Invention to Patent: Pitfalls, Perils and Process
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
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Posted: Oct 5, 2013 @ 9:15 am
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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.
Up until March 16, 2013, conception was quite an important legal concept in the United States because under U.S. law the patent was awarded to the inventor who was first to conceive. See Brave New Patent World: First to File Becomes Law. Although that sounds easy and has been romanticized by many, there were strict legal rules about the proof required for the first to conceive to prevail over the first to file and ultimately be awarded the patent. For the most part those types of issues are now irrelevant. Effective March 16, 2013, the United States is now a “first inventor to file” country, so filing a patent application as soon as you have something tangible enough to qualify as an invention is of critical importance.
But rushing to file is putting the cart before the horse. First you have to get from idea to invention and then to the patent process.
Although conception is not the important issue it once was under U.S. patent law, inventors really should still document the stages of invention as they move from idea to more tangible idea and ultimately to conception and the beginning of an invention. Documentation is not completely irrelevant, and keeping good records is never a bad idea. Thomas Edison, for example, once explained that a failed experiment was not really a failure at all since you now know at least one thing that won’t work. I’d add a corollary to that famous statement though: Even an invention success can be a waste of time without proper notes and documentation. After all, if you keep no records how will you know what failed, or what succeed for that matter? Edison is right, failure teaches but never forget that memory fades.
So as you are moving forward keep good, comprehensive notes, which can take the form of a diary, book of sketches, ideas, notes to yourself or a combination thereof.
Once you do 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. This is true because first to file really needs to be interpreted as “file first.” There are exceptions where an inventor might still be able to prevail if they file second, but the exceptions are almost too narrow to even mention. Still, if you have reason to believe someone disclosed before you filed or even filed a patent application before you did, you may still find it worthwhile to file a patent application as quickly as possible. No one knows how the courts will interpret these exceptions, but if you don’t get something on file as soon as possible even a more liberal interpretation about the exceptions several years down the road won’t help you.
Once you have the idea and the game plan you are at the point where you 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, at least generally speaking. 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 better. Organization and good information will generally allow for one of two outcomes that impact the cost associated with hiring a professional to assist you. First, if you are organized and have a good grasp on what you have invented, together with at least decent sketches or drawings, you can expect to pay less in attorneys fees, at least at the beginning. The other alternative is that you will pay the same but by presenting the information in a coherent, thoughtful and detailed manner you give your patent attorney the ability to do far more with the funds you have to spend. The reality is that you will run out of money before a patent attorney runs out of ability to further expand the description of your invention. There is always something more that can be written and claimed in a patent application, even for something of modest complexity. But if you present good information in an organized manner the attorney can spend time adding value, which is what you want them to do and the reason you are hiring them in the first place. Patent attorneys charge for their time, whether by the hour or as part of a project fee. So less time figuring out what the invention is and the various aspects and nuances the more time they have to produce a much more detailed patent application, which will result in better, stronger rights long term.
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. It might even change as you start to see the invention as described by your patent attorney, which for many is the first time they really see the big picture and how important it is to describe even seemingly minor nuances. 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, at least not yet. 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 (frequently called co-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. To get from idea to an invention that is reduced to practice it is sometimes necessary to find assistance. If that is the situation you are in take a look at Moving from Idea to Patent. Also consider speaking with a product development specialist who can help you with concept drawings, 3D modeling and product engineering. Whatever you do, before you rush out to spend money on a prototype please first read Financially Responsible Inventing: Prototype Basics and Keep Your Money in Your Pocket Until Proof of Concept.
The moral of the story is that inventing is a process. You start with an idea, you then need a game plan to turn your idea into a reality. As you go along the way your invention will take shape and become more tangible and identifiable. As that happens you very well may have an invention that could be patented. At some point you will need to do a patent search. I am a fan of inventors doing their own preliminary searches, not because you are likely to find the best prior art but rather to educate yourself and learn. The more you understand the better inventor you will become. For more on patent searching see: Patent Searching 101: A Do it Yourself Tutorial and Patent Searching 102: Using Public PAIR.
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.