A Beginner’s Guide to Patents and the Patent Process
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
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Posted: Dec 1, 2012 @ 3:38 pm
Whether you are an independent inventor, an fledgling entrepreneur or a seasoned inventor who is going out on your own for the first time, the best thing you can do for yourself is to become familiar with the concepts and procedure associated with protecting your inventions. Obtaining patents is not easy for the uninitiated, and without some familiarity you will be wandering aimlessly and wholly incapable of making sound business decisions. Simply stated: Inventors who are completely unfamiliar with the patent process also won’t be able to help in any meaningful way with the patent process. This is far more tragic than you might suspect.
Sure, if you can afford to you should hire a patent attorney to assist you. The patent attorney is there to, among other things, drag information about your invention out of you and translate it into the archaic legalese used in patent applications. The job of the patent attorney is to present your invention in a way that is most likely to accentuate the positive — namely the core uniqueness of your invention that will most probably lend itself to being determined to be patentably distinct compared with other inventions.
Even when hiring a patent attorney inventors still need to be engaged in order to give the patent attorney the best information available about the invention. This seems simple enough, but so many inventors fail to understand what information is important and why it is necessary. If you don’t understand the “why” you will you will almost never be able to provide all the information necessary.
While I don’t mean to imply that inventors are children, a perfect example of what I’m talking about comes from when parents attempt to teach their children not to touch the stove. Why? Because it is hot, of course. But does the child really understand that? No, not until they touch it anyway and connect “hot” with the pain they experienced. Experiential learning is formative for children, and in my experience the most powerful, formative type of learning — even for adults!
The trouble, however, is that you don’t want to engage in experiential learning with respect to your innovations and patents. So many inventors think they know best, but that is because they don’t know what they don’t know. By the time they discover first hand that the figurative stove is hot there will be nothing they can do because they are facing a final rejection because the critical information needed to distinguish their invention is not present in the patent application. This happens routinely when inventors represent themselves. It can also happen when an inventor refuses to cooperate and provide the necessary information about the invention to the patent attorney.
Patent attorneys need to know everything from the big picture to the minor, seemingly insignificant nuances of the invention. That has to come from the inventor, at least if there is really an invention. We can and will attempt to pull it out of you, but the more you know the greater your appreciation will become. There are specific reasons why we want and need certain information, and if you know how and why that information will be used you will invariably be in a much better position to provide it in the first place and then meaningfully engage in brainstorming as the application takes shape and your invention is pulled to its logical extremes in hopes of obtaining the largest patent footprint available.
With this in mind you as an inventor need to envision yourself as a key player of the legal team working to obtain a patent on your behalf. Don’t fool yourself into thinking you know the law better or could draft a patent application or patent claims that are as good as a patent attorney could. But embrace your vital role, which is as the one who is the master of the innovation that needs to be described. Even the United States Patent and Trademark Office recognizes the inventor as a key part of the team. Everyone substantively involved in the prosecution of a patent application owes a duty to the Patent Office to disclose prior art that they know about which is material to the patent application. Inventors specifically owe this duty to the Patent Office and patent examiner. See 37 C.F.R. 1.56.
It is absolutely essential to understand the basics of patents and patent practice so you can engage in meaningful collaboration and dialogue. With that in mind, what follows are 7 things you must understand as you embark upon your journey to protect your invention.
1. Why should you do a patent search?
The patent process can be expensive, so the last thing you want to do is spend a lot of money preparing and filing an application when there is easy to find prior art that will prevent a patent, or at the very least make any patent that is obtained extremely narrow. For this reason many inventors and businesses will choose to begin the process by paying for some kind of patent search. If prior art is found that is too close for comfort then the expense of a patent application has been saved. If no serious road blocks are found the patent search can and will lead to a better, stronger patent application and likely a smoother application process.
The reason patent searches lead to a better, strong patent application is because the first application filed is absolutely critical. All aspects of your invention must be disclosed, nothing new can be added without compromising the all important filing date (aka priority date). After having done a search the initial disclosure can be specifically written to carefully define your invention so as to focus on what is most likely the patentable feature or components.
By knowing what else is out there your patent attorney can tell the story and describe your invention accentuating the positive in a way that makes what you have seem unique in comparison to what the examiner will find. Patents are all about how you characterize things and little difference can make a huge difference. You never want to blindly describe your invention without knowing what else is out there. You invariably regret characterizations, which in hindsight you wish you hadn’t made.
2. But I don’t need a patent search because my invention isn’t on the market.
WRONG! Many inventors feel comfortable believing that there are no patents related to their invention when they can’t find it on sale on the Internet or in local stores. While surveying the market is a wise first step, frequently there are patents lurking that have simply not been used to develop commercial products. For example, many times independent inventors will patent something and then not be able to advance the project forward. The next person who comes along with the idea sees it has already been patented, perhaps the patent has expired. So there will be no way to prevent others from copying if the product is successful, so without exclusive rights it just doesn’t make sense to proceed.
Other times I hear inventors say that they have done their own US patent search and have found nothing. Patent searching is an art, and if you are not familiar with advanced search strategies it is not surprising you cannot find anything that is closely relevant. Rest assured, however, there are always patents to find that are at least similar in some ways. I have put together a patent search tutorial, which will help give you some strategies. While I encourage inventors to spend some time doing their own patent search, before spending thousands of dollars in hopes of obtaining a patent you should obtain a professional patent search and patentability opinion.3. Provisional patents
The first thing that needs to be said is that there is no such thing as a “provisional patent.” Instead, what you file is called a provisional patent application. A provisional patent application must be understood as nothing more than the first step toward receiving a patent. Ultimately you will need to file a nonprovisional patent application in order to obtain a patent in the United States. Still, there are substantial benefits to beginning with a provisional patent application but, as with most things in life, there are pitfalls that can and do trap the unwary and unknowledgeable.
In many, if not most or even nearly all, situations the invention as you initially conceive of it will not be the invention that you ultimately want to patent. Many times you will come up with an invention and want to protect it but you know you will need to continue working on it. There are things you want to make better, things you need more time to research and develop and in many cases you are seeking to obtain patent pending status before you have 3D renderings, engineering drawings or even an intermediate prototype. In this context you simply cannot possibly describe everything you will ultimately want to describe because you don’t have the invention complete in its full glory.
As you progress forward with your invention you learn more each step of the way. It is best to file a patent application as soon as possible, so consider filing a provisional patent application as soon as your invention is concrete and tangible enough to describe. Then as you make improvements you can file another provisional patent application if your want, or just move to a nonprovisional patent application.
For more information see The Benefits of a Provisional Patent Application.
4. Non-provisional patent applications
A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent Office. The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the U.S. or “importing” the invention into the U.S. In order to obtain a patent in the United States it is necessary to file a US patent application. Generally speaking you can obtain either a design patent or a utility patent. A utility patent covers the way an invention works, a design patent covers the way an invention looks.
While design patents do provide advantages and are mistakenly overlooked when you have a tangible innovation, utility patents are the strongest right and the one that most are speaking about when they simply use the term “patent.” You want a utility patent if you can get one.
In order to obtain a utility patent you must file a non-provisional patent application. Once you file the non-provisional application and all the parts are present your application will be forwarded to a patent examiner. The patent examiner is the one who will review the substance of your application and make sure that you are entitled to a patent.
5. Ideas cannot be protected, but Inventions are patentable
Regardless of what you might have heard to the contrary, ideas cannot be patented and they cannot be copyrighted. There is no way to protect an idea. This does not mean that you should give up when you only have an idea, but it does mean that you will need to proceed to flesh out your idea to the point where it is concrete enough to be more than what the law would call a “mere idea.” The moral of the story is that ideas alone cannot be protected, so you need to think in terms of invention. Inventions can be patented.
The good news, however, is that many times people think they only have an idea when they actually have an invention.
The idea is the first critical step toward being able to obtain a patent, and in my experience many inventors think they only have an idea and are not yet at the invention stage when, in fact, they really do have an invention that could be protected. Many inventors are surprised to learn that you do not need a prototype or working model. You have to describe the invention in writing with enough specificity. Of course, if you have a prototype (even a crude one) or some kind of working model you will likely have learned a good deal more and be able to describe more, but if what you have is unique and it can be described it can be protected.
So what to do if you are stuck and need to move forward? One thing that I recommend is that you consider using the Invent & Patent System™ to help you flesh out your idea and put enough meat on the bones of the idea so that it will be transformed into a detailed description and invention. I created the Invent & Patent System™ to help me teach my law students how to write patent applications. It was so successful that I adapted it for use by independent inventors, and since 2004 it has been used successfully to help many thousands of inventors create and file their own provisional patent applications.
6. If it sounds too good to be true it almost certainly is too good to be true
Inventors and entrepreneurs who shop around find that if they take their invention to a number of different patent attorneys they are likely to get a number of different quotes for services ranging from patent searches to patent applications. In fact, you have probably seen the ads on the Internet where a patent attorney or patent agent proclaim that they can prepare and file a U.S. nonprovisional patent application for some ridiculously low price.
How often does the extreme low bidder provide the highest quality? When do they provide even adequate quality? Would you hire the extreme lowest bidder to build your house? Would you want to go to see a doctor who charges an extraordinarily low rate? The truth is that price is at least some indication of quality. Do you think those who charge ridiculously low prices would charge those low prices if they could charge more for their work?
Just use your head. Inventors frequently will follow what they want to believe rather than what makes logical, business and financial sense.
7. A patent is a business asset, not a guarantee of riches
Many inventors operate under the misunderstanding that getting a patent is like owning Boardwalk and Park Place in the popular board game “Monopoly.” Increasingly, many journalists and patent haters are operating under the same fallacious assumption. The carelessness with which the patent right is characterized by so many with only the vaguest of knowledge of the patent system leads to truly unfortunate consequences. Inventors believe that if they obtain a patent the world will back up a money truck to their front door.
Whenever you seek a patent you absolutely must have a game plan. How are you going to utilize the patent? Why are you obtaining the patent? Money is not just going to show up at your doorstep because you obtained a patent. Many will use a patent to entice investors, some will obtain patents for the purpose of licensing to derive royalty revenue and others will use patents to sue infringers. But if you don’t have the money to hire attorneys to sue infringers how will you move forward? Is your patent strong enough to entice the few attorneys who offer contingency representation? Those that do litigate patent matters on contingency will require massive infringement and huge money on the line. Of course, there is no right answer so long as you thoughtfully consider your options. It would be a waste of money to simply obtain a patent and hope for a path to money.
There is a great deal more to say and learn, but this goes a long way to educating inventors to make them better team contributors and business savvy consumers. For those looking for more advanced discussion of the topic I recommend:
- The Top 5 Mistakes Inventors Make
- Inventor Pitfalls: Causing Irretrievable Patent Damage
- The Business Responsible Approach to Inventing
- Protecting Your Invention When You Need Help
- Patent Searches: Opportunity to Focus on What is Unique
- The Key to Drafting an Excellent Patent – Alternatives
- Tricks & Tips for Describing An Invention in a Patent Application
- Patent Drafting: Language Difficulties, Open Mouth Insert Foot
- Patent Drafting: Drilling Down on Variations in a Patent Application
- An Introduction to Patent Claims
Even if you never plan on drafting your own patent application the more you know about what goes into the patent application and how one is drafted the better the position you will be in to give your patent attorney the type of information they need.
Happy inventing (and patenting)!
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.