constitute new matter, meaning it really was a big thing that you forgot and you submitted it today, you would have a new priority date of June 23rd. So, you’d run the very small risk of another inventor somewhere else in the world or here in the United States filing on that same unique invention between June 1st and June 23rd. So, that would be the risk and the issue there. So hopefully, you can get through that profiling on your own. There’s a lot of great resources on the USPTO.gov website, and of course, Bold Patents will be happy to help you with providing that additional supplemental spec and making sure that what was filed was filed properly on top of that. Please reach out, schedule a screening session if you’d like to talk with one of our attorneys.

Well, that was the three questions. I’ll bring Pete back on. Pete, do you have anything to add or any follow-up questions to some of those that we just answered?

No, JD, I wanted to say thank you for real for having me on and giving me the opportunity to talk about my invention Safe Sip. It’s always a pleasure speaking with you, and once again, thank you for all that you’ve done to help me get my invention approved. I look forward to maybe this week or next week getting the actual approval, and I’m pretty excited about that.

Right on. Thank you for joining again. Take care, Pete. Have a good day.

Thank you, JD. Take care. Bye-bye.

Bye-bye, and thank you for our audience here. Again, we’re here every week, every Wednesday, 9 a.m. Pacific, at noon on the East Coast. I’m J.D. Houvener, owner and managing partner at Bold Patents Law Firm. Have a good day, everybody. Go big, go bold.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at https://boldip.com/contact/