5 things inventors and startups need to know about patents

By Gene Quinn
July 9, 2016

Lightbulb plus lightbulbOn the road from idea to inventing success there are many pitfalls that stand in the way. One of the biggest pitfalls, unfortunately, is incomplete knowledge. There are a great number of things inventors should know, from the importance of doing a patent search, to the need for confidentiality agreements, to how to understand when an invention is obvious. What follows, however, is a list of five things that that are critically important for inventors to know and understand. Sadly, based on my experience, many inventors do not really understand these aspects of patent law. I find myself needing to repeat them over and over again, which is why they find themselves here on this particular list.

Happy inventing!

 

1. Admissions – Be careful with what you say

One big problem independent inventors face when they choose to represent themselves is with respect to the very real problem of admissions. Truthfully, those who are representing themselves should be given patent-style Miranda warnings before they file a patent application or say anything during the prosecution of a pending patent application. Everything you do say can and will be used against you!

For example, the Patent Office treats admissions by the applicant as prior art. This is true whether your application will be examined under pre-AIA law (i.e., first to invent) or AIA (first to file). Indeed, a statement by an applicant in a patent application or made during prosecution that identifies the work of another as “prior art” is an admission that can be relied upon for both anticipation (35 U.S.C. 102) and obviousness (35 U.S.C. 103) determinations, regardless of whether the admitted prior art would otherwise qualify as prior art.

 

2. First to file means file first!

I write this a lot, but it seems that a month does not pass without me having to explain to at least one inventor or startup business that U.S. law significantly changed several years ago and now we are a first to file country.

Inventors and businesses wait to file patent applications for a variety of reasons; sometimes it is because they don’t know the law. Sometimes it is because they lack the financial backing necessary. Regardless of the reason, waiting to file a patent application is not universally bad advice, but it certainly comes with a lot of risk given that the United States is a first to file country with only an infinitesimally small grace period remaining. If you are going to look for a general rule it should be this: file early and often – at least a provisional patent application. Today you simply cannot assume that you will be able to wait to file a patent application and everything will be all right!

It is undoubtedly true that inventors and startup businesses are required to do many different things in order to succeed. There never seems to be enough hours in the day, and there is never enough money to do everything that needs to be done without cutting corners or at least engaging in a certain amount of triaging. But given the patent laws have changed to become first to file it is imperative that inventors and startups interpret the law to mean file first before you disclose anything, demonstrate your invention publicly or offer it for sale. The risk of waiting to file a patent application is simply too great and may forever foreclose the ability to obtain a patent.

Of course, you do not need to rush to file a non-provisional patent application. A properly constructed provisional patent application can and will suffice.

For more information see The Risk of Not Immediately Filing a Patent Application.

 

3. Provisional patent applications can be your friend

While many inventors are no doubt aware of “provisionals,” in my experience there is a significant misunderstanding. First, there is no such thing as a provisional patent, period. What you are doing is filing a provisional patent application.

Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered inventors the option of filing a provisional application, which was designed to provide a lower-cost first patent filing in the United States and to give U.S. applicants the ability to obtain an earlier filing date without patent term starting to run. Patent term does not start to run until the filing of a non-provisional patent application.

A provisional application for patent is a U.S. national application that can be filed without a formal patent claim, oath or declaration. The focus is on describing the invention as completely as possible. Many formalistic requirements of a non-provisional patent application are unnecessary to satisfy. A provisional patent application provides the means to establish an early effective filing date in a later filed non-provisional patent application. It also allows the term “Patent Pending” to be applied in connection with the description of the invention.

A provisional patent application has a pendency lasting 12 months from the date the provisional application is filed. Therefore, an applicant who files a provisional patent application must file a corresponding non-provisional patent application during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application. In certain rare circumstance where a mistake or error has been made this 12 month deadline can be extended by 2 months, but this extension is only available for unintentional delays in filing a non-provisional patent application and it is rather expensive, currently costing $1,700 in government fees alone.

Provisional patent applications are typically best used when you continue to work on an invention. You file the most complete application you can describe the invention you currently have. Then you continue working and ultimately file a non-provisional patent application covering the original invention and any subsequent improvements or modifications. There is nothing wrong with using a provisional patent application, but critics are absolutely correct to point out that the vast majority of provisional applications are worthless. To be at all useful the provisional patent application absolutely MUST completely describe invention and all of its various aspects.

For more see Provisional Patents and Tricks & Tips to Describing an Invention in a Patent Application.

 

4. Never enough patent drawings

U.S. patent law requires that ever applicant for a patent must furnish at least one patent drawing (sometimes referred to as a patent illustration) of the invention whenever the invention is capable of illustration by way of a drawing. What this means is that at least one drawing is required when it will assist in the understanding of an invention. Given that virtually everything is susceptible to depiction in a drawing the reality is that drawings are virtually always required.

Regardless of whether a drawing is really required, the single best and more economical way to expand any disclosure in a patent application is through the use of multiple high quality patent drawings. A picture is absolutely worth at least a thousand words and patent illustrations must be viewed as essential for any patent application.

Whatever is shown in the drawings and would be understood by one of skill in the relevant art applicable to the invention is disclosed in the patent application. Furthermore, you should include at least one paragraph of text for each figure you include in the application. Several years ago I asked our patent illustrator to draw me a picture of a Big Mac sandwich and published an article using that example to show how you work with patent drawings. That one illustration could have resulted in 8 to 10 paragraphs of text without much difficulty. See Working with Patent Illustrations to Create a Complete Disclosure. Thus, when you use high quality drawings and you do what you are supposed to do, which is describe what is shown in text, you get double the benefit.

For more information also see Patent Drawings: An Economical Way to Expand Disclosure.

 

5. If you fear being specific don’t seek a patent

I can’t tell you how many times I’ve heard inventors tell me that they do not want their patent applications to be “too specific.” It seems these inventors have decided that what they need is a patent that is extremely broad and they don’t want a bunch of details getting in the way of narrowing their rights. If you are afraid to be specific in a patent application then you really shouldn’t be seeking a patent in the first place, and instead should be keeping what you have invented to yourself as a trade secret to the greatest extent possible (if possible).

Years ago when I interviewed Hall of Fame inventor (and billionaire) Dr. Gary Michelson, we talked about overly broad claims. He rhetorically asked me – why would I ever want an overly broad claim that is obviously invalid? Michelson, who sold his patent portfolio to Medtronic for $1.3 billion, said an invalid claim simply doesn’t help. “I want the broadest valid claim,” he explained.

The problem with only defining your invention very broadly, or only claiming your invention very broadly, is simple. The broader you define your invention the more difficult (or impossible) it will be to obtain a patent. If you do obtain a patent with a broad, or ridiculously broad, disclosure or claim it will become relatively easy to challenge and defeat. This is because the patent laws require that patent applicants specifically define and particularly identify their inventions. Keeping descriptions broad and nebulous means that the claims will be indefinite (35 U.S.C. 112(b)) and/or that your written description does not support the claims you are seeking (35 U.S.C. 112(a)) and/or that your invention is not enabled (35 U.S.C. 112(a)) because you have not described with the required precision how to make and use the invention without undue experimentation.

For more information please see How to Describe an Invention in a Patent Application.

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 14 Comments comments.

  1. Benny July 10, 2016 5:21 am

    Michelson – “why would I ever want an overly broad claim that is obviously invalid?”
    Because, as I am constantly reminded on this blog, if it is granted it must be presumed valid – and some commentators here have poured vitriol on those who who would take away a right after it has been granted.

  2. Anon July 10, 2016 1:04 pm

    Benny,

    You appear to miss the point of the chastisements that flow your way.

    Yes, there is a presumption of validity. That exists quite apart from the point that Dr. Michelson stressed: “ “I want the broadest valid claim

    It is an entirely separate matter in taking away a granted property right.

    Any “pouring of vitriol” – and certainly any pouring from this author – comes from the lack of understanding of law and how law works. It most certainly does not come from any “obviously invalid” claim that is simply overly broad.

    Claim drafting is geared to cover a spectrum, and certainly the upper edges of that spectrum will be as broad as possible.

    But the point of the quote from Dr. Michelson is that one does NOT want to have as that upper limit ANYTHING this is so blatantly overbroad as to be de facto invalid.

    I think that you want to take your chastisements in the wrong manner – that the chastisements are unjust and that your view is in fact a “correct” view.

    Just from the number of times that we have interacted, I would say that your perception on this accord is just not aligned with reality.

  3. Benny July 10, 2016 3:06 pm

    Anon,
    I understood Michelson to refer to granted claims, not applications. How is a granted claim “de facto invalid”?
    Although overly broad claims are few and far between, they have haunted us in our industry, and Gene’s statement that they are “easy to challange and defeat” is simplistic – try pressing shift-4 a few times and you will see why.
    In engineering we have reality. In law there always seem to be two versions of reality – those put forward by attorneys for the opponent and defendant, or those explained by attorney and examiner. Perhaps you might like to remind me which version of reality I am not aligned with.

  4. Anon July 11, 2016 6:04 am

    Benny,

    You appear to want to choose a side (and that side is anti-patent).

    Sorry, but that just does not make what you wish to be reality into reality.

    (and yes, I noticed your subtle spin: “put forward” versus “explained” – Does it change anything in regards to the law if you switched those verbs?)

  5. Benny July 11, 2016 6:49 am

    Anon,
    You read to much meaning into words and phrases. That works for patent claims but is irrelevant in an informal blog and comment thread. I recommend you loosen up a bit outside of working hours, or you’ll find yourself uninvited to parties.

  6. Anon July 11, 2016 8:32 am

    Benny,

    Do not tell me that I read too much into your “words and phrases.”

    Use better “words and phrases.”

    Thanks.

    (Your concern is misplaced – I am quite amiable and have no shortage of invites)

  7. Gene Quinn July 11, 2016 1:48 pm

    Benny-

    Are you playing stupid for some reason? Serious question, not rhetorical. Just trying to understand what bug has crawled up and why you seem to be intentionally dense to the point of ridiculous.

    Allow me to explain so even you will be able to understand. Patent claims are presumed valid. The presumption of validity does NOT mean that every patent claim issued is or will remain valid. A presumption of validity merely means that you start off believing the patent claim is valid until it is proved to be invalid. Please look up the word presumption.

    A patent claim that is declared invalid is of absolutely no use to a patent owner. That is hopefully self evident.

    A patent claim that is so broad that it will only invite rejections when filed and challenges once issued is not the type of patent claim that leads to anything other than protracted litigation. Sure, you can try and get those claims and rejoice when/if you do, but you better have plenty of non-ridiculous claims that are going to stand up to scrutiny.

    As a professional allegedly working in the industry I would have thought all of this as remedial.

    -Gene

  8. Benny July 11, 2016 4:43 pm

    Gene,
    As you said, broad claims lead to protracted litigation (and horrendously expensive IPRs). That’s fun if that’s how you earn a living as an attorney, but not funny if you are trying to bring a product to market. Gene, companies try to obtain these patents primarily to harrass competitors, not for any other reason. Our company does the same. Surely you know the cost and timescale of invalidating a patent claim, yet you suggested in your article that the process was easy. I don’t use the term dense to describe people who don’t file 200K+18 months in the drawer labled “easy”

  9. Gene Quinn July 11, 2016 10:01 pm

    Benny-

    I’m really starting to get annoyed with you. You are being intentionally dense. If you want to be this level of intentionally dense please go and do it somewhere else. This article was aimed at independent inventors and you are muddying the waters here for absolutely no good reason. Playing as if you know more than anyone else here is getting old and incredibly tiresome.

    Is it easy to reject the type of ridiculously broad claim that many (if not most) independent inventors frequently want to get for themselves? Yes. If the examiner decides not to waste their time and gives them that ridiculously broad claim is it easy to invalidate that type of claim? Yes. It having a claim that is so ridiculously broad worth anything to anyone? No.

    This are very simple concepts. You took issue with the Michelson quote as if you either didn’t understand what he was saying, or as if you were that smarmy jerk who says “but you always say patents are presumed valid and now you are saying that ridiculously broad claims aren’t worth anything because they aren’t valid… so which is it, huh?”

    Wake up Benny. I’m getting sick of this kind of game you play. I want to have a serious discussion of the issues. If the issues are beyond you or you can’t have a conversation without being a jerk then please go elsewhere.

    -Gene

  10. Anil Gupte July 11, 2016 10:29 pm

    “I want the broadest possible claim”. Duh!?

    The best strategy is obviously to draft claims that are as broad as possible considering your own description and the prior art. Then negotiate any narrowing of the claims at the time of examination.

  11. Anon July 12, 2016 6:34 am

    Gene,

    Benny is acting like petulant child, whose feelings have been hurt on other thread topics, and wanted to “strike back” here.

    I have seen this on several forums (not by Benny, but by like-minded people).

    I attribute this to some general notion that since everyone can have an opinion, then every opinion must carry the same weight, and that every opinion should be accepted without criticism or even critical thinking.

    Those that receive such critical thinking – and like Benny, are often simply wrong on the law, on the facts or on history, bristle at the thought of someone else actually knowing more on the subject that they want their opinion to stand uncontested.

    I find it completely unsurprising that very often it is the same people with the same opinions that do not survive critical thinking acting like Benny is acting here.

    The answer of course to Benny and the rest of those who feel that their feathers (and pet opinions) are being ruffled is to understand the criticism, understand any counter points presented, develop a better and deeper understanding of law, facts, and history, and if understanding all of these things, still want to advocate for a change in law, to then propose their pet opinions as desired changes in law and discuss why they would want that change in light of the current law and the law’s background of history and facts.

    That may take some work, and even taking that work, the pet opinions simply may not have any legs to stand on. And that is why we see such repeat behavior.

  12. Benny July 12, 2016 6:53 am

    Anon,
    Of course, there is always the possibility that my company has had to bear the cost of an IPR against an “overly broad claim” which hindered market entry, and my feathers are ruffled when an attorney describes the task as “relatively easy”, and it isn’t as though Gene is not fully aware of the costs and delays involved. I suppose it is easy if you don’t have to pay for it.

  13. Anon July 12, 2016 9:07 am

    Benny,

    Clearly, your emotions have clouded – and continue to cloud – your rational judgment.

    May I suggest that you “get a grip” on your emotions before posting?

  14. Gene Quinn July 12, 2016 3:09 pm

    Benny-

    You are commenting on this thread about a problem that this article does not deal with. Why you are unable to conduct yourself here professionally and honestly is beyond me, but I am once and for all tired of your nonsense.

    Let me be as clear as I can be. This article was written for independent inventors. Many of these independent inventors would simply prefer to describe their proprietary software, for example, as: “software that works on all platforms to perform a desirable function.” If you worked with startup businesses or independent inventors you would know what I wrote is true. You would know that even if they get those ridiculously broad claims it WOULD be easy to challenge those claims and no one would ever take them seriously.

    You are choosing to conflate issues to promote your own agenda and importance. It stops here and now.

    -Gene