The process of applying for a patent is complex, confusing, and involves a lot of paperwork. So it’s not a big surprise that inventors botch their patent applications all the time. We have previously written at length about common patent mistakes, such as forgetting to include appropriate drawings, not paying fees, accidentally disclosing the patent prematurely, and so on.
The number of mistakes that I see in my practice as a Sacramento patent lawyer is nearly endless in their quantity and variety. If you don’t know exactly what you’re doing when you’re preparing your patent application, you need the assistance of a patent lawyer. The Law Office of Michael O’Brien can help. To request an appointment, give us a call at 916-760-8265, or send us a message using our contact form.
Given the prevalence of egregious patent application mistakes, it’s long past time for me to revisit this topic in our blog. Today, I’ll be kicking off a new series of posts on frequent patent mistakes with a discussion of a very simple yet potentially devastating mistake that is made all the time by inventors who don’t know any better…
Never title your patent with a phrase you intend to trademark.
For the sake of simplicity if nothing else, most inventors want to assign the same title to their application they intend to eventually use to market the product, and will likely trademark down the road. It’s just a name you’re using to title a legal form, what’s the harm?
Patent application names are considered by the United States to be “descriptive” by their very nature. When you use a phrase as the title of your patent application, you are explicitly admitting that the phrase is descriptive in nature.
Here’s the problem with that:
You can’t trademark descriptive phrases. Or at least, it’s more difficult to secure a trademark for a descriptive phrase.
“Google” is a trademark. A rather famous one, obviously. You likely use it as a proper noun or a verb (“I googled some great recipes…”) every day. But is there anything about the word “Google” that describes the nature of the online service that owns the trademark? Obviously not. Thus, it was likely quite easy for the owners of Google to secure a trademark for their business name.
However, descriptive phrases like “high quality,” “The Piano Store,” “ice cold ice cream,” and so on are phrases that are impossible to trademark, or prohibitively expensive to trademark. This is because they are obvious and relatively uncreative in how they relate to the product or service which they represent. Such trademarks aren’t granted because, as with patents, the U.S. Government recognizes that for regular commerce to be carried out successfully, it is imperative that individuals and corporations not be granted exclusive ownership over basic concepts or phrases.
Suppose that a couple hundred years ago, the USPTO had granted trademarks willy-nilly for obvious phrases: “store,” “best,” “buy now,” “tasty,” “chocolate bar,” and so on. By the time the present day rolled around, it would be nearly impossible to develop and market anything without infringing on an endless number of trademarks. The English language would be a legal minefield for would-be entrepreneurs.
Consequently, the USPTO disallows the granting of descriptive trademarks. This means that when you use a phrase you intend to trademark later on as the title of your patent application—and admitted its descriptive nature—you have permanently put that phrase into the public domain. You will never be able to trademark it, which means that when you start to market your invention, your competitors will be able to use that phrase on their competing products.
Instead, the USPTO will allow you to put a descriptive mark on the supplemental register and give you a registration number for that mark. It is very unlikely that this registered mark will actually be enforceable, as the registration for the most part simply prevents others from registering the mark. I actually consider this approach to be very dangerous, as these registrations are often used as fake rights that give the illusion of real rights.
This is just one of many serious mistakes that inventors often make when applying for a patent. If you are serious about generating a profit from your patent, then you need the assistance of a patent lawyer to ensure that you protect your financial interests. The Law Office of Michael O’Brien has helped hundreds of individuals and corporations secure and protect patents, trademarks, and other intellectual property protections. To learn more about how we can help you, give us a call at 916-760-8265, or request an appointment using our online contact form.