Cumming, GA asked in Patents (Intellectual Property) for Georgia

Q: I want to patent a bandage with properties not on the market. Do I begin with a professional patent search?

I am a physician assistant and I want to create a bandage that will help a lot of my urgent care patients with infection. I would like to know if I should pay for a professional patent search before I have a prototype?

1 Lawyer Answer
Peter D. Mlynek
Peter D. Mlynek
  • Patents Lawyer
  • Moorestown, NJ

A: I am glad that you are worried about coordinating the prototyping and patenting, before you bring your product to your patients and to the market. I’ve been working with a client for the past almost 2 years on getting a Class I medical device in the WOC field onto the market; I obviously can’t tell you how far along we are at this, but here are a couple of observations:

(1) With regards to patents, there are two questions to ask: Can you protect your invention with a patent? and Can you make and sell your invention without infringing on someone else’s patent? I think that you are asking the first question, but you will need to, sooner or later, worry about the second one as well. The answer to the first one is a legal opinion called “patentability opinion”, and answer to the second one is called a “freedom to operate opinion” (or FTO opinion). To get a general idea of what the field of bandages for use in urgent care patients with infections looks like, there is also “patent landscape analysis” (or PLR). You can Google more about these three opinions and their costs.

(2) To answer your question: No, you do not need to get a professional patent search for a patentability opinion done prior to having a prototype. The reason is that since you do not have a prototype, you probably did not finish inventing your invention. If you did not finish inventing the invention, the attorney won’t be able to tell you if your product is patentable because the attorney won’t know what the product is. You could hire someone to perform a PLR. Will PLR help? Well, yes, but the cost may not be worth it.

(3) In any case, if you are going to be serious about this, you will need to retain a patent attorney to walk you though this process. You’ve got to get the beginning correct, so that you are protected.

(4) You will need a hefty budget. Getting the patent in the US and several other countries is not going to be cheap, but there will be other greater costs (such as regulatory approval, PMA, reimbursement, marketing, etc.). Getting the patent may be the least of your concerns.

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