On 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.
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.
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.