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.
Whether you are an independent inventor, an fledgling entrepreneur or a seasoned inventor who is going out on your own for the first time, the best thing you can do for yourself is to become familiar with the concepts and procedure associated with protecting your inventions. Obtaining patents is not easy for the uninitiated, and without some familiarity you will be wandering aimlessly and wholly incapable of making sound business decisions. Simply stated: Inventors who are completely unfamiliar with the patent process also won’t be able to help in any meaningful way with the patent process, and they will make poor strategic decisions that can lead to the loss of all rights.
So let’s start with the basics. A patent is a proprietary right granted by the United States federal government to an inventor who files a patent application with the United States Patent Office. Therefore, unlike copyright and trademark protection, patent protection will only exist upon the issuance of a patent, which requires you to file a patent application. Simply stated, if you do not obtain a patent you have no exclusive rights. This is why inventors should never disclose their invention outside of a confidential relationship. Such a relationship is legally created immediately upon seeking professional advice from a patent attorney or patent agent, but in all other situations if you do not have a patent you should be extremely cautious about disclosing invention information without a confidentiality agreement. What others learn from you outside of a confidential relationship can be used with or without your permission, and without giving you any compensation.
Furthermore, despite what you may have been told or read, keeping a detailed invention notebook, even if you mail a description of the invention to yourself, provides no exclusive rights whatsoever. It is extremely important to keep detailed invention records in case you ever need to prove the particular date you invented, which even in some extremely limited ways may still be relevant even under a first to file regime ushered in by the America Invents Act (AIA), but keeping such records will never provide you any exclusive rights. You absolutely must file a patent application and have that application mature into an issued patent in order to obtain exclusive rights to your invention.
Pictured (from left) Francis Hamilton (IBM engineer), Clair Lake (IBM engineer) Howard Aiken (Harvard professor) and Benjamin Durfee (IBM engineer) — 2014 National Inventors Hall of Fame inductees for their invention of the Automatic Sequence Controlled Calculator (ASCC)
Later this evening the National Inventors Hall of Fame will induct three IBM (NYSE: IBM) engineers for their invention of the Automatic Sequence Controlled Calculator (ASCC), which was developed more than 70 years ago to rapidly and accurately perform complex mathematical calculations. The ASCC was a precursor to today’s cognitive computing systems like IBM Watson, which rapidly analyze data and learn and interact naturally with people. The ASCC ushered in the programmable computing era, which would ultimately provide the ability to put a man on the moon and to make the Internet a reality.
IBM inventors Benjamin Durfee, Francis Hamilton and Clair Lake, as well as Harvard professor and co-inventor Howard Aiken, will be posthumously honored by the Hall of Fame in a ceremony at the United States Patent and Trademark Office, the home of the National Inventors Hall of Fame. The National Inventors Hall of Fame, Inc. is a not-for-profit organization dedicated to recognizing and honoring invention and creativity, as well as honoring the men and women responsible for the great technological advances that make human, social and economic progress possible.
Durfee, Hamilton, Lake and Aiken will be inducted for their invention disclosed in U.S. Patent No. 2,616,626, which is simply titled Calculator. The patent application was filed on February 8, 1945, but did not issue until November 4, 1952. The invention described in the ‘626 patent was the first automatic digital calculator able to retain mathematical rules in its memory and not require reprogramming to solve a new set of problems. It represented a significant advance. Because reprogramming was not necessary, the invention was a powerful improvement, offering far greater speed in performing a host of complex mathematical calculations.
The only Figure from Davis’ U.S. Patent No. 139,121.
On May 20, 1873, an icon American fashion was born, or at least patented, when the United States Patent and Trademark Office issued U.S. Patent No. 139,121, titled Fastening Pocket-Openings. The ‘121 patent, which was granted to Jacob W. Davis and jointly assigned to himself and to Levi Strauss & Company, ushered in the era of denim blue jeans. The ‘121 patent specifically related to copper rivet fasteners for denim trousers, which proved to be extremely desirable and durable.
Davis, a tailor by training, revolutionized fashion after being asked by a customer if he could create a durable pair of trousers for her husband, who was a woodcutter. When Davis created these pants he used the now familiar copper rivet fasteners. Davis charged only $3 for that first pair of jeans in 1870. See Your Denim Jeans Are a Nevada Invention.
The durable patents with the rivets turned out to be extremely popular, with more and more customers asking for Davis to make them a pair of the rivet clad durable pants. It was at this point that David thought that he was on to something big, which lead him to want to patent what he had invented. In order to accomplish this he approached Levi Strauss and ask him to partner with him. Strauss agreed and paid the patent fees. See Jacob Davis and the Copper-riveted Jeans.
This is one of those articles that I write every so often, in slightly different ways, in order to try and explain to inventors what it is that they need to know before they make an enormously costly mistake. For better or for worse, there is a popular misconception that patent attorneys and patent agents are not really necessary and an inventor can do it themselves and save money. The truth is that patent attorneys are among the most highly trained attorneys you will ever meet. In addition to having to successfully complete law school and taken a State Bar Examination, patent attorneys must have a scientific background or else they cannot even sit for the Patent Bar Examination. As John White explains, a person becomes a patent attorney when they lack sufficient personality and charisma to do tax work! But when it comes to describing your invention in a document that will grant you exclusive rights with respect to only what is disclosed and claimed, isn’t that the exact type of person you want in your corner?
Of course, financial resources can and do provide a real impediment to moving forward with any business opportunity. Unless you are independently wealthy you are almost certainly going to need to proceed one step at a time as you move forward toward your goal of commercial success and financial reward. That means investing wisely, and sometimes doing more on your own than you would like. To get from point A, where you have an idea or early stage invention, to point B, where you are reaping the rewards, it is imperative to proceed in a business responsible way. That must also include proceeding with your eyes fully open and understanding the potential pitfalls and consequences if you are going to attempt to represent yourself in the patent world. If the choice is to move forward on your own versus not moving forward at all, then representing yourself is the only option. If you have the choice and can afford professional assistance, hiring a patent practitioner should be considered essential.
In order for any patent application to be complete the invention must be described with great particularity. Many times an inventor will only generally describe the invention in a patent application, which creates a significant problem.
This problem recently presented itself to me when an inventor provided me with an extremely vague description of their invention and wanted me to do a patent search and prepare a provisional patent application. I explained to the inventor that I needed much more detailed information. The inventor told me that he supplied plenty of information and was not going to supply any more because he wanted to keep the description very general. That is, of course, his right, but a general description is a recipe for failure. I declined representation. I don’t need those type of headaches.
This interaction is more common than you might think. Inventors not only frequently think they know more about patents than a patent attorney, but inventors also frequently think it is best to have the broadest most vague description of an invention possible. Conceptually a general description may seem best, but if you have any knowledge of U.S. patent law you realize that general, non-informative and vague descriptions are unacceptable. The law simply requires more.
Should I file a patent application and obtain a patent before I submit my invention or before I seek outside assistance from a development company? This question is one that I receive with great frequency. Unfortunately, as with most questions in the patent/innovation space, the answer is not as simple or direct as you might expect.
This is an age old question that is really the patent/invention equivalent of which came first, the chicken or the egg. Moving forward with a patent doesn’t make a lot of sense if the invention is not likely to be marketable. I always tell folks that the best invention to patent is one you will make money with regardless of having a patent, so I do believe there needs to be market considerations factored into the analysis. After all, the goal is to make money. Investing in a business, or investing to obtain a patent only makes sense if there is a reason to believe more money will be made than spent. Having said that, without a patent pending you have absolutely no protection, at least unless you obtain a signed confidentiality agreement and even then the protection will be applicable only to those who have signed the agreement.
Last night at the Dolby Theatre in Hollywood, CA, the best and the brightest film stars, directors, producers and more came together for the 86th Academy Awards. This year’s awards ceremony, hosted by talk show personality and comedienne Ellen DeGeneres, was centered around the theme of honoring movie heroes, especially those acts which the camera doesn’t catch on the set.
The big winners were 12 Years a Slave, which came away with 2 Oscars including one for best picture, Gravity, which walked away with 7 Oscars, and Dallas Buyers Club, which saw Matthew McConaughey and Jared Leto come away with Best Actor and Best Supporting Actor respectively.
But this is not an article about the Academy Awards per se. With all the hype about the Academy Awards we thought it might be interesting to see just how many Hollywood celebrities were inventors. Below is our list of the most interesting inventions from a number of well known actors and directors.
EDITORIAL NOTE: Each year February is Black History Month, but this year we will also mark the 50th anniversary of the Civil Rights Act of 1964. With this in mind we decided to do a series celebrating the important and innovative contributions of African-Americans. Earlier this month Eric Guttag wrote The Black Edison: Granville T. Woods. What is below is part 2 of his article on George Washington Carver. To read part 1 visit God’s Scientist: George Washington Carver. Later this month we also will take a look at recent innovations coming out of historically black colleges and universities. For more on this topic please visit black inventorson IPWatchdog.com.
George Washington Carver circa 1910.
Carver received a fair degree of recognition at Iowa State College as the only African-American with advanced training in agricultural science. He also enjoyed a fairly comfortable income considering his very humble upbringing. By being the only African-American with advanced training in agricultural science, many other universities also wanted Carver as a professor in that science.
Then one day in 1896 came a letter from Booker T. Washington, President of the fledgling Tuskegee Institute (its full name then was “Tuskegee Normal and Industrial Institute”). Booker T. Washington was a well-known and influential African-American educator, later to visit the White House at the invitation of then President Theodore Roosevelt. Like Carver, Booker T. Washington had been born into slavery and felt that African-Americans must be educated if they were to achieve economic, as well as racial equality in American society.