By Tom Ballard, Chief Alliance Officer, PYA
A local Patent Attorney continued the theme of helping inventors manage their costs during the second of four workshops at Saturday’s TNInventcon, a joint effort of the Tennessee Inventors Association and the Blount County Public Library.
Tom Kulaga of the Kulaga Law Office PLLC started his presentation with a set of defining questions: Do you need a patent? Is it necessary for your business strategy?
“You need to look at the cost,” he told the attendees. “A stronger patent is more expensive. Is there going to be a return? Is there a timing consideration?”
Kulaga also spent time discussing the differences between utility patents, whether provisional or non-provisional, and design patents.
“Most inventors are looking at a utility patent, but you (also) need to look at a design patent,” he said. To illustrate the difference between the two, Kulaga said Nike has both types for its shoes. The utility patent protects the functional aspect of an invention, while the design patent protects the aesthetic appearance.
Noting that a design patent can cost anywhere between $3,500 and $6,500 compared to a utility patent with a cost of $10,000 to $20,000, Kulaga said the former is stronger in terms of addressing counterfeiting.
“Design patents are (also) very economical,” he said. Unlike utility patents that have renewal costs, Kulaga said that “once you have it (design patent), nothing more is required.”
He’s also a fan of provisional patents, particularly with recent changes in patent law.
“It makes more sense now to go with a provisional,” Kulaga said. It allows the inventor to test the waters and continue to develop the technology while setting the all-important priority date bar.