Inventors Need to Have Inventions

I am frequently asked the same or similar question with respect to patent applications by independent inventors — How much information do I have to include in a patent application?  Sometimes this question is prefaced by something like — I have the concept but I am no scientist and I don’t know how to actually create the invention.

The first thing to understand is that to be an inventor you need to have an invention.  This is a critical starting point because you cannot patent or protect an idea or a concept.  True, all inventions start with an idea, but an idea is not something that can be protected by any form of intellectual property protection.  Said another way, you simply cannot patent an idea or concept.  You also cannot copyright or trademark an idea or concept, but those are topics for another day.

In order to be an inventor the law requires that you contribute to the conception of at least a single claim in a patent application.  This is one of the many places in patent law where the terms used complicate understanding.  The “conception” spoken of in the requirement mentioned above is not merely an idea, but much more.  The patent laws require that in order for someone to be an inventor they need to “dominate” the invention by exercising all mental control over the subject matter of the invention, from creation through testing.  Thus, the patent laws do make a distinction between what we would consider an idea or concept as those terms are used in everyday language and “conception,” which is a term of art that has a specific legal definition.

So in order to be an inventor you must not only have the idea, but you need to have the know-how with respect to bring the invention into being.  Another unique twist is that you do not actually have to bring the invention into being, others can do that, but they must be acting on your directions and under your supervision.  This is how the leader of a laboratory who does not actually do the testing winds up being the inventor.  He or she will have the idea and then explain to those under them in the lab hierarchy what needs to be done.  They will also be present to answer any questions that come up and provide additional direction as required.

So what if you have a great idea and no where to go?  It is very difficult, if not impossible, to make any progress if all you have is the idea and no ability to move forward.  What you need to do is embark on research to figure out as much as  you can.  Ultimately, you may get to a point where you just cannot go any further and need some additional help from an engineer or scientist to move the project forward.  What you should do if this happens is write up as much as you can about your invention.  The patent laws require that in order to file a patent application you need to be able to describe in writing how others could both make and use the invention, with the same level of detail as would be required in an instruction manual.  So write up as much as you can and then consider filing a provisional patent application or at the very least get someone, such as a notary, to witness what you have written up.  Then you can move forward knowing that you have some documentation to demonstrate you were the creator of the invention.

Once you have done as much as you possibly can on your own you might want to consider hiring an engineering firm to provide additional information and input to put your invention over the top.  The thing to remember is that if the person or firm you hire provides information that relates to the conception of the invention they will be considered a co-inventor.  As a co-inventor they have rights to the patent.  In order to get the help you may need and to keep ownership of the patent rights if you go the route of finding someone to help you it is always wise to have a written agreement that indicates that anything they do provide will be owned by you, even if they must legally be identified as an inventor on a patent application.

About the Author

Eugene R. Quinn, Jr. President & Founder of IPWatchdog, Inc. US Patent Attorney (Reg. No. 44,294) B.S. in Electrical Engineering, Rutgers University J.D., Franklin Pierce Law Center L.L.M. in Intellectual Property, Franklin Pierce Law Center Send me an e-mail

Gene is a US Patent Attorney, Law Professor and the founder of IPWatchdog.com. He teaches patent bar review courses and is a member of the Board of Directors of the United Inventors Association. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money and various other newspapers and magazines worldwide