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.

Those who are even casually familiar with patent law and patent practice undoubtedly know that when dealing with inventions it is always better to file a patent application sooner rather than later. There are many reasons to file sooner rather than later, perhaps chief among them is to prevent the so-called statutory bar from preventing a patent from issuing. The most common statutory bar situation arises when a product that is the embodiment of an invention is publicly used or on sale in the United States more than 12 months prior to a US application being filed. In order to prevent a statutory bar an application needs to be filed promptly, but the 12 month grace period can lull inventors into a false sense of security.

Of course, if you are availing yourself of the privilege of the 12 month grace period in the United States you have already forfeited foreign patent rights. In most of the rest of the world an absolute novelty rule is followed, which means that you must have a patent application on file prior to making any sale, use or public disclosure of the invention. Some will bicker with this as being an overbroad statement, but not by much. If what you sell, use or disclose publicly informs about the invention (which is virtually always the case) you lose the ability to seek foreign patent rights unless you had a patent application on file prior to the informing event. Once again, even the current first to invent law in the United States favors filing early.

But what happens if two or more applications filed by different inventors define the same invention? The old saying is that the more things change the more they stay the same, which very well might be exactly what happens as we transition from interference practice to derivation proceedings.

Most who are even casually familiar with patent law and patent practice understand that it is far better to file a patent application sooner rather than later.  There are many reasons to file sooner rather than later, perhaps chief among them is to prevent the so-called statutory bar of 35 U.S.C. 102(b) from preventing a patent from issuing.  Perhaps the most common statutory bar situation arises when a product that is the embodiment of an invention is publicly used or on sale in the United States more than 12 months prior to a US patent application being filed.  In order to prevent a statutory bar an application needs to be filed promptly, but the 12 month grace period can lull inventors into a false sense of security. What so many inventors don’t realize is that third-party activity can start the 102(b) clock ticking. So many inventors think what they have invented is so unique that no one else could ever have come up with it, thus there is nothing to worry. This logic ignores the reality that creative people do frequently engage in the same inventive activities.

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. Conception is an important concept in patent law because in the United States it is the first person to invent that CAN ultimately receive the exclusive rights on an invention.

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 do it 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?

By now most are likely aware that patent reform is back, once again, with the current draft legislation available for everyone to read.  It is becoming harder and harder to take patent reform seriously, given that it has started to become a little like a bad horror movie where the villain is killed only to reappear in the next episode, a la Jason from the Friday the 13th movie franchise.  Over the last 5 years or so we have been told that patent reform is a done deal, only to have it called off and proclaimed dead due to lack of compromise.  Is this time different?  At the risk of sounding extremely naive, I think this time is different and it is going to happen.  It looks like most of the contentious issues have been ironed out enough to have generated a bill that can be passed and become law.  However, the continued focus on health care reform by the Obama Administration promises to cripple Congress for at least a few more weeks, likely longer.  By the time Congress is operational again, will there be enough interest to do something, even anything?