There is a maze of information available online for new inventors, much of it very good and much of it highly questionable. Therefore, it is not surprising that aach and every week I receive multiple general inquiries from newbie inventors. Although the inquiry can take many different forms, the question inevitably boils down to something like this: “I have recently come up with an idea that I would like to pursue. I have never invented anything in the past, and I have no idea where to start. Help!”
The first step toward commercializing an invention and making money from it is typically to pursue the patent path. On the road to a patent there are many mistakes that inventors can make unwittingly, some of which will ultimately make it impossible to obtain a patent.
With that in mind, here is a list of the top 5 mistakes inventors make, followed by discussion of what you should do to move your project forward in an appropriate and responsible way.
1. 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 almost certainly 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.
Furthermore, 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.
2. Publicly used the invention
Public use of an invention 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.
3. 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 non-lawyers and non-law firm vendors offering provisional patent application services for under $100.
Unfortunately for the unwitting inventor who uses a bargain basement, deep discount service provider, 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 had a patent application pending you may have done things, such as using or selling your invention. This is a nightmare because if you filed a provisional application that was 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 yet, a badly done provisional patent application could even 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.
4. 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 8,000,000 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 and Patent Searching 102: Using Public PAIR). If you find something then you save the money you would have otherwise paid, but just because you do not find anything does not mean that there is nothing to be found. Why spend many thousands of dollars seeking a patent when a professional patent search would have shown you that a patent would likely not be awarded?
5. No Internet search
Over the years I have preached to inventors over and over again about the importance of doing a patent search. Earlier in my career I would hear from inventors who would say that they searched the Internet thoroughly and could not find the invention so they want to move forward. Wait a minute! There are any number of reasons why a product might be patented and not available for purchase. For example, independent inventors will many times obtain a patent and then not follow the project through, run out of money, lose interest or simply not succeed despite best efforts. Then when someone else has the same or similar idea/invention (which will ALWAYS happen) a search is done, the prior art is found and the decision is made that it isn’t worthwhile to commercialize if a patent cannot be obtained. There are many gadgets not on the market because no patent protection could be obtained because it was patented many years earlier.
Over time, however, I have come in contact with a variety of inventors who do their own patent search, then they have a professional patent search done in the responsible manner. Everything looks clear and then out of no where the inventor finds the exact thing is available for sale on the Internet. What?
A patent search is just that. A search of patents and published patent applications. You hire trained professionals to do a patent search, but the patent search does not typically include a product search online. That is the responsibility of the inventor. So for goodness sakes, if you come up with an invention the very first thing you should do is see whether it exists and can be purchased online or in stores. If it can be then you shouldn’t move forward. If you can’t find it online don’t celebrate and rush off to hire a patent attorney. Do your own patent search. Then once you confirm that you can’t find it on the Internet and you can’t find a patent reference, then proceed to the patent search stage.
What Should You Do?
Once you are ready to move forward and have all the preliminary matters taken care of, you will likely want to file a professionally prepared provisional patent application after having a professional done patent search. You want to move with all due speed because an early filing date is important because it prevents what others do after you file from becoming prior art that can be used against you. Starting March 16, 2013, the United States will convert to a first to file system, which means getting a high quality patent application on file as soon as possible will be essential and not just a good idea.Once you file the provisional patent application you can tell folks that you have a patent pending, and since your application has been filed you can sell the invention and tell others about the invention without worrying about compromising your patent rights. It is always best to get a confidentiality agreement when you talk to others about your invention, but once you have a provisional patent application filed it is less important.
So during the 12 month period that the provisional patent application is pending you then move forward with trying to contact those who could manufacture your invention, those who may be able to help you sell the invention or get it placed in stores and you might consider starting a business to move forward. You can also see if there is interest on the part of anyone to acquire your patent rights. Truthfully, selling patent rights to a provisional application is not that common, although trying is common.
This article has focused on the patent aspects of getting started, not the basics of inventing. For more on inventing, setting a budget, executing the plan and prototyping please see:
- The Business Responsible Approach to Inventing
- To License or to Manufacture —That is the Question
- Turning Your Idea into an Invention
- Invention Prototypes, Prototyping & Prototype Basics
- Exploratory Prototyping Advice from an Inventor
- 3D Renderings and Photo Realistic Virtual Prototypes
- Keep Your Money in Your Wallet Until Proof of Concept
- A Limited Run: Testing the Market Without Going Broke
- Protecting Your Invention When You Need Help
- Moving Forward Responsibly with Your Invention Idea
Knowing the pitfalls that lie ahead of you will help you stay on the straight and narrow path toward success. You can do it! The invention to patent to commercialization cycle just takes determination, and of course some funds to get things off the ground.
Editorial Note: This article was originally published on September 19, 2008. It has been substantially updated and republished on August 4, 2012.