Michael E. Byczek, Attorney at Law

		Case Study - Patent Legal Coach - Drawings - Searches - Claims - Application - Examples - Infringement - Fees Case Study for obtaining a patent for a new toaster in 18 steps This is a step-by-step guide to obtaining a patent using a toaster as a real example. An actual patent granted to the Whirlpool Corporation on April 1, 2008 (US 7,351,939) is used as a tutorial. Michael E. Byczek was not associated with this application. The invention was selected at random as a recent example of a household appliance approved by the USPTO. These documents are available from www.uspto.gov as public records. The steps reflect data that was available in May 2008. Step 1: Describe The Idea An effective search requires a full technical description that explains the invention. This includes identifying relevant keywords, such as toaster, food, cook, heat, and electrical. Step 2: Classification Index The USPTO classifies all patents according to technical categories. There are currently over 470 classes and 150,000 unique subclasses. Look through the Index of Classification, which is over 250 pages. The government indexes common ideas. We are in luck. Toaster is an entry. The index points you to three classifications: Bread (class 99 subclass 385 written as 99/385), Automatic (99/325), and the design of a Household Unit (D07/328). For now, we are not focusing on designs (ornamental features). However, you should look to make sure that another company has not received a patent for the way your toaster looks or a similar variation. Classification Index Step 3: Manual of Classification Use the Manual of Classification to locate the classes from step 2. Here you will find the title of the primary categories and similar subclasses. Class 99 is titled “Foods and Beverages: Apparatus”. Subclass 325 is “Cooking -> Automatic Control”. Subclass 385 is “Cooking -> Slice toaster or broiler (e.g. grid types)”. Manual of Classification (Schedule for 99/325) Manual of Classification (Schedule for 99/385) 99/325 and 99/385 are probably where you will find the most relevant patents. However, the overall invention must be different from all patents, not just toasters. For example, some units use heat to create designs on the bread. Other toasters save energy or have electronic timers. Ovens might be relevant if your idea uses the same technology to distribute heat. You will have to locate these classifications as well. Step 4: Classification Definitions Each classification has extensive definitions with technical explanations of what the class covers and cross references to related categories. Under 99/324 is the technical definition of this subclass: “Apparatus adapted to receive and support food and subject it to a heat, or other energy treatment, sufficient to change a chemical or physical property of the food, the change affecting the edibility of the food”. This helps you decide which subclasses are similar to your idea. It looks like 99/324 is a safe bet for toasters. It lists a cross reference to Class 219 titled “Electrical Heating”, and specifically subclasses 385 for a heating device combined with a container, enclosure or support for material to be heated, especially subclasses 391 for an oven heating device. It turns out that toasters are also classified under 219/385. Step 5: Identify As Many Relevant Classes/Subclasses As Possible Compile a complete list of relevant classes and subclasses to begin the search. The Index, Manual, and Definitions reveals a list of categories that toaster patents may be classified. The link to this list is posted on the bottom of the page. The Whirlpool toaster is classified under: 99/327 219/386 219/521 Step 6: Perform the Search The only thing left is a brute force analysis of all patents that have the same classifications. Some will not be relevant. You will find other toasters, including microwave oven combinations, units that conserve energy, specialty controls, and those that use heat to create designs on bread. The primary classifications identified in the above steps are 99/325, 99/327, 99/385, 219/386, and 219/521. To demonstrate how daunting of a task searches may become, consider the number of potentially relevant patents under these five classifications as of early May 2008. 99/325: 399 patents have been granted since 1790 and 21 are currently pending at the USPTO. 99/327: 389 granted and 18 pending 99/385: 254 granted and 25 pending 219/386: 620 granted and 58 pending 219/521: 1,349 granted and 58 pending All of these patents, at least the titles and overview, have to be analyzed. This just covers the primary categories. There are several more potential classifications listed separately on the bottom of the page. This is the reason why patent searches are often incomplete. Step 7: Save Relevant Patents Your application must include a disclosure of relevant references. The written description should explain why your invention is different from what has been done before, such as advantages and disadvantages. Issued patents will expressly cite these references. The Whirlpool toaster cites approximately 250 relevant patents that date back to 1924. Yes, we are referring to a simple toaster that heats bread. This number does not even include patents that were analyzed and dismissed during the preliminary search. Design patents are cited for the ornamental features inherent in the Whirlpool model. Step 8: Foreign Patents If you decide to perform a search for inventions filed outside the United States, the process will be very similar to the steps above. Foreign patent offices have different classification structures. The Whirlpool toaster cites about 35 foreign patents. Step 9: Non-Patent Resources Just because an idea wasn’t patented, does not mean it was never invented. Imagine how much information is on the Internet from garage inventors, enthusiasts, hobbyists, and students. The Whirlpool toaster cites 14 non-patent references, including competitor models and advertisements on eBay and Amazon. The USPTO created search templates for each classification. There are over 1,200 templates currently available. Under the Class 99 template you will find databases that a federal examiner will rely upon. These include chemical abstracts, agriculture, biological & biomedical sciences, dissertations, engineering, technology, food (products, science, technology, markets, safety), nutrition, U.S. government sponsored research, and technical disclosures. Examiners also use Google. Step 10: Analyze Search Results The goal of this step is to make sure your invention is new and different. Don’t be discouraged if you were not the first person to invent a toaster. You can still get a patent if your idea has never been done. Search results may require you to modify the invention, or at least look for technical reasons why two patents are not the same. Step 11: Drawings You’ve heard the expression “a picture is worth a thousand words”. All patents, with very few exceptions, require at least one drawing. The purpose of this requirement is to disclose enough information that describes how the invention works and is used. The written description relies heavily upon drawings to illustrate the technical details. The Whirlpool toaster has 35 pages of drawings. These include views that illustrate perspective from all sides, exploded, partial exploded, cut-away, internal parts, embodiment, block diagram, flow chart, and numerous angles that depict exactly how the toaster works. Step 12: Claims This is perhaps the most important step of all. Regardless of a perfect search, masterpiece drawings, and a poetic description of the greatest invention since sliced bread, the claims define your rights. If just one detail is left out, a competitor could capitalize on what appears to be a faulty toaster. Imagine having to explain a toaster to a jury during an infringement lawsuit against a thief who stole your innovation. Your opponent will describe why his/her toaster is different. It will be easy if your patent is missing a crucial part or process. You can’t protect what was not disclosed. Claims drafting is a war of words. The goal is broad and comprehensive technical details. An actual claim from the Whirlpool toaster is quoted below. There are other ways to describe a toaster, but remember an idea has to be new and different. The USPTO will reject any application that merely states a method to turn soft bread into black ash. We claim “A toaster comprising: a housing; a heating chamber positioned in said housing and having a bread product receiving section; a first movable heating element assembly on a first side of said bread product receiving section and a second movable heating element assembly on a second side of said bread product receiving section; a carriage assembly in operable connection with said first and second movable heating element assemblies, said carriage being movable between a raised position and a lowered position, the carriage assembly further comprising: a lever arm pivotally attached near a rear portion of said heating chamber; a carriage plate operably attached to said lever arm adjacent a front wall of said heating chamber; and a carriage lever operably attached to said lever arm for said movement of said carriage assembly means for moving said first heating element assembly and said second heating element assembly in connection with a movement of said carriage assembly, each said means for moving said heating element assembly comprising a first linkage leader on a first end of said heating element assembly and a second linkage leader on a second end of said heating element assembly, said first and second linkage leaders being supported for combined movement by a linkage trailer, said carriage assembly being in operable engagement with at least one of said linkage leader and said linkage trailer for movement of at least one of said first and second heating element assemblies; and a control interface system for controlling a function of said toaster.” It doesn’t end here. There are six more claims that Whirlpool used to describe their new toaster. Step 13: Prepare the Application A patent application consists of several parts. The Whirlpool toaster was 56 pages. Seventeen pages represent the technical details. Thirty-five pages are used for drawings. The remainder are references, citations, inventor names, etc. Here is an excerpt from the Whirlpool toaster that explains why the invention is innovative. “The drawback of many such toasting devices is that it has not been possible to convey optimum toasting conditions on the bread product, the result of which is typically burned, over-heated, over-dried, or undercooked bread product requiring the user to run additional toasting cycles and closely monitor same for appropriate heating. Furthermore, the heating chambers and operational components of a toaster are typically housed in a single uniform toaster housing molded in the desired shape. Generally, molded toaster housings are made of a metal or durable plastic, and are limited in color and surface appearance selection. Accordingly, what is needed in the art is a toaster having optimum toasting capabilities that also provides the user with a means of changing the design and appearance of the device.” As you proceed to describe the invention, drawings will become an extremely crucial asset. For example, one part of the Whirlpool toaster states: “Referring to FIGS. 1-6 and 8-12, the toaster base 30, which is attached below the housing 20, will now be described in further detail. In a preferred embodiment, the toaster base 30 flares out slightly from the narrower top 302 of the base 30 which is in contact with the bottom 304 of the toaster body or housing 20. The base 30 provides a lower stance for the toaster 10 and may provide a larger surface area for contact with the countertop or table top on which the toaster typically sits, preventing wobble and tipping of the toaster 10.” Applications are required to discuss the preferred embodiment. Here is one excerpt from the Whirlpool toaster. “In the preferred embodiment, each pair of linkage leaders 516, 518, in combination, includes two spring returns 554, 556 adjacent thereto that bias the linkage leaders 516, 518 and therefore heating element assemblies 50, 52 or 54, 56 toward one another. Likewise, for the embodiment having a single spring return 554 described above, the single spring return 554 is provided in a central location, and in the embodiment shown, on the rear wall linkage leaders 520, 522.” Step 14: Submit the Application You can do this online or by mail. The total fee is $545 for the filing, examination, and search. There will be additional fees, which depends on various factors (exceeding page limits, supplemental documents, special requests, etc). Step 15: Correspondence with the Patent Examiner Rarely will a patent be granted on the first submission. There will probably be several back-and-forth communications between the USPTO and yourself. The examiner may find a reference that you did not disclose. He/she may want more details. The drawings may require modification. So forth and so on. Step 16: Your Application will be Published After 18 months, the USPTO is required to publish all pending applications. This means that your invention will become publicly accessible via the USPTO website. You have the option to pay additional fees to avoid publication. Step 17: Patent Approved The initial cost of obtaining the patent is $755 upon issuance. A patent lasts for 20 years, if fully renewed during this time period. If you decide to renew in 3.5 years, it will cost $490. At the end of 7.5 years, another $1,240. After 11.5 years, the last renewal fee is $2,055. Only the first $755 is required (plus the application fee of $545). You are free to let the patent expire in 3.5 years. Note: These fees are for small entities (such as individual inventors and small business). Otherwise, the costs are double. Step 18: Market Your Invention Enjoy your toast! Additional Toaster Classifications Copyright © 2008-2010. Michael E. Byczek. All Rights Reserved.