UpCounsel Provides False Information on Design Patents

Rely on UpCounsel.com to your detriment.

The web is full of poor, and sometimes completely false, information. I recently came across a site that has been popping up in the top results when I’m searching for certain legal information: UpCounsel.com. These sites are usually just portals to hiring an attorney, and excel at SEO which, according to Google’s algorithms, supposedly provides “better” information than real lawyers’ blogs. Curious about its content, I found that it has absolutely false information. Anyone relying on it will be screwed. Rely on UpCounsel at your own peril…

UpCounsel essentially says that someone can obtain (or file) a provisional design patent:

UpCounsel website with false statement that provisional design patents are possible.
UpCounsel misleading the public on intellectual property. Rely on it to your peril.

The problem is, you can’t. I’m not sure who’s “approving” this content, but I can assure you it’s not a lawyer or anyone who actually practices patent law. In reality, there is no such thing as a provisional design patent. Well, actually there is, but it’s only a piece of paper from which no rights will be obtained. You can file a “provisional design” patent application but you’re very likely to lose you rights if you do. The reason is that you can’t claim priority to a provisional design patent application, and provisional applications never become patents.

Provisional patent applications exist to provide an informal way to establish priority for a later filed “non-provisional” patent application (i.e. a “regular” or “full” patent application — an application that may mature into a granted patent and thus legal rights). Under 37 C.F.R. 1.78, a non-provisional design patent application cannot claim priority to a provisional application. It’s black letter law. How UpCounsel decided it was accurate to say “it can help you add additional protection to your product” is beyond me. That’s a totally false statement.

So yes, you COULD file a provisional design application, but you’re not going to get any rights from it. It’s not going to “help you add additional protection to your product” because you can’t claim priority to it in a non-provisional application, and a provisional application never becomes a patent.

Then there was a total head-scratcher where UpCounsel says that “Copyright is another type of patent.”

UpCounsel website with false statement that "Copyright is another type of patent"
UpCounsel website demonstrably false statement about what is a patent.

Wait, what? You’ve got to be kidding me! Copyright is NOT a patent.

Who knows what other garbage may exist parading about the top search results for legal questions that is entirely false or at best misleading?

Perhaps another question is how Google and the technocrats don’t view this as “misinformation.” It’s demonstrably false by quick resort to the actual authority: the United States Patent and Trademark Office, which clearly says on its website that you can’t file a provisional design application:

USPTO website summary clearly stating "provisional applications for patent may not be filed for design inventions."
USPTO website summarizing the law regarding provisional patent applications.

So there you have it. Just one sampling of the “content” available at an increasingly high-ranking website that will likely mislead people into taking action to their detriment. I wonder how long it will be before those who are duped decide to sue UpCounsel and its backers?

If there’s anything in this post that I’ve missed, misstated, or misread, I always welcome feedback. It’s part of my practice and who I am as a person; always striving to be better. And if UpCounsel has any specific feedback, I’d love to engage them in a dialogue.

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