The Top 5 Things Inventors Do Wrong
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Written by Gene Quinn President & Founder of IPWatchdog, Inc. Patent Attorney, Reg. No. 44,294 Zies, Widerman & Malek E-mail | Blog | Twitter | LinkedIn Posted: Sep 19, 2008 @ 5:06 pm 
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Frequently I speak with inventors who have made mistakes as they attempt to protect their inventions and ultimately obtain patent protection. Unfortunately, these mistakes can sometimes make it impossible to obtain patent protection at all. While there are many mistakes that one can make, here is a list of those things that are the biggest mistakes that can be made. Sadly, these are mistakes that happen every day.
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- Sold the Invention – In the United States you have 12 months from the time the invention was first sold within which to file either a provisional patent application or a nonprovisional patent application. If you wait longer than 12 months then you have forever forfeited the right to obtain a patent in the US. Many inventors know this rule and will start to sell the product before a patent application is filed. That may not present a problem in the US as long as you keep the 12 month time limit in mind, but once you sell the invention you have forever lost any foreign rights you might have been able to acquire. The US is peculiar in allowing a 12 month grace period. The rest of the world follows an absolute novelty requirement which means that if you sell the invention before a patent application has filed you forfeit the right to obtain a patent. So if you want foreign patents then apply for a patent before you sell the invention.
- Offer to sell the invention – Not only does selling the invention have severe negative consequences, but offering to sell the invention has the same negative consequences as actually selling the invention.
- Publicly used the invention – Public use can create the same problems as a sale or offer for sale. In the US if you use an invention publicly you have 12 months from the first public use to apply for a patent. Again, if you want foreign rights you need to apply first before you use the invention publicly.
- Terrible provisional patent applications – A provisional patent application is a great tool when it is used properly, and devastating when it is not use properly. A provisional application is extremely easy to file because all you have to do is complete a cover sheet and then attach a description of your invention. There are no requirements that the description be in a particular format, and the truth is the Patent Office does not even look at the provisional application. This has lead to many unscrupulous vendors offering provisional patent application services for under $100. Unfortunately, the law requires that a provisional patent application describe the invention with the same level of detail as is required of a nonprovisional patent application. This means that while you can easily get a provisional patent application on file and have a “patent pending” if you do not describe the invention with the level of detail and sophistication required by the patent laws your provisional application is worthless. Even worse, because you may have felt that you had a patent application pending you may have done things, such as using or selling your invention. If filed a provisional application that is not specific enough and then used or sold your invention you have forever forfeited foreign rights, and the application you filed may not be able to be used later to support a filing date. Worse of all, a badly done provisional patent application could conclusively prove that as of the time that you filed the application you did not have a completed invention. So it is possible that a bad provisional patent application not only does not help you, but it could significantly and severly hurt you.
- No professional patent search – I hear all the time from inventors who have done their own patent search and have found nothing similar to their invention. This is the first warning. With well over 7,000,000 US patents and counting it is virtually impossible to do a patent search and not find something relevant. Patent searching is an art more than anything and if you are not intimately familiar with how the Patent Office classifies inventions and how attorneys characterize things then you would never find what you are looking for even if there is a patent out there that covers exactly what you invented. Obtaining a patent is an expensive undertaking, and saving a few hundred dollars by doing your own patent search is just silly. Sure, look for yourself first. I even have an article explaining how to do your own search (see Patent Searching 101). If you find something then you save a few hundred dollars, but just because you do not find anything does not mean that there is nothing to be found. Why spend thousands of dollars seeking a patent when spending a few hundred dollars on a search would have shown you that a patent would likely not be awarded?
If you have a general question please feel free to send it to me. I endeavor to answer as many questions as I can and use these questions to help me know what to write for the benefit of all.
Good luck, and happy inventing.
About the Author
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Eugene R. Quinn, Jr.
President & Founder of IPWatchdog, Inc. US Patent Attorney (Reg. No. 44,294) Zies, Widerman & Malek 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 Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Known by many as “The IPWatchdog,” Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.
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Is the provisional patent honored by the western European countries?
Gene, I know this is an older post, but I couldn’t help but add a no. 6 to the list. This happens frequently and when patent counsel is onboard, no less. A patent/novelty search is performed by a professional outside search company (at my insistence) and perhaps 50 or so “hits” of patent and non-patent prior art are cited in the search report. Although the report does not provide a detailed opinion as to patentability, the search professional states in the report or accompanying email that the first 6 or so cited references appear highly relevant to the disclosed invention. I forward the search report to the client, along with the necessary instructions and required disclaimers, and ask the client to review the search results and provide me with comments for discussion. Inevitably, the response in each case from the client is a simple two-word statement: “Nothing relevant.” That leads me to believe two things: 1) the inventor did not review the search report, or 2) the inventor is clueless. Given that in each case the inventor is highly knowledgeable, analytical, and understands the technology (whatever it may be) at a sophisticated level, I tend to think that it is the former – the inventor simply did not read the report, or only gave it a very cursory review, e.g., only the titles of the cited art were considered. Whatever the case, this is a huge mistake. I know it is tedious, but I need inventor/client input as to prior art for claim drafting strategies. I always encounter resistance as to this important, IMHO, step in the drafting process. Your thoughts? Does this happen to you?
Richard-
What you are experiencing is extremely common, at least in my practice. I think inventors frequently don’t read what is sent to them. When I send a search report I always send a letter explaining the next steps, asking them to review the search report, what I need back from them and a link to where they can access the full text of the patents found. In about 75% or more of the cases when I talk with them they ask where they can get the full text of the patents, and it becomes clear the feedback they provided was as a result of the 1 paragraph per patent presented that was illustrative of why it was selected for the report. So it seems they don’t read the letter I send.
I will likely write about this more this week, but you are not alone on this one.
-Gene
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