Posted by Stefanie Zucker on November 18, 2010 · 1 Comment
By the end of 2003, we had received our first office action from the US patent office (USPTO), and filed an international PCT. Our attorney notified us that we would probably receive 2 more office actions before we were through and we should have our patent confirmed within 12 months – 17 on the outside.
Now for those of you beginning the patent process, I feel obligated to tell you that the words “office action” will likely become the bane of your existence. For reasons too numerous to count, it is almost unheard of that a patent will be approved when it is first submitted. But on a positive note, you’ll have a chance to improve your patent claims making your own patent stronger and more difficult to infringe. The downside is cost, so be prepared for this and budget in advance.
By April 2004, we had filed our 2nd office action response as well as a “Provisional Application” – later to become our first “Continuation in Part”. It is here that I need to pause. A Continuation in Part or CIP is typically filed to add some new feature and/or better clarify some existing feature(s) previously disclosed – what it boils down to is that you have, for all intents and purposes, open claims on file with the patent office. It makes it very difficult for someone to take your patent – look for features you didn’t claim – and then design around it.
BTW – this is not a secret…big companies everywhere have been doing this for years to protect their intellectual property from other companies that might try to “borrow” their ideas. It’s us little guys – the individual inventors – that don’t know this…but we NEED to! I have made a commitment and intend to honor it that if / when the PedREST makes it out to the market, I will take the next 6 months off to teach small inventors everywhere the mantra I repeat regularly: “Must Have CIP”.
In fact there were 2 key lessons that I’d like to share with any of you thinking about starting this process:
- First…it requires a little extra paperwork (and funds), but if possible, when you file your patent application, file it in a way that DOES NOT allow it to be published until it is granted.
- Second…at some point before your patent is finalized, search your specs for features you did not initially claim and any additional design modifications you’d like to make and FILE A CIP.
We didn’t do the first…fortunately for us, we did the second… And it saved us… Trust me when I say there will be more to come on this, but for now hopefully these 2 lessons will save you from some of the heartache my sister and I were soon to experience.
Until next time…
makes me want to drink alchoholic beverages