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I read something earlier that discussed a scenario something might be created under.

Here is what I am trying to understand. If I created lets say a "vacuum cleaner" and rather than opening on the top or side to get to the bag, I created it so that it would open at the BOTTOM!

Would that be a significant enough of a difference to qualify? Or is it ALSO that I did something to MY version that others weren't doing?

Obviously my "idea" isn't a "vacuum cleaner", I am simply trying to understand whether its worth persuing if there are other "variations" out there.

And how do CLAIMS fit it the whole process? You cant make the SAME claim as someone else? Or you have to make claims they DON'T?

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In order to obtain a patent, your invention must demonstrate novelty, usefulness, and non-obviousness. Novelty means the invention is new and not known to the public. Useful means there must be some utility. Non-obvious means someone skilled in the field wouldn't find your invention straightforward or within the state-of-the-art.

As to your scenario, I'm not sure just having your vacuum cleaner bag access open at the bottom would be considered sufficiently novel or non-obvious. One thing the patent examiner will do is search all previous patents and applications for documents related to your invention. If there is some unique advantage to your scheme, then you might convince the examiner, but I think in this case that isn't likely. In any case, if there is no advantage to your invention, then there isn't a strong case for pursuing a patent since no one will likely want to use your idea anyway.

As for claims, these are what define precisely what is protected. Writing claims is serious legal work where the exact language and legal precedent are important. In my opinion, you should always work with an actually patent attorney or agent when drafting and prosecuting a patent. A poorly drafted patent may provide little if any actual value.

  • What are your thoughts on a Design patent for the "opening on the bottom" re: vacuum cleaner scenario? – DukeZhou Jan 17 '18 at 22:06
  • @DukeZhou Interesting question. I've never pursued a design patent so I'm less familiar with them. My understanding is they are more used where the particular shape is important such as the iconic Coke bottle. The question seemed clearly related to a utility patent. – Eric Shain Jan 17 '18 at 23:08
  • Great sum up, the biggest trap is that the idea "should" be something of potential interest/usefulness, otherwise there is no point in having a patent. – chempatent1981 Jan 18 '18 at 18:46
  • @chempatent1981 In my limited experience, the threshold for "potential interest/usefulness" of millions of patented inventions is quite low and many inventors blindly devoted time and money to them anyway. – Upnorth Jan 22 '18 at 17:26
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Regarding claims, having claims that are "too broad" can also impact viability. Thus the concept of "limiting the claims" can be very important.

There is a somewhat recent trend, via pharma, that new uses for an existing method are patent eligible, which demonstrates the principle of limiting claims. (i.e. not seeking patent for the method in general, as applicable to any use, but claiming a specific use.)

See: Understanding Patent Claims and 35 U.S. Code § 112

Eligibility may also depend on the "field of the invention" 37 CFR 1.71 . [See also: Understanding the Specification of the Invention]

For instance, certain types of methods may be deemed too "abstract" by the patent reviewer, as in the case of some algorithmic patents. If the invention is for a physical device, either mechanical or computer hardware, the poorly defined term "abstract" won't likely be an issue.

Also understand that in patent law, nothing is certain, and the scope of what constitutes patent eligible subject matter is always changing.


Provisional Patent Applications

If you believe in your invention, but aren't quite ready to shell our a lot of money, definitely pursue a provisional patent. This gives you a year of "priority", and does not require public disclosure. You can use this to protect the IP if you plan on "shopping it" to investors, who are unlikely to sign non-disclosure agreements.

Many recommend attorneys, even for provisionals, but not all attorneys share this view. So long as the provisional is clearly written, supported by clear drawings and sufficiently explains how to make and use the invention, it can protect temporarily whatever is covered, so long as a formal patent application is subsequently submitted, and ultimately receives a grant. Provisional patent applications also carry the right to use "patent pending".

The key for provisionals is to be exhaustive. Anything you omit will not receive protection, and, even if subsequently filed, will not have the the same priority (date of submission of the original document).

  • @GeorgeWhite thanks for the edit! (I need to be more precise about "terms of art";) – DukeZhou Jan 18 '18 at 20:31
  • Just to be clear, for the uninitiated readers, a "provisional" is not a patent of any kind and, by itself, gives its owner absolutely no legal right to prevent others from making, using, selling or importing identical inventions. The term "provisional patent" is nonsensical. – Upnorth Jan 22 '18 at 17:29
  • @Upnorth it's true. "Provisional patent" (without the qualifier "application") is a misnomer, used imprecisely in general speech. What a provisional application offers is priority, if a subsequent "non-provisional" application is submitted, and that application receives a grant. But, provisional applications do allow the use of "Patent Pending". – DukeZhou Jan 22 '18 at 21:24

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