I want to sale my new invention/product in stores, but I'm not sure where to start. Do I need a lawyer for patent purposes? Do I have to become an LLC or corporation?
Let me begin by stating that the following is not intended to be specific legal advice and in no way implies that an attorney-client relationship has been formed. This is general, non-specific advice in a public Q&A Forum. I am licensed to practice law in the State of Georgia and before the United States Patent and Trademark Office. It is recommended that you seek legal advice from a licensed attorney in your State that has knowledge of the unique, specific facts of your legal problem.
For simplicity, I will paraphrase your questions into 3 components:
(1) Do I need a lawyer for patent purposes? Absolutely not. As an inventor, you are able to file and prosecute a patent application with the United States Patent and Trademark Office ("USPTO"). The USPTO has many resources, such as the Inventors Assistance Center ("IAC") at www.uspto.gov/inventors/iac/index.jsp, that will help you navigate the patent application/filing/prosecution/appeals process. I will, however, caution you that obtaining a patent capable of withstanding the rigors of potential future litigation most likely will require the specialized knowledge and experience of a patent agent or registered patent attorney (Note: ONLY a patent agent or registered patent attorney may represent an inventor before the USPTO; these are skilled patent professionals who have passed a highly challenging examination that focuses on the specific mechanics/procedure/timing of how to file/prosecute a patent application through issuance and beyond). While you do not NEED a patent agent or registered patent attorney to file/prosecute a patent application, many -- myself included -- would argue that any invention "worth" patenting SHOULD have the benefit of a trained patent professional to help guide you through the maze that begins with the filing of the patent application, carries on through the prosecution of the patent application up to and including the issuance of the U.S. patent, and even beyond issuance (e.g., licensing, assignment, infringement). We have not even discussed whether you plan to file a patent application outside of the United States. Foreign filings (e.g., Europe, Japan) present unique challenges and requirements that are beyond the scope of this Q&A session.
(2) What steps should I take to fully protect the legal rights in my invention BEFORE I begin selling it or offering it for sale? The USPTO has something called the "on-sale" bar that could cause you to permanently lose your rights to protect your invention (See www.uspto.gov/web/offices/pac/mpep/documents/21...). In a nutshell, the on-sale bar requires that an inventor file a patent application within one year of placing the invention "on sale" within U.S.C. section 102(b). The on-sale bar precludes a patent on an invention if "the invention was ... on sale in this country, more than one year prior to the date of the application for patent in the United States." The tricky part is that there is a lot of gray area re: what activities trigger the on-sale bar and what activities are safe. This is part of the "maze" that I referenced in Question #1 above. A patent professional could help navigate your application through, among other hurdles, the thicket of assessing the on-sale bar to your specific, unique facts.
(3) Do I need to incorporate (or form a business entity of any sort) prior to filing a patent application? Absolutely not. Forming a business entity/corporation as an individual inventor has no connection/relevance to the actual filing/prosecution of a patent application. Ultimately, you may want to consider the advantages of forming a business entity/corporation if you plan to market/sell your invention in the open market. This is something that you SHOULD discuss with your attorney and/or tax advisor.
I hope that this information has been helpful. As mentioned above, I am a registered patent attorney and licensed in the State of Georgia.
Patents give you the right to stop others from making, using, and selling.
Going into a business of selling the product involves some risk.
Most people get an entity to protect their assets from lawsuits.
The entity may get commercial liability insurance to protect the entity.
The entity may get an advertising clause including copyright and trademark insurance to protect it from picking bad names and copying photos inadvertently.
Then, the entity may want defensive patent insurance to protect against other's patents
The inventor may want offensive patent insurance to financially assist with other's infringement.
You should start by finishing the invention. I have an article on critical product development which is linked below.
It all starts with FINISHING the INVENTION. This is the best way to know all the price points at different production levels.
My career has been built around being of help to startups.
My masters in electrical engineering and masters in chemical engineering has allowed me to bring out the DETAILS of mechanical, chemical and electrical inventions.
My second law degree in taxation and MBA has enabled me to become knowledgeable and skilled in Intellectual Property Taxation and operations to help clients evaluate manufacturing, non-exclusive licensing, exclusive licensing and licensing that the IRS will recognize as sale treatment to yield instant capital gains.
Feel free to peruse the articles in my library: http://patentax.com/library/
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The first thing you should do is sit down with an actual patent lawyer for a free consultation on whether your invention is subject to patent protection.
Then you should focus on trying to bring your invention to market. I have helped so many individual inventors seek patent protection for an invention they weren't yet selling that I lost count long ago. But one thing is always the same: a patent will not sell your products. Actually making and promoting products is the only real way to make money on your invention.
My advice would be to focus your efforts on making a product more than getting a patent.
You may want to consult a patent attorney before you begin marketing (offering for sale or selling) your invention. At the very least, you may want to use a non-disclosure agreement (NDA) when discussing your invention with others such as potential investors, manufactures, etc.
One of the options available to an inventor is to apply for a provisional patent application, which would give you a 12-month period to find the investors for your business and would allow to write "patent pending" on your marketing products upon filing. Then you can apply for a non-provisional patent application and claim the benefit of filing a provisional application (has to be done within 12 months of the provisional filing).
I disagree with (1) and (2) of the answer by Attorney Pearson. You absolutely do need a patent lawyer for patent purposes and the USPTO does not have an "on sale" bar.
As to (1), It is correct that you are not LEGALLY REQUIRED to have one, but you nevertheless NEED one. It is bad advice to tell an inventor that there is no NEED to contact a patent attorney, since that may delay the initial visit to a patent attorney until it is too late for help. A patent application is one of the most complex and sophisticated legal documents and it is extremely foolish to try it on your own. In fact, it is almost always a deadly mistake. One mistaken word can invalidate your coverage or render it meaningless. A novice simply cannot reliably expect to draft patent claims nor to interview a patent examiner confidently with optimum results. Only if you absolutely, positively have no choice should you ever file your own application and you NEED to see a patent attorney as early in the process as you can so you can receive the advice that may prevent a fatal mistake that might otherwise cost you your patent rights.
On (2), the USPTO does not have an on sale bar, the patent law does, and the USPTO does not even check for it unless it is specifically brought up in a special proceeding, the Courts do. The USPTO examines documents (see MPEP 904 "The examiner, after having obtained a thorough understanding of the invention disclosed and claimed in the nonprovisional application, then searches the prior art as disclosed in patents and other published documents, i.e., nonpatent literature (NPL).") This is because the applicant, not the USPTO, has the documents associated with sales and is cannot readily determine whether a possible sale meets the conditions. That is nearly always reserved for court litigation should the patent be asserted against an alleged infringer. However, a sale is often accompanied by a document and that can be even more damaging, particularly with the upcoming implementation of first-to-file where a disclosure might trigger someone else to rush to the USPTO before you.The USPTO is not even equipped to determine the issue of "on sale" absent a special proceeding with specific information of such a sale. However, the advice that a patent attorney can help you avoid that "on sale" bar is quite helpful and correct, PROVIDED you see that attorney at the earliest time. This is only one of many traps for the unwary novice who attempts to "patent it yourself". Use of limiting language is another, failure to cite known art is yet another, getting intimidated by or infuriated with the patent examiner is still another. Almost all patent attorneys offer a free initial consultation because patent attorneys know how deadly early mistakes by an inventor can be.
In short, you NEED a patent attorney and anyone who says or thinks otherwise is making a BIG MISTAKE, and one that is usually fatal to the patent or fatal to any meaningful coverage. And needless mistakes by an inventor trying to do without an attorney often cannot ever be overcome later even by the best patent attorney. An "on-sale bar" is just one such fatal mistake, but particularly costly since it will generally not come up until infringement occurs and the patent is sought to be enforced and the alleged infringer investigates the history of the inventor's development and sale of the invention.
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