Forums: Discussions for entrepreneurs and small business.

I invented a new kind of camping trailer, unlike anything that is or has
been out there. I`ve been developing the concept over many years. When
I felt it matured, I filed for a patent.

I filed a design patent because in many ways, certain elements of its
design are more important to me to protect than its usability or function.
In fact, many of its functions are fairly standard and not worth patenting.
Many, but not all.

Then I began working on the prototype. Great! Here`s the problem.
Through the prototyping process, the design has changed slightly. I
know that design patents don`t hold as much water as utility patents. If I
understand correctly, variations in design are not covered under the
patent as it would be considered a new design.

Not only that, what has changed in my design is directly related to its
utility. Now I want a utility patent because the trailer works more
uniquely than what I had imagined before. And it looks a little different
than the patent drawings I submitted. The design patent is still pending
and going through the motions with my attorney.

My questions: Can I change the design of a design patent it in the middle
of the process? If not, can I stop it so I don`t have to keep paying for it?

I haven`t been too fond of my intellectual property attorney and she keeps
charging me every time I ask her a question. Not that her answers aren`t
valuable but it makes me not want to ask her these things. Any advice
would be very helpful before I take it up with her. Thanks!

-Steve

Steve,

If you are not fond of your attorney let me share with you who mine is. Sometimes a fresh perspective will help. I just started working with the below attorney. He was very informative and seems like a good guy. It may be worth a call. Let him know I sent ya.

John D. Long
Patent Counsel

Long & Chybik
1575 Delucchi Way
Suite 115
Reno, Nevada 89502 USA

V: (01) 775/827-8767 (PST)
F: (01) 775/827-0363
E: renopatents@aol.com
W: www.renopatents.com




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I believe you may ammend the original application. If you are not happy with the attorney you are working with, let her know your concerns and give her the opportunity to make it right, or transfer elsewhere.

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Founder Girls with Goals

There is certainly nothing wrong with you wanting free legal advice from your attorney.  There is also nothing wrong with your attorney wanting to earn a living by selling you her time.  Having you and her [or another attorney] agree about who will be paying for the answers to your questions should hopefully help resolve that.

I would be very careful about anybody discussing any legal problems on line.  In the event of future ligitation [though unlikely], your opponents now know your thoughts and intentions about your intellectual property and could use those against you.

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James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Cleveland, Ohio
Patents, Trademarks, Copyrights, Pharmacy Law, Litigation
[this is not legal advice - provided for discussion only]
Intellectual Property for the Individual and Small Business: Identify, Protect, Enforce, Defend.
"Fools rush in where angels fear to tread."
http://www.LindonLaw.com

My attorney seems to count every word that I utter and charge me for them.  No, just kidding.  Legal advices and other advices are just knowledge-based utterances.  If one doesn`t want to pay for legal advices, study laws.

I`m not giving legal advices because I`m not an attorney.  But I studied CFR37 enough to know that if you have money to spend, you can file as many design patents as you want.  Not that you`ll be granted those pieces of wall papers.  They offer minimum legal usefulness because they cover only appearances.  Their cost is minimum, so you may as well have a nice framed certificate for your ego.

My stance is if you`re not going to manufacture or actively pursuing licensing your "invention", don`t bother with patents, especially design patents.  Yeah, I applied for design patents in the past, for some simple "protection".  Well I never needed the protection because I didn`t manufacture the corresponding product.  The prototype is on my office desk. It`s nice but no visitor cares enough to pay for one.  Remark that I did take orders during a brief trade show, but at the time I couldn`t make them inexpensively enough to make it worth my while, so I didn`t fill the orders.


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Thank you to all for your comments thus far. To clarify, I am not adverse
to paying for legal advice and understand the value of an attorney`s
expertise. I am not out seeking free legal council nor do I think you
suspect this of me. I simply feel at a crossroads between moving forward
with the design patent and discussing it with my attorney.

James, thank you for the caution about discussing too much detail over
the internet. It is good to be reminded of such.

Innovator7, thank you for sharing your experience. My course is none
other than to bring my product to market as any other direction fails to
be an option. Making the correct decisions about legal protection is of
utmost importance, even if the right decision is to forgo a patent at all.
However I do not think that is my case.

I certainly understand that clients don`t want to be "nickeled and dimed" to death.  Nobody does.  The other side of that is that attorneys don`t want the endless "just one quick free question" interruptions that keep us from doing the work that other clients actually do pay for.  Like most things, there is a balance there and things work when neither party is going too far.

Ultimately, there is no free advice or free anything.  Either the client pays or the attorney pays by going unpaid.

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James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Cleveland, Ohio
Patents, Trademarks, Copyrights, Pharmacy Law, Litigation
[this is not legal advice - provided for discussion only]
Intellectual Property for the Individual and Small Business: Identify, Protect, Enforce, Defend.
"Fools rush in where angels fear to tread."
http://www.LindonLaw.com

Hello CampSteve.  As you now may know, the best action for getting a Design Patent is to WAIT until you actually have the final product that you will take to  market.  Then use this for the design.  It will save you dollars.

And, yes I would stop your attorney from continuing with your now changed design patent.

Stonesledge wrote, "I believe you may ammend the original application." 

That is incorrect.  You can never amend the drawings to change the design shown in a design patent application

You can amend the claims of a utility application.  And I had an examiner recently ask me to "clarify" one of the views in a design patent application.  But you can never substantively add to a patent disclosure, which for a design patent application is the drawings.  To protect the new design, you`ll need to file a new application.