Inventing 101: Protecting Your Invention When You Need Help
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
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Posted: Sep 21, 2012 @ 7:01 pm
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I am frequently asked a version of the same question by inventors, which goes something like this: “I have an idea but I am unable to turn it into anything myself. I am going to need some help. What should I do to make sure I am protected?”
Patent attorneys and agents reading will likely start to immediately say that ideas cannot be patented and it doesn’t sound like you have anything that could be protected. I too have explained that to many inventors of the years and written about that very topic (see Protecting Ideas and Moving from Idea to Patent). But with this presentation there is no way to know yet whether there is an invention lurking there or whether the individual has merely a raw idea without any knowledge about how to bring it into being. Thus, this question begs the essential inquiry, which is this: At what point does an idea take enough form to be considered an invention that can be protected? Many times there is an invention that could be defined and protected well before one might suspect.
First, it is completely correct to say that ideas cannot be patented. Having said that, it is equally correct to say that every invention starts with an idea. The patent laws in the United States differentiate between a mere idea and conception. When you have a conception you have an invention, and the easiest way to define the term “conception” in lay terms is as an idea plus some knowledge regarding how to bring the idea into being, whether your idea is a compound, a product, a process or unique software.
To put this into a Star Trek analogy, an idea would be that it is necessary to travel back in time. The idea would be — let’s aim our newly commandeered Klingon bird of prey at the sun and then at the last second slingshot around the sun, which in theory should take us back in time. An actual reduction to practice, and an extraordinary leap of faith, is to aim the starship at the sun, slingshot around the sun and wind up back in the 1980s. All kidding aside, from the point where the crew decided that time travel could theoretically be accomplished by a slingshot around the sun there was conception. There was a lot left to do to prepare, to figure out the exact right parameters and specifications, but there was a game plan that could be pursued. The date of invention is the date of conception. But conception is not enough. To have something that can be protected by a U.S. patent you need to explain who, what, where, when and how so that others who could make and use the invention. You do not need an actual reduction to practice.
Certainly, your invention is not a time machine, but rather something more modest. Still, many will get caught up between idea and conception. Still others will get caught up after a conception but without the ability to move forward to either an actual reduction to practice or a constructive reduction, which is described by the written explanation — the written proof that it will work.
In many instances the individual presenting the “what do I do?” question will explain that they will need some assistance from an engineer to help them build the device or figure out certain aspects of the invention. In my experience, if the inventor presents knowing that they will need assistance from an engineer they are likely to have something that is more developed than a mere idea, and are struggling with the fact that they know they will need help creating a prototype or preparing engineering drawings, for example. In this case it is likely there is already an invention worth protecting, at least on an initial level.
So how do you decide whether you have a mere idea or a conception that is on the road to a full blown invention? That is a difficult question to answer and one that has few, if any, bright line rules or useful generalizations. What I would say, however, is this: If you can sketch out the invention on paper (in the case of a device) or list the steps (in the case of a process) you likely have something that is tending toward the invention side of the idea-invention continuum. This is because in order to file a patent application you do not have to have ever made the invention or used it, you just need to be able to explain to others how to make and use the invention. So proofs on paper associated with written text explaining the particulars is enough to satisfy the patentability requirements in the United States. So in many, if not most, cases inventors have an invention capable of obtaining protection far earlier than they likely expect.
This is not to say that the endeavor of creating a prototype, even a crude prototype, is not worthwhile. You will learn so much from trying to create a prototype, even a crude one, that you should absolutely endeavor to create a prototype to prove the concept. You don’t need one that costs many tens of thousands of dollars to start, but having some proof that the invention will work makes all the sense in the world, and will undoubtedly provide you with better information than you could have ever come up with when only describing and proving the invention on paper or even in 3D models.
We are starting to get ahead of ourselves though at the moment because in most situations the people asking the “what do I do?” question are not capable of providing detailed sketches of the invention, engineering drawings or modeling the invention in 3D on a computer, all of which are relatively inexpensive and critical. So what you need to do is define the invention you have to the greatest extent possible and file a provisional patent application. Whatever you define in that provisional patent application will start to be the foundation of the overall invention you ultimately file a patent application on, but it will cast in stone that which you have come up with and are the undisputed inventor of prior to seeking help from others.
I always recommend a patent search prior to filing a provisional patent application because it is a waste of time to engage in a project if there is no chance at obtaining a patent, and even if there is a likelihood of obtaining a patent not knowing what to focus on as the most likely unique aspect of the invention means you are describing the invention in a vacuum, and nothing good can come of that. But you can start by doing your own patent search and then if it looks good move on to a professional patent search. For more on doing your own search see Patent Searching 101 and Patent Searching 102.
As you are going through the search phase you will start to see things that are similar and if you actually read the patents, which should be considered essential, you will start to see how others have described their inventions. This will help you focus on the unique aspects of what you have come up with. It will also likely be a surprise to many that patent applications and issued patents are NOT blueprints, but rather generalized discussions of the big ticket aspects of the invention with focus on those things that render the invention worthy of a patent (i.e., those things that are unique). In fact, engineering drawings are almost never used in a nonprovisional patent application, although they will be required if you are ever going to build the invention. A patent application is about teaching the invention in its grandiosity. It is not about machining tolerances and appropriate size for a product to be comfortably be placed on a store shelf.
So once you have done a patent search you will need to start describing what about your idea is unique and how it is unique. When you are at the point where you can describe the uniqueness of your idea in comparison to other patents and pending applications then you are again tilting heavily toward the invention side of the idea-invention continuum. So if you can describe what is unique and why, and you can sketch out what you have, then you certainly have something that is ready for a provisional patent application.
Once you have that provisional patent application filed you will have 12 months within which to file a nonprovisional patent application claiming the benefit of that provisional filing date. This cannot be extended for any reason, so the clock is ticking. But you have in hand something that defines what you have come up with, so the core of the invention is yours.
An effective use of provisional patent applications, particularly when you are going to need help from others, is to secure the first one, seek help, and then as you make progress and the full glory of the invention takes shape file another provisional patent application. You can file as many provisional patent applications as you want over that 12 month period and the priority date of the invention will be whenever that aspect of the invention first showed up in an application at the USPTO. Some Universities use this serial provisional approach regularly because their scientists are working on cutting edge technology and learning more and more all the time. Then within 12 months of the first filed provisional patent application you file a nonprovisional patent application wrapping together all of the provisionals you filed and adding whatever else new you have since the last provisional patent application.
I have been suggesting this serial provisional patent application strategy to inventors for years, and finally now have an inventor who decided to pursue it. This strategy is excellent when you are developing an invention and making progress toward a completed invention. Once complete you can file the nonprovisional patent application. It is also important to know that when you file a nonprovisional patent application you have no additional ability to make additions without filing another nonprovisional patent application, so filing a nonprovisional application during development is frequently not the right choice. Wait until development is complete, and whenever a significant improvement occurs think about another provisional to lock in a new priority date with respect to that new, significant improvement.
Once you get that first provisional patent application filed you are ready to approach others for assistance. You have a measure of protection, but never forget you have no exclusive rights until the patent ultimately issues. You should also still get a confidentiality agreement signed by anyone who provides assistance to you. While the clock in the US is ticking to file the nonprovisional, the real important significance of confidentiality agreements after a provisional filing is so that those who assist you will not run off with your invention on their own. With this in mind, it is ABSOLUTELY CRITICAL that you get an assignment of rights with respect to any protectable aspects provided by those giving you assistance. You essentially want to set it up so that you pay them for help and in exchange they agree to help you with your invention, agree to keep it confidential and they agree to assign any rights over to you because, after all, it is your invention. You should also put into the agreement they sign something about them agreeing to cooperate with a patent application because they may need to be named as a co-inventor.
Thus, the moral of the story is that just because you will need assistance doesn’t mean you do not have an invention worth protecting. Virtually all inventors will need assistance of varying kinds, from patent attorneys or agents, from industrial design engineers, from those who can create engineering drawings and/or CAD drawings and from those who can help with respect to manufacturing and distribution. The key is that you need to take responsible steps as early as practical to understand what you have, know what others have related inventions and then define your idea so that the core uniqueness can be appreciated. When you can do that it is safe to say you no longer have an idea, but rather you have an invention.
Finally, a word of caution. The United States is rapidly marching toward a first to file system, which will happen on March 16, 2013. So you do have 12 months from the filing of a provisional patent application to file a nonprovisional patent application. Having said that, if you have a provisional on file or are about to file a provisional patent application you should absolutely file a nonprovisional patent application on or before March 15, 2013. You do not want to get caught up in the potential nightmare of having filed a provisional patent application under a first to invent patent regime and then file a nonprovisional patent application under a first to invent regime. While it goes beyond the scope of this article, I say BEWARE! Prepare yourself for filing a nonprovisional patent application on or before March 15, 2013. Stay tuned for further discussion of this in the coming weeks.
NOTE: This article was originally published on September 17, 2010. It was updated and republished on September 21, 2012.
About the Author
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. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, 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.