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Once I had a rough prototype, I felt ready to have a conversation with a patent attorney, as I was able to show my idea rather than just explain it. I selected two patent attorneys who are close to my home to interview.  Interestingly, when I met attorney #1, I remembered meeting him several years ago with regards to another idea. He quickly shot down my previous idea as not patentable, so when he responded favorably to this one, I was thrilled. I learned the type of patent I would be seeking is a utility patent. The slide below is from a presentation prepared by the United States Patent Office (USPTO).


There are basically five stages on the path to a utility patent:

  1. patentability search and opinion
  2. provisional patent filing (optional)
  3. utility patent drafting and filing
  4. patent procurement which typically involves receiving and responding to Office Actions issued by the United States Patent Office (USPTO)
  5. foreign filing (optional)

 My patentability search and opinion cost $1,000 and had an estimated completion time of three to four weeks. I had the attorney’s opinion and search results via email in just over four weeks. I got the results on a Friday in July and was over the moon that the results suggested no infringement and the attorney’s opinion was fair to very good, on different aspects, that receiving a patent would ultimately be successful. I had told myself firmly, “Don’t get too emotionally attached to this idea.”  I pre-decided a negative report regarding infringement or lack of patentability would create a no-go situation, before spending too much money.

I approved proceeding on the second stage the same day. It was killing me to not be able to talk freely about what I was doing. The provisional patent process takes four to eight weeks to complete, so I needed to keep a lid on it for another agonizingly long period of time. This stage, filing a provisional patent, is optional as it can be skipped if the filer wishes to immediately draft and file a final version of the application.

A provisional patent is essentially a placeholder. It officially registers your idea with the USPTO, but the patent office does not do anything with a provisional patent application.  This gives the filer (in this case me) one year to create and test prototypes and finalize the final patent application. The provisional patent application must be matured into non-provisional patent application within one year of filing or it will go abandoned and the patent procurement stage will never begin at the USPTO. Proceeding with stage two required a payment of $1,900. I happened to be visiting my parents on this happy Friday, so after this large expenditure, my dad paid for dinner.  Thanks mom and dad!

Gem of Wisdom:  Perform a critical evaluation whether you should proceed with your invention at various stages of the prototyping phase. Be careful about getting too emotionally attached to an idea.

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