This presentation provided by Joseph Donoghue of Leardon Solutions and Eric Hanscom of Intercontinental IP, describes the critical aspects of intellectual property and prototyping your product ideas. Please go to www.patents-and-prototypes.com if you wish to submit questions or watch the live web show.

1. Eric Hanscom Joe Donoghue
InterContinental IP Leardon Solutions

2. Patents
Eric Hanscom
InterContinental IP

3. Patent v. Prototype
o Prototypes: How to show that an invention works and can
be effectively mass-produced.
o Patents: How to protect an invention.

4. IP: Patents, Trademarks
& Copyrights
Patents Trademarks Copyrights
• A right to exclude • Any • The legal right
others from name, symbol, figur granted to an
manufacturing, selli e, letter, word, or author, composer, pla
ng, or using your mark adopted and ywright, publisher, or
invention for a used by a distributor to
number of years. manufacturer or exclusive
merchant in order publication, productio
to designate his or n, sale, or distribution
her goods or of a
services and to literary, musical, dra
distinguish them matic, or artistic
from those work.

5. Patents: Provisional, Utility
and Design
Type of Average time Expect to pay Practical
Length of Renew-
Intellectual Protects until issue or (attorney fees examples in
protection able?
Property final rejection? + costs)* business
20 years from
Devices, substances,
Patent (Utility) How something works 3 years $7,000 - 50,000 date of filing No
business methods.
application*
1 year grace period to
Patent 1 year "grace Devices, substances,
file a utility patent 1 year $3,000 - $6,000 No
(Provisional) period" business methods.
application
Patent (US 14 years from Unique shapes of
How something looks 1 year $2,000 No
Design) date of issue products

6. Barriers to getting a patent
•You must invent or discover something new and useful
•Only the following subject matter can be patented:
•Processes (business methods)
Can A Patent •Manufactures (products)
Protect Your Idea?
•Compositions of matter (substances)
(35 U.S.C §101)
•Is there a patent, published paper (including published patent applications), or other public disclosure?
•Did it happen before your invention date or more than 1 year before the filing of the application?
Did Someone Else •This is true even if you had no knowledge of the other public disclosure
Beat You To It?
(35 U.S.C. §102)
•No patent if your invention is an “obvious improvement” over someone else’s public disclosure
•Usually the largest hurdle in obtaining a patent
Is Your Invention •This is true even if you had no knowledge of the other public disclosure
Truly Unique?
(35 U.S.C. §103)

7. Prior Art Searches: is it worth
trying for a utility patent?
Prior Art Search Analyze the Results
• Looks for issued • Should I apply for a utility
patents, published patent patent?
applications, and products • Business decision based
on the marketplace that are upon prior art references
similar to yours found and economic benefit
• Everything cannot be found of obtaining (or at least filing
• Use a Prior Art Searching for) a patent
company that ONLY does
prior art searches; Do NOT
use invention submission
companies who will give you
a “package deal” that
includes a prior art search
and a patent application

8. Patent Application Process
File Allowance
Issued
Application Patent
Renewal
Fees (Utility
Rejection Response
/Office (written, phone
Patents
Action call, visit only)
USPTO)

9. Parts of a Utility Patent
Background of Detailed
Abstract Drawings Claims
the Invention Description
• Summary of • A simple • This section • This is the
150 words or introduction to describes section that
Less what your exactly how protects your
invention is. the invention ideas
Describes the works by • It lays out the
general field of referring to individual
the the drawings. elements of
invention, and Describes in your idea –
sets up why detail why basically what
the prior art your invention you “claim” as
fails to solve is not a mere your invention.
the problem “obvious
that your improvement”
invention over existing
fixes. patented
inventions.

10. Infringement: Is the
patent any good?
Your Invention
Patent 1: Narrow Claims Patent 2: Broad Claims
• A Laptop that
includes Claim 1: A Laptop
A Scanner A Scanner
Comprising
• A Scanner
• A Copier
• A Fax Claim 2: A Laptop
A Copier A Copier
Comprising
• A Printer Claim 1: A Laptop
Comprising
Claim 3: A Laptop
A Fax A Fax
Comprising
Claim 4: A Laptop
A Printer A Printer
Comprising
Francoise’s Computer Center: In
Hing Wong: A Hong Kong
the U.S., he builds a laptop
company importing into the U.S. a
computer that contains a fax. He
laptop computer with a
does not sell it in the U.S., but
photocopier and a scanner built
rather exports all of the laptops to
into it.
France.

11. Prototypes
Joe Donoghue
Leardon Solutions

12. Why a Prototype? TM
o Use for obtaining intellectual property
o Validation and feasibility of idea
o Show to investors for raising money
o Work out the design and manufacturing details
o Validate functionality and qualify design
o Feedback from distributors, buyers, and retailers
o Obtain customer feedback from beta units

13. Product Development
Life Cycle
Production Prototype
Design
Prototype
Proof-of-Concept
Prototype

14. Three Types of Prototypes
TM
o Proof-of-Concept Prototype
o Design Prototype
o Production Prototype

15. Proof-of-Concept Prototype
TM
Prototype that bears little resemblance
to the final product and is used to
validate of the idea and prove
feasibility.

16. Making a
Proof-of-Concept Prototype
TM
Use whatever you may
have available to create a
Proof-of-Concept Prototype
but call in the pros if
necessary.

17. Design Prototype TM
Prototype that has the functional,
engineering, and aesthetic properties
of the final product and is produced
using quick fabrication methods
rather than high volume methods.

18. Making a
Design Prototype
TM
Rapid Prototyping Machining
Form testing with for 1 to 2 parts Form, fit, function testing for 1 to 20 parts
Polyurethane Casting
Form, fit, function testing for 15 to 100 parts

19. Production Prototype TM
Prototype that is fabricated
using the final design and
manufacturing methods.

20. Making a
Production Prototype
TM
It takes manufacturing
tools and machines to
produce a production
prototype.

21. Eric Hanscom, Managing Attorney
InterContinental IP
www.iciplaw.com
eric@iciplaw.com
Joe Donoghue, President & CEO
Leardon Solutions
www.leardon.com
joseph.donoghue@leardon.com