In my experience the reason most people do not succeed is because they just don’t know what to do, not because they are lazy or unmotivated. My hope is that this article will educate inventors and help take some of the mystery out of the steps associated with turning an invention into a profitable endeavor.
Before you consider contacting anyone the best first place to start is with a simple question, which will help you chart the right course. Ask yourself: What you want to do with your invention? Do you want to make and sell your invention? Or, do you want to sell your invention rights to an individual or company who would make and sell your invention? Or, do you want to try and license one or more individuals or companies to make and sell your invention? After you make this determination your initial strategy should come into focus.
One of the biggest problems that inventors face when setting out to define their invention is with describing what the law refers to as “alternative embodiments of the invention.” Most inventors are quite good at describing exactly what they have invented. The invention is your work and you know it best, so it is not surprising that most inventors can (with enough effort) explain the preferred version of the invention; what the law refers to as the “preferred embodiment.” Nevertheless, it is absolutely essential to think outside the box when describing your invention in any patent application. Stop and think about different ways that your invention can be made or used, even if you deem them to be inferior. Failure to disclose alternatives will almost certainly foreclose your ability to say those alternatives are covered by your disclosure, which will prevent any issued patent from covering those undefined variations.
Focusing only on the large picture and not describing nuances and alternatives may not seem like a big deal, but history has shown that it is critical. If you are lucky enough to have invented something of great importance there will be a number of individuals and companies trying to capitalize on the opportunity you have created. If you dismiss variations or entirely different and unique embodiments then you are leaving those to the individuals and/or companies that would seek to capitalize on a product or process that is similar to your own, but not specifically covered by your patent claims. So what can you do?
In order to obtain exclusive rights on an invention the law requires that the patent applicant particularly point out and distinctly claim the subject matter which the inventor regards as his or her invention. Any patent, or patent application, contains a variety of different sections that contain different information. Generally speaking, a patent is divided into a specification, drawings and patent claims. Only the patent claims define the exclusive right granted to the patent applicant; the rest of the patent is there to facilitate understanding of the claimed invention. Therefore, patent claims are in many respects the most important part of the patent application because it is the claims that define the invention for which the Patent Office has granted protection.
35 USC 112 requires that the applicant shall particularly point out and distinctly claim the subject matter which he or she regards as his or her invention. The portion of the application in which he or she does this forms the claim or claims. The claims are in many respects the most important part of the application because it is the claims that define the invention for which protection is granted.
Like most statutes, Title 35 is not very specific with respect to the details regarding implementation of its directives. Notice that 35 USC 112 only states that a claim is necessary, but does not provide any information on the structure or format of the claim or claims. It is, therefore, necessary to turn to Title 37 of the CFR to expand upon what is actually required. The basic section that deals with claim requirements is 37 CFR 1.75.
Patent terminology can be daunting at times, making it quite unapproachable for a novice inventor to understand what is really going on and what options are available in terms of filing a patent application. Take for example the various types of national patent applications that one can file. A national patent application means a U.S. application for patent that was either filed in the Patent Office under 35 U.S.C. 111 (i.e., directly with the USPTO as a domestic U.S. patent application), or which entered the national stage from an international patent application after compliance with 35 U.S.C. 371 (i.e., initially filed as an international application invoking the benefits of the Patent Cooperation Treaty).
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. One can either file a design patent application (which covers the way something looks, but not the way it functions), a plant patent application (to cover asexually reproduced plants) or a utility patent application. The utility patent application covers what most people refer to as an invention; namely devices, methods, compounds and software, for example. From this point forward we will limit our discussion to utility patents and utility patent applications.
In order to obtain a utility patent one must file what is referred to as a non-provisional application or a non-provisional utility application. It is called “non-provisional” to distinguish it from a provisional patent applications. This distinction between a provisional patent application and a non-provisional patent application became necessary in 1995 when the Patent Office first allowed the filing of provisional applications. A provisional application is one that essentially allows you to file and hold your place in line for 12 months. You can file a provisional application without many of the formalities required for a non-provisional application because the Patent Office will not review provisional applications.
How to Patent an Invention Idea | Moving from Idea to Patent
By now everyone has undoubtedly seen the late night television commercials, and the online ads offering to help you patent your invention idea. Despite what these advertisements suggest, you cannot patent or protect an idea, but don’t despair. 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.
In order to get from where you are to where you want to be you will need to move from idea to invention and ultimately to a patent application, but the idea gets the ball rolling. But in order to get that ball rolling what you need is a strategy to help you move past the idea and learn to describe your idea with enough specifics so that it no longer is what the law would call a “mere idea.” In a nutshell, if you can describe your idea with enough detail you don’t have an idea, what you have is an invention, or at least the makings of an invention. For example, an idea is this: I want to catch mice. An invention is a mousetrap.
It is critical for inventors to document and expand upon any idea. If you continually add more details you will at some point cross over the idea/invention boundary and be squarely on the invention side of the line, which is the goal. What you want to do is explain your idea, as well as any and all aspects and alternatives associated with your idea. This will then get you toward approaching the point where it becomes specific enough for it to be considered an invention. When you reach this point you have something that can be protected and patented.
The patenting process can be very overwhelming and quite costly to an inventor who wishes to secure patent protection for their invention. But there are certain steps of the process that should not be neglected because of financial constraints, otherwise your efforts could actually be counterproductive and work against you in the end, not to mention your money will be wasted.
Regularly, we have inventors come to us for assistance with their inventions but start their conversation with “I have a very limited income.” With the economy being as tough as it is for as long as it has been since the economic downturn, increasing numbers of people are dusting off their old invention ideas and working on them in hopes that a new invention will help get them out of debt and to a better place financially. The problem is these inventors are also often the ones that have little disposable income with which to protect their inventions.
An all too typical conversation with inventors with limited funds starts like this: “I need it to cost under $600, because that is all I have to spend.” But the filing fees payable to the USPTO alone are $130 for a provisional patent application (half that much if you qualify as a micro entity) and a minimum of $800 for a non-provisional patent application (again, half that much for micro entities). If you are successful in convincing the patent examiner you deserver a patent the issue fee due to the United States Patent and Trademark Office will be $480, or $240 if you are a micro entity. Without even considering the cost of patent drawings, which should be considered absolutely essential, or any other fees that may come due during the process, it is impossible to obtain a patent for such a little investment even if you represent yourself.
Everyone views the world through a prism, and the prism I look through is different than the prism others look through. That should hardly come as a surprise given that we each find ourselves at any point in time being where we are as a result of the journey we have taken. It is, therefore, not surprising that those who are patent attorneys will recommend that you should first file a patent application, and it is not surprising that those who are business coaches or licensing executives may recommend a different first step on the path to what will hopefully be success.
I do not begrudge anyone their point of view, or suggest that there is but one right way to successfully get from point A where you have an idea or invention to point B where you dreams of commercial success are coming true, but with every choice there are associated risks. Unfortunately, many inventors still have not received the message about the importance of filing a patent application as quickly as possible. I know this to be true because every week I am contacted by inventors who either have already started selling or using their invention, or who are within a few days or weeks of the same. With the United States being a first to file system, a change that became effective March 16 ,2013, this can be a fatal mistake.
Generally speaking, an invention can be patented if it is new and non-obvious. What obviousness means these days is just about as clear as mud, thanks to the US Supreme Court decision in KSR v. Teleflex. Indeed, what is obvious is largely in the eye of the beholder, although the Patent Office has tried to articulate an objective standard reflected in the so-called KSR rationales. For now lets take a leap of faith and just pretend that there is a consensus with respect to what is and what is not obvious. At least in the first instance when determining whether an invention is patentable that is the way to proceed, because if your invention is not new we never have to ask whether it is obvious. For those interested in getting into the weeds with respect to obviousness I recommend Understanding Obviousness: John Deere and the Basics,Obviousness When All Elements are Not Present in the Prior Art, andWhen is an Invention Obvious.