Invention to Patent: The Pitfalls, Perils and Process
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
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Posted: Dec 16, 2010 @ 7:30 am
So you have an idea and want to get a patent? There are a number of things that you need to know about the invention and patent process that can help you focus your efforts and know what obstacles lay in front of you.
The first thing to know is that you cannot patent an idea. Many people will have great ideas, but will not be able to put that idea into a package appropriate for a patent because there is no invention, only a concept. To be sure, the idea is the all critical first step in the invention process. After you come up with the idea or concept you now need to put together a game plan on how to carry that idea through. The idea and game plan together form what the law calls conception. Conception is an important concept in patent law because in the United States it is the first person to invent that CAN ultimately receive the exclusive rights on an invention.
I capitalize, bold, italicize and underline the word “can” for a specific reason. There is a tremendous misconception among some inventors that merely being the first to invent guarantees that they will be able to receive the patent ahead of all others. This is terribly incorrect and almost certain to lead inventors to make decisions that will compromise their ability to receive any patent. First, you absolutely will need legally admissible proof of what you invented and when you conceived, which many if not most inventors will not have. Second, even if you are the first to invent you could be statutorily barred from receiving a patent if anyone (including you) used the invention publicly for more than 12 months before a patent application was filed, or anyone (including you) published information about the invention more than 12 months before a patent application was filed. In a nutshell, inventors who lie and wait believing they were the first to invent and can swoop in later will find that their lack of understanding of the patent laws has almost certainly worked to prevent them from receiving a patent.
Once you conceive (idea + game plan) you will need to be diligent and not let any grass grow under your feet as you move forward toward defining and experimenting with your invention. Generally speaking, conception without diligence can cause the first person who invents to lose the right to the invention assuming someone else invents after you but files their patent application first. So, the moral of the story is once you have your idea and the game plan move swiftly. The law realizes that so-called “garage inventors” cannot quit their day job, but the law will also require proof that you are consistently moving forward and not shelving the invention for periods of time in favor of other endeavors.
This leads to another important consideration, which is documentation and proof. In some cases it is necessary to for an inventor to be able to prove they were working on their invention in a diligent fashion. It is important for you to understand that the law will not accept the word of the inventor alone. An inventor’s testimony is considered inherently unreliable. If, however, you have corroborating evidence to support your testimony, the picture painted will be strong and courts will listen. So what you want to do is document your work on your invention. This is critical for many reasons, not only to demonstrate diligence if necessary. It is important to know, however, that simply saying that you took days off from your job to work on the invention is not enough, as the inventor of the laser — Gordon Gould — found out. You could have just as easily gone to the movies. If you purchase things from Radio Shack or Home Depot, keep your receipts. Also try and keep a regular schedule. If everyone you know can testify that you worked in your workshop for an hour or two every night after dinner, that could be helpful.
Perhaps the most important thing you can do is to keep an invention notebook! The invention notebook should be like a diary of what you did and tried and when and how it went and what you are thinking about doing and trying and why. Be as complete and specific as you can be. One thing that we know and the law accepts is that inventors will usually document everything they do and try. This is because there is no way to reliably remember everything you did, so most who are inventors will write things down so they can keep things straight in their head and can know what they tried and what happened, etc. This invention notebook is very important, and can be the proof you need, as well as be tremendously useful to keep your thoughts in order.
Now, many idea submission and invention promotion companies will tell you that you should mail your invention description to yourself or friends. For more information see Truth About Invention Promotion Companies and Avoiding Invention Scams. It is important to know that mailing things to yourself will provide absolutely no protection whatsoever. The most important evidence is going to be when you came up with the concept (idea + game plan) and whether you were diligent. Mailing something to yourself is not necessary at all. If you really have an invention notebook you should easily be able to prove diligence. Lets face it, if you were to sit down and write a notebook all in one day it would be obvious. In an invention notebook one expects to see wear and tear, the use of different pens and pencils, detailed notes, etc. If you have something that is legitimate it should be fairly obvious, particularly if people can testify that you write everything down in your invention notebook. Don’t skimp on the invention notebook. Composition books are only $2 each, so fill them up and keep good records. You may find that in those records there are more than one invention, and at the very least a ton of information that will be useful in the future. I also recommend copying the pages of your invention notebook(s) and having them notarized, which just helps to prove the dates in question.
At this point in the process you now have come up with your idea and game plan, and are moving forward trying to finalize your invention. This process is trying to accomplish what the law calls a reduction to practice. You do not need to have a prototype built in order to get a patent, but you will need to be able to describe your invention with enough specificity so that someone who is technically skilled in the area of the invention can understand how to make and use the invention. Reduction to practice, therefore, can occur through the creation of a prototype or the specific definition of the invention in writing in a filed patent application. If your invention is complex more explanation and definition is required. If it is relatively simply then less explanation is required. The more specificity you provide, however, the easier it will be for you and/or your patent attorney to write a patent application. If you hire an attorney you likely want to provide as much as is possible so that the attorney does not need to spend a lot of time weeding through invention notebooks to define the invention. The more you do and the more organized you are the less fees you will likely have to pay, at least at the beginning. Remember, patent attorneys charge for their time, whether by the hour or as part of a project fee. So the fewer hours required the less you should expect to pay.
Let’s return to the game plan for a minute. The game plan is what connects your idea with the reduction to practice. What you need is the knowledge and understanding of how you can take your idea and move forward toward a reduction to practice. Your game plan does not need to be flawless. It can and frequently will be modified over time as you begin conducting research or otherwise working on your invention. The game plan, however, is frequently where many inventors, particularly first time inventors, encounter significant problems. Remember, simply coming up with an idea is not enough. From time to time I will hear from people who say: “I have this great idea and I want to get a patent. I just need to find someone who can figure out how to make the product, but if someone could figure out how to make it I know I could make money.” What we have here is someone with an idea but no game plan. You cannot protect an idea. You should also remember that if you tell someone your idea and you do not have a promise (i.e., some kind of confidentiality agreement) from them to not take it they can indeed take it for themselves. Be careful. Having said this, there is absolutely nothing wrong with more than one person working on an invention and being what is called joint inventors. A patent will need to be applied for in the name of all joint inventors, and absent an agreement each joint inventor will have equal rights to the patent if one issues.
If you are in or contemplating a joint inventor collaboration I strongly recommend seeking the assistance of an attorney who can help you memorialize any agreement among and between the inventors. It is always easier to get such agreements in writing and out of the way on the front end prior to money rolling in. Once money is being made these agreements become difficult to achieve, everyone has a different understanding based upon what would reward them most and the entire negotiation/relationship starts to take on the characteristics of a divorce. So get these potentially thorny issues out of the way sooner rather than later.
To review, the law recognizes that with many, if not most, inventions there will be three steps to the invention process. The idea comes first, followed by the game plan, followed by the reduction to practice. When dealing with some inventions the idea, game plan and reduction happen rapidly. With other inventions there is some time between these steps.
Now you should ask yourself why it is that you want a patent. Obtaining a patent can be the best decision, and may even be the best business move you could make. Nevertheless, what you need to understand is that most patents do not make inventors money. Furthermore, the question should not be whether you can get a patent, but rather whether any patent you are able to obtain is worth the investment. In other words, is the scope of protection meaningful? Getting a patent is easy if you are willing to take extraordinarily narrow claims. By layering on enough specifics you can turn practically anything into something that is new and not obvious. I only half jokingly suggest taking something that has nothing to do with a radio and integrating a radio in order to become an inventor and receive a patent. See The 65 Year Old Integrated Radio Patent Strategy. Thus, you must ask whether you are going to actually be able to prevent competitors from making, using, selling and importing your invention based on the claims you are likely to receive? Also critical, ask yourself whether there is a market for your invention?
When you are considering whether to get a patent you absolutely must know what rights a patent will give you. A patent will give you the right to exclude others from making, using, selling and importing a product or process that is covered by your patent. Many will tell you that a patent is a monopoly, or a patent provides a monopoly. This is simply not true. The loose application of the pejorative term “monopoly” to the property right of exclusion represented by a patent is misleading. What the patent can do is allow you to prevent others from entering your market. This requires a strong patent with solid claims, not just any old patent claims that you can get through the Patent Office. Likewise, you need to have a product or process that others want to pay for. It is a simple truth that a monopoly can only exist if there is or will be an existing market. To characterize a patent as a monopoly without first questioning whether there is a market for the patent is to put the cart before the horse. Those patents that are litigated are litigated because there is money at stake and, therefore, a likely market does exist for these patent that we so frequently hear about in the popular press. Nevertheless, there are undoubtedly a large number of patents that could never possibly have any market and could never be considered to yield a monopoly. If you doubt this take a look at the Museum of Obscure Patents. It does no good to perpetuate the myth that all patents are monopolies. It is simply not true.
What a patent can do, however, is provide you the opportunity to obtain what economists would call monopoly profits. If you have two things you can turn your patent into a highly lucrative piece of property. First, you need a patent that adequately covers your product and will prevent similar, substitute products. Second, you need to have an invention that others will pay for. If you have these two things then you will have a customer base who must come to you for the product. That is the holy grail of patent law. See A Patent Doesn’t Guarantee Market Success, But Can Sure Help. It can be exceedingly difficult to know if these two ingredients are present, and sometimes you will be wrong and sometimes risk is inevitable. Nevertheless, these two things must be considered.
I am frequently asked where does an inventor start on the journey to protect an invention. Normally the first step is either to conduct a patent search or to file a provisional patent application. Some choose the patent search first in order to make sure their invention is patentable, others move right to the provisional patent application, and some do the two simultaneously. The reason some skip a patent search initially is because the cost of filing a provisional patent application is just a few hundred dollars more than having a patent search done, so frankly some people do not want to know initially, opting rather to file a provisional application and getting a patent pending. This is because if you do know you are not entitled to a patent you cannot file without violating Patent Office rules. So what some will do is file a provisional application and then prior to filing a non-provisional application they will have a search done. This can make sense because filing a non-provisional application is a longer term process that is more involved and more expensive. Notwithstanding, I always prefer to have clients start with a patent search because then we can realistically know what, if anything, can likely be patented. It also gives us the ability to focus on those aspects of the invention that are most likely to be patentable.
While at some point you will likely want to have a professional patent search done, and likely have a patent attorney review that search and give you feedback and a patentability assessment, it is always a good idea for inventors to start with their own patent searches. The more you take into your own hands the better because you will become more informed, and because if you can find something that looks too close then you have preserved capital. Preservation of capital is critical for inventors. You have a finite amount of money and you absolutely must spend that money only so long as the project continues to look like it will bear fruit. So planning, budgeting and engaging in your own due diligence in the early stages is critical, because we all know that as an inventor you will have many ideas/inventions throughout your life. Spending all of your money at once, up front and without due diligence on your part is a recipe for disaster, and a recipe for not having the funding to pursue the one that could have been huge! For more on your own patent searching see Patent Searching 101 and Patent Searching 102.
About the Author
|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.