Most designers – whether they make clothes, jewelry, visual art, etc. – at some point in their career at least think about patenting their creative products to either control copycats (you can never really stop them, though) or to benefit from royalties, or both. For Alissa Moyse, the Founder and Designer of @casualcaratsjewelry, the process of obtaining a patent for her candy-colored silicone’n’diamond jewelry has not been straightforward. But Alissa has graciously agreed to share her experience with us in a hope that her observations will help other creators to have an easier journey and a more positive outcome.
Here is the story in Alissa’s own words:
“I thought it would be easy to get a design patent on the jewel mounting for my silicone rings, and since I have big dreams for the product and company, I wanted to protect my design.
To start the process, I found and consulted with two patent attorneys. One of them worked for a large law firm; his company quoted me the amount that was equal to 3-month-worth of profits for my company. The second lawyer agreed to work on the project as a side job for a third of the amount quoted by the first person; but jewelry was not his main field – he was a patent attorney for an oilfield service and equipment company. The fact that the second lawyer did not have the right experience should have been a red flag for me, but the huge fee quoted by the first lawyer was too high and too intimidating. So, I hired the “cheaper” lawyer.
The first part of the process for obtaining a patent is doing a patent search. In essence, you are doing a research to find out if anyone else tried to or had obtained a patent for the same or very similar product. At this stage, the lawyer needs to go through all the artworks and documents filed with the USA (or your country’s) Trademark Office and ensure that nobody ever submitted an application similar to yours. If there has been any prior artwork filed by another person that looks even remotely similar to the idea that you are trying to copyright, your application will be declined. I trusted my attorney to know the process and never doubted he’d done his research, when he said we were ready to file the patent application.
The second part of the process is to actually submit the application and wait for the Trademark Office to provide their feedback – either an approval or guidance on further actions. So, my attorney filed the application for the patent. We heard back within a few months: the Patent and Trademark Office’s response said that in our research we overlooked/missed several previous applications that were similar to ours. My attorney went back and forth in his conversations with the Patent and Trademark Office; he attempted to defend and push forward our application, but ultimately failed.
When the feedback finally arrived by mail, I received copies of multiple artwork examples that had been filed with the Patent and Trademark Office before me; there were even dates for when each previous application was filed. All in all, there had been multiple other patent applications for products similar to my jewelry; we could see the names of the people and companies that filed them, the actual artworks, and so on. The most heartbreaking part was that all previous applications had been abandoned – this means no one ever actually got a patent on their design. But these early applications made it impossible for me to get a patent -- simply because there had been artworks of something similar to my product. This was not an easy pill to swallow.
What I learned about my lawyer later made me feel even worse. My brother-in-law is an attorney. He does not practice patent law. But he was thinking about getting a patent for a few inventions himself, so he spoke to my attorney about the process. And talking to my lawyer, he learned that the guy never searched for previously submitted artworks. So, he skipped the first and most essential stage of the process, which ultimately led to our failure to secure the patent.
The biggest takeaway for me was, I should have done my homework, talked to at least three attorneys, gotten their quotes as well as their opinion about the possibility of obtaining this patent. While the first lawyer I contacted was out of my price range, he probably would have done a more thorough job on researching previous artworks and would have advised me against applying for the patent since obtaining it would not be possible; or maybe he would have advised me to change the design to ensure my patent application was unique and different from all previous applications. In either case, I would not have filed an unwinnable application and spent a lot of money only to be left with nothing.
I also believe the attorney I did hire was unethical. As we were wrapping up the project, he passed me onto another lawyer saying he’d gotten a new job. But I later learned he was fired, and his laptop was confiscated by his employer. I suspect, he might have had a non-compete agreement with his company, which means he was not allowed to work on projects outside his main job.
I wish I knew about all of this, when I started the process of obtaining the patent. I could have avoided this costly mistake. But I do hope that my story can be of help to others, who are trying to protect their creations.“
So, what did we learn from this lesson? Here is our take on the story:
- When launching a patent process for your product, make sure you have the right legal partner. Just because somebody is a good lawyer, does not mean they are good across all industry sectors and legal fields. Make sure your legal partner has experience with getting a patent for similar products.
- Don’t be intimidated by legal fees and titles. Ask for references from your potential lawyer – and call their previous clients. A great lawyer can make all the difference in the world in making legal procedures go the right way for you, but make sure you do your due diligence and background check.
- Even when you are confident in your choice of an attorney, pay attention to what they are doing – make sure you are part of the process and understand what is going on. Don’t be afraid to ask questions, even if you feel they are silly. This is your product you are trying to protect – get involved.
- Do not do a handshake deal – make sure you have a contract with your attorney, which states what outcomes you expect for them to get paid. Remember, most lawyers are paid by hour – even if they did not deliver the results but worked those hours, they will expect to be paid. The contract is your way to say what you are expecting of these relationships.
- Even when you’ve done your part and you gotten yourself a good lawyer, who had your best interests in mind, you might still fail. Do not give up – find a new, unique, different way to present your product and try again.
And this is all for today! Best of luck in protecting your creations!