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How to Patent a New Product

In the early stages of coming up with the idea of the DrawBag, I needed to learn about the US patent process. This included initial research into prior patents and then the drafting of both a provisional application to patent and a later design patent.

Although having read alot of useful information available online, I ultimately decided to pay for consultation as it would my first time to draft and submit a patent application. To find a suitable consultant, I used the freelancer website Upwork and eventually settled on the very generous and professional Brad Muise, Ph.d.

As part of a series of blog interviews with individuals who helped me learn and launch the DrawBag in 2017, I recently messaged back and forth with Brad to talk about patents and the process we went through during the summer of 2017.


John: Hey Brad. So how long have you been freelancing on Upwork, and what services do you provide?

Brad: I have been freelancing on Upwork for several years now. I enjoy it very much. I work with inventors like yourself everyday and assist them through the innovation trail.  I do everything from concept sketches, 3D computer modeling, prototype development, 3D printing, CNC machining, patents, sell sheets and more.

John: What’s your experience been like using Upwork?

Brad: Upwork has been great. At first I thought it was not viable, but over time the work started to grow and as my rating improved the work become more available and more exciting. It seems to be the future of work so I feel very fortunate to be on the platform now.

John: So you helped me in the very early stages of the DrawBag, before I’d done a first manufacturing run or even fully revised the design. I think I had a first prototype done back then. What did you think of my design when I approached you?

Brad: Your skill set tends to be above most of my clients who have no patent experience. You seem to be very artistic and captured your idea well because you can draw. Plus you were very focused in how you perceived your idea. Which was also a great idea by the way.

John: Thanks! I remember you being super-supportive during those early days as I was still figuring it all out. Like me in  those early days, there may be others who are confused about the differences between a design, utility, and provisional application to patent. Can you explain those briefly?

Brad: There are a lot of perceptions surrounding patents. The simple story is that the utility patent protects functions and the design patent protects the external shape. Provisional patents are not exactly protection, rather they are a place holder for the utility patent. Once the utility is approved it gets backdated to the provisional. Its my understanding that no one goes to do battle in court with provisional, but having the ‘patent pending’ status it provides can intimidate copy cats until the utility is completed.

John: What was the most interest patent you worked on?

Brad: I am not allowed to discuss my patents but the most interesting ones tend to involve drones and internet of things. There is a great deal going on in these arenas. It’s always interesting to gain insights into the future and working with inventors is kind of like a crystal ball.

John: Still speaking generally, what about some really odd ones you’ve come across?

Brad: Military inventions are difficult to get through the patent office. Not sure why this is, but Im sure there are more stringent issues related to these that we may not even be aware of.

John: Although you aren’t a patent lawyer, you have a lot of experience researching and writing patents. How did that happen, and what advice would you give to a small startup who needs to consider the patent process but doesn’t have a lot of money to put into a patent lawyer for research or writing?

Brad: Anyone can write and submit a patent. The USPTO states it directly on their website. For simple inventions I always encourage my clients to submit the documents themselves. The provisional patents are much simpler than the utility patents and writing a summary of the invention according to the rules setup by the USPTO should be within everyone’s reach. If the invention is very complex and someone is seeking a utility patent, its best to have someone with experience involved. The lexicon of the utility patent can be very confusing and the claims language can be down right weird. But its all written in a very defensive manner so it tends to break all the rules of grammar and sentence structure you learned in school.

John: Yeah, I remember that when I read one of your first drafts of a patent for me. I was like, “Does this guy even know how to write?? This sounds bonkers in several places.” I guess Grammarly can’t really be applied to patent writing at this stage.

Let’s talk about patent figures (drawings). How good of an artist does one need to be to submit these? Would you recommend a small startup pay for a patent artist to do these?

Patent Drawing For The 1906 Wright Brothers Flying Machine.

Brad: The figures do need to be clear. The USPTO will reject any figures with shading and colors so it is good to find someone with CAD engineering experience. I was a CAD operator when I was young so I’m fortunate to be able to write well and generate good figures.

John: As I learned more about the patent process, as well as protection of patents, I realized it may not always be in one’s best interest to patent a design. Countering potential infringement is not necessarily easy, and what specifically is protected by a patent is also up for interpretation by the USPTO and according to how the patent is written. Do you have any “rules of thumb” about how to determine if a patent is right for a product or not?

Brad: This is a very good question. Not everything needs a patent. Certainly conducting a search of prior patents is the least you should do before you jump into an invention so as not to step on anyone’s toes. The patent office does not protect anyone per se, it’s merely a library of sorts – protection is your attorney’s job. So if you see another patent with your idea and are looking for a battle, then you need to have deep pockets. Patentability is about risk – there is always overlap between patents, and how much overlap you find acceptable with your invention can only be answered by you as the inventor. It’s always about risk.

John: If there’s someone looking to patent an idea and they would like to get in touch with you for support, what’s the best way?

Brad: They can contact me on Upwork here.

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