Patents & Intellectual Property Explained

Picture this: You’ve thought of a really cool invention – perhaps a hat that simultaneously cuts your hair. You want to make sure that you own the idea and no one else can go to market with (and potentially profit from) Dome Clips 3000.

The following questions naturally arise:

Should you apply for a patent?
How do you do it?
Do you need a lawyer?

As with most things legal and bureaucratic, it’s complicated. So I spoke with Intellectual Property Lawyer Barbara Mandell (full transparency: who just so happens to be my mother) to help us unpack everything we need to know about protecting your next great idea.

Thanks so much for doing this, Mom. I guess the first question is when would someone look into patenting an idea as opposed to trademarking or copyrighting it?

Sure. Ok, a patent is a legal right to exclude others from copying your invention. To get a patent, you have to have something that's novel and useful.

Novel and useful? That seems subjective.

Well yes and no. Novel just means that it doesn’t already exist and useful, I guess could be subjective, but the point is that it serves a purpose. It’s a thing people use. It’s not a poem.

Ok, I’m sure some people find poems very useful.

If it was guaranteed to put you to sleep, maybe you could patent it, but no, I don’t think so. You patent objects or methods. And if you get a patent, you get the exclusive right to use it for a set period of time. This is different from a trademark which tells you the source of a piece of intellectual property – a source designator.

And a copyright?

That’s what you would do for your poem. Copyrights are more for ideas – books, plays, music, etc.

Got it. So if I have my novel and useful idea and decide I should apply for a patent, what should my first step be?

Talk to a patent lawyer.

Well, what are they going to do?

Their first step will be researching to make sure the field is clear for you. You don't want to go through the hassle of filing a patent application, which could be expensive, until you're assured that there's no prior art. The quickest way to lose a patent application is for the patent examiner to come up with what's known as prior art, which is that someone had a similar idea and filed it before you. And you have to think through the different uses for an object. Give me an example of an invention.

Uhh, a hat that cuts your hair.

A hat that cuts your hair. Ok, so maybe someone else patented a helmet you put on a dog to groom, that would be considered prior art.

What are some other reasons a patent might be rejected?

Just if it's not novel or it's not useful. If your hair cutting hat device doesn't really work.

But if I think I’m ready to apply, what do I do? Go online?

Sure, you can file online, but you need to get a patent lawyer involved.

You’re really repping lawyers here. Is this not something someone could do on their own?

No, it’s very challenging and very complicated. It takes a team of people to successfully file a patent.

Besides the lawyer, who is on this team?

Depends on the invention, but at the very least engineers, draftsmen, illustrators… You have to draft the claims of the patent. The patent is not just, I have a car with four wheels and a steering wheel. You have to break down what your invention is into multiple details and give drawings representing each of the facets of it. If you look at a patent, there's a lot of verbiage in there and a lot of illustrations. It's not easy.

So then you probably need someone who knows exactly how to break down the invention for the application.

That’s the patent lawyer.

Ok, but if I’m not ready to start that whole process, is there something I can do in the meantime?

You could submit a provisional application instead. A provisional application gives you protection for a year, but you only lay out your invention in the barest terms. It buys you time – gives you a year to think through more of the details and prepare for your full application. But you want to make sure you have enough information in there because you can't really change anything when you file for the full patent. You can fill in the details, but you can’t change the outline.

There's also something called a design patent. If your invention has a distinct appearance, maybe you just want to patent the design. It's not for use or function, it's just the design. So for your hat, maybe it's a weird looking hat and that’s what you patent.

My imaginary hat isn’t weird looking, but I get your point. Now what if your patent application is rejected? Can you reapply?

No, but you can apply to reopen the case and continue the effort. It's called a request to continue prosecution. That’s if you think you’ve been wrongfully rejected.

And I’m assuming you’d want to involve a lawyer in that case?

Yes.

Fair to say that your top piece of advice for filing a patent is to engage with a patent lawyer?