We’d love to hear your ideas. Contact us for a free conversation.

It depends on the timing. Under today’s U.S. patent law (America Invents Act, 2013), the system is first-to-file, not first-to-invent.

• If B filed before 2013, the “first-to-invent” rule applies, and A could win if A can prove earlier invention.
• If B and A both file after 2013, the “first-to-file” rule applies, and B wins (assuming B’s application meets all patentability requirements).

Exception – Derivation Proceedings: If Inventor B files first but actually derived (stole or copied) the invention from Inventor A, then A can challenge B’s application through a derivation proceeding at the USPTO. To win, A must provide evidence (e.g., lab notebooks, emails, drafts) showing that B’s filing was not original but taken from A.

There are three key factors:
a. Claims. The most important thing is a strong claims define the boundaries of the patent. A good patent has claims broad enough to cover competitors but narrow enough to survive challenges.
b. Specification. The second is that the patent must clearly teach how to make and use the invention (enablement). If the description is vague, incomplete, or claims more than what was invented, the patent is weak.
c. Defensibility. The third is that a strong patent can withstand attacks in court or USPTO challenges (such as IPRs). If prior art can easily invalidate it, the patent is not strong.

No. Ford’s claim requires four wheels. Davidson’s motorcycle has only two wheels. Because the claims do not overlap, Davidson’s patent does not infringe Ford’s patent. Both Ford and Davidson can practice their inventions.

Yes. Ford’s Model T includes two wheels (plus two more), so it still falls within Davidson’s claim.

What happens then? Courts rarely order destruction of infringing products. Instead, the parties typically negotiate a licensing agreement, where the losing party pays royalties. A modern parallel occurred in 2018, when Samsung copied Apple’s iPhone and ultimately settled through a licensing deal.

Yes. Example: A unicycle patent claiming an engine, a transmission, and one wheel. If this claim were allowed, both Ford and Davidson would infringe the unicycle patent. This shows why strong patents often use broader claims—sometimes, less is more.

No. Infringement is determined only by the claims, not by the specification or examples. The specification supports the claims but does not expand them.

However, there are strategies. The USPTO has a “Track One” priority examination program where, by paying an additional fee, you can receive a decision in about one year instead of 3–5 years. For example, when Keurig introduced a new brewer, my specification covered the brewer but my claims did not. Because I still had the chance, I filed a new application with claims covering Keurig’s brewer and used Track One to expedite the process. With this strong patent, we reached a favorable settlement.

Not exactly. A patent gives you the right to exclude others, not the right to practice your invention.  

-Example 1 (Question 3): Ford’s four-wheel car patent cannot stop Davidson’s two-wheel motorcycle patent. Both can practice their inventions because neither infringes on the other.

-Example 2 (Question 4): Ford’s four-wheel patent infringes Davidson’s earlier two-wheel patent. Ford cannot practice his invention unless he either (1) redesigns his car (e.g., replacing the transmission with a chain drive) or (2) negotiates a licensing agreement with Davidson.

It depends on your circumstances.

Provisional Patent Applications:

-Cheaper and faster to prepare than utility patents.

-Lock in an early filing date (important under the current first-to-file system). Filing before disclosing to suppliers, manufacturers, or foreign partners (like in China) is often critical. A strong Non-Disclosure Agreement (NDA) is also recommended.

-Useful for startups that pivot often. Filing a provisional is a cost-effective way to protect new iterations without paying for a full utility application each time.

Example: My patent 9,144,343 relied on four different provisional applications. You can see this in the “Related U.S. Application Data” section of the patent.

Utility Patent Applications:

-Stronger protection. A utility application gets examined, can be granted, and can be enforced.

-Recommended strategy for startups is to file an omnibus utility patent (an all-inclusive application) that covers multiple technologies. This reduces cost compared to filing several separate patents. Later, you can file divisional patents (children of the omnibus) if needed, as long as the parent specification supports the claims.

-This strategy signals to competitors that you have a broad patent portfolio. If they try to copy, you can file an expedited application and negotiate from strength.

Example: I used this strategy with patent 9,144,343. Along with three other patents, it was enforced against Keurig® and resulted in a multi-million-dollar settlement.

A design patent protects how something looks (shape, packaging, or visual features), not how it works.

-Pros: Useful for unique product appearances, branding, or lock-and-key systems where multiple designs can be protected.

-Cons: Competitors can easily design around them. Designs often change before launch, making them less valuable for startups.

In most cases, I don’t recommend design patents unless your business depends on the appearance of your product.

Yes, filing in China is important because their patent laws differ significantly from U.S. laws.

-In China, inventorship rules are less strict, and patents are granted faster (12–18 months).

-A supplier or third party could file a similar patent in China, then raise prices or block your exports later.

-The same applies to trademarks—if you don’t file in China, a third party might, which could prevent you from shipping products out of China.

The Patent Cooperation Treaty (PCT) allows you to file a single international application and reserve rights in many countries. It gives you a global filing date and up to 30 months to decide where to enter national filings.

I recommend PCT filings if patents are a core part of your business. Otherwise, skip it, because filing national applications is very expensive.

Yes, but only if you are selling in that country. National stage filings are expensive and only make sense when you have actual market activity in that jurisdiction.

Yes. Drawings are required to meet USPTO standards. They also make your application easier to understand for examiners, judges, and even investors. Good drawings simplify prosecution and may reduce fees.

An Office Action is a written response from the USPTO examiner when they reject or question your application. You must reply with arguments or claim amendments.

• Most applications face at least two Office Actions.
• Strong patents get through with minimal amendments.
• Lots of amendments mean your invention is too close to prior art, limiting your patent’s scope.
• Some examiners are stricter than others, so overcoming rejections may take time and expense.

This step is critical in determining whether your patent ends up strong or weak.

A patentability search analyzes prior art to estimate whether your invention is likely to be patentable. It’s useful, but not definitive—examiners may still find new prior art.

An infringement study checks if your product might infringe existing patents.

• For startups with no sales, it’s usually too expensive.
• If you’re taking market share from a big player, then it’s worth the cost. Sometimes, we can also identify weaknesses in the competitor’s patent and redesign to avoid infringement.

Note: We usually partner with other firms to conduct full infringement studies.

An IDS is a formal list of related prior art submitted to the USPTO. By law, you must disclose prior art you know about. Failing to do so can invalidate your patent.

An assignment is the legal transfer of patent ownership to a company, investor, or another individual.

The issue fee is the government fee due after your patent is allowed. You must pay it before your patent is officially granted.

Maintenance fees are required to keep your utility patent alive. They are due at 3.5, 7.5, and 11.5 years after the grant date.