Patenting a product with multiple features.

[cavemen]

What is the name of your state (only U.S. law)? Maryland
-------------------------------------------------------

I have a new product in mind that I want to patent.

More I think about it, more variations of it i can come up with.

Also I think of different features it can be marketed with and I don't know what features the manufacturer would agree to make it with, what materials, et.c.

DO I NEED TO GET A NEW provisional PATENT FOR every variation this product can possibly have?

CAN I JUST file all the possibilities in one provisional PATENT?

Provisional patents come first, then marketing, then full patent filed with a lawyer?
What is the difference of hiring a lawyer over hiring an attorney?

So if one of multiple possibilities gets picked up by the customer, I can patent that?

Would I have some offensive rights for the remaining versions of the product if they remain as provisional patents after that 1 year period they give you to patent?

Thanks.

[divgradcurl]

Originally Posted by cavemen

What is the name of your state (only U.S. law)? Maryland
-------------------------------------------------------

I have a new product in mind that I want to patent.

More I think about it, more variations of it i can come up with.

Also I think of different features it can be marketed with and I don't know what features the manufacturer would agree to make it with, what materials, et.c.

DO I NEED TO GET A NEW provisional PATENT FOR every variation this product can possibly have?

A patent covers only a single invention. Multiple "embodiments" or versions of a single invention all go in the same patent. If the versions are actually distinct inventions instead of versions of the same invention, they will go into separate patents.

That said -- the typical practice, unless you are certain the the different versions are really standalone inventions is to dump everything into a single application. If the patent office feels that the application contains multiple inventions, they will issue what is called a restriction requirement, requiring you to pick one of the multiple inventions. Then you can file a divisional application (or multiple divisional applications) to capture the remaining inventions.

CAN I JUST file all the possibilities in one provisional PATENT?

See above.

Provisional patents come first, then marketing, then full patent filed with a lawyer?
What is the difference of hiring a lawyer over hiring an attorney?

A provisional patent is nothing but a placeholder. It provides no protections, gives you no enforceable rights. All it does is give you a filing date that you can rely on, and a year to draft up the full-blown nonprovisional application.

There is no requirement that one file a provisional patent. A provisional gives you a year to prepare a full blown application, a year to decide whether or not to incur the expense of prosecuting a full nonprovisional application, and gives you more time before the application is published on the USPTO site. That's it. No more, no less.

Also, a provisional patent needs to disclose everything that you later intend to claim, if you want to fully take advantage of the filing date of the provisional. So the provisional really needs to be a pretty complete description of the invention, and not just something you file to get your place in line.

Also, a lawyer is the same thing as an attorney! You may have meant hiring a patent agent versus a patent attorney. For the purposes of filing a patent application, either will work, and agent may be cheaper. An agent is not a lawyer, so cannot provide legal advice other than for the limited purpose of obtaining a patent.

So if one of multiple possibilities gets picked up by the customer, I can patent that?

Presumably.

Would I have some offensive rights for the remaining versions of the product if they remain as provisional patents after that 1 year period they give you to patent?

Thanks.

No. First off, a provisional patent provides no rights -- all it does is give a priority date for a later nonprovisional or PCT application. You have no enforceable rights of any kind until a patent actually issues. A provisional patent, a pending patent, none of this means anything (with one minor exception which isn't really relevant to this discussion) -- none of these grant any enforceable rights. Only an issued patent can be enforced.

If a provisional patent is not converted to a nonprovisional before the 1 year period is up (or a continuation or continuation-in-part isn't filed claiming priority to the provisional prior to the 1 year period) then the provisional ceases to exist, and in fact after the 1 year period, if you do nothing, its as if the provisional never existed at all.