Although many inventors believe otherwise, drafting a patent application is not an easy endeavor. Indeed, the United States Supreme Court has described a patent application as one of the most difficult legal instruments to create. There are a great many pitfalls and perils that face anyone who drafts a patent application, particularly inventors who are not intimately familiar with the patent laws and regulations that will apply.
Attorneys are frequently very good at telling would-be entrepreneurs exactly what they should do, but if you have never been an entrepreneur it can be easy to lose sight of the universal truth that no matter how well funded you may be there is never enough money to afford to do everything that needs to be done. Indeed, even if you carefully plan a budget as an entrepreneur you really have to multiple whatever you think you need by a factor of at least 2 or 3 because things will cost more than you assume even if your projections are conservative. For example, it will come as a shock for many entrepreneurs that the cost of electricity for a business is far greater than the cost of the same electricity for a residential customer.
Perhaps you have an idea for a new product simmering in the back of your mind. You’ve done a few Google searches, but haven’t found anything similar. This makes you confident that you have stumbled upon the NEXT BIG THING.
Every day inventors tell me they “haven’t found anything like it,” and while that’s a good start, chances are that they haven’t been looking in the right places.
Before investing additional money and resources, it’s the right time to find out definitively if the invention is unique, determine if there is a market for it, and explore how to make it better.
Inventors should do a search online with a goal of finding two or three competitive products. If they’re scared to do the search, that’s a good thing, because in my experience, it usually means they’re on the right track.
Several weeks ago I wrote about the fourth annual DRTV Summit sponsored by InventionHome. Initially the deadline for inventors to submit their inventions for consideration was September 30, 2014, but InventionHome has extended the deadline for inventors to submit until the end of this week. Submissions are now due by the close of business on Friday, October 3, 2014.
The DRTV Product Summit is a one-day event that will be held on Wednesday, October 22, 2014 at Robert Morris University in Pittsburgh, Pennsylvania. Inventors will be given the opportunity to pitch their products to representatives of the six (6) DRTV companies on one day in one location.
The event is not open to all inventors. Over the past few years the event has grown and there has been significant interest in the inventor community. In order to be considered inventors must submit their inventions to be reviewed by a panel of referees. Thanks to an extended deadline, submissions are now due no later than Friday, October 3, 2014. This submission and selection process insures that only the highest quality inventions are presented to the representatives of the DRTV companies that will be present. This maximizes the value for those DRTV companies, which means they keep coming back year after year. It also reserves pitch time for inventors with the most commercially ready products that have the greatest immediate chance for a deal.
Should inventors be going solo and trying to protect their own inventions? No, at least not if you can afford to hire a patent attorney. Going solo through this patent maze would be similar to trying to remove your own appendix. If you can get to a hospital you should not be removing your own appendix! It is that simple. But there will always be inventors who will proceed on their own. Sometimes this is due to hubris, but frequently it is out of necessity.
There is nothing wrong with representing yourself if the choice is between DIY or not moving forward, but for those who will go it alone it is imperative that they become as familiar as possible with the rules, regulations and best practices. It is for these do-it-yourselfers who proceed out of necessity, but with their eyes open, that I write this and other similar articles.
One very common mistake inventors will make is that they will want to only describe their invention in the most general terms possible. Why would you want to be specific, they ask, because if you are too specific it will be easy for people to get around your patent. It is true that an unnecessarily specific discussion of the invention in a patent application can make it easy for competitors to copy your invention without infringing your patent, but if you file an application that only generally, or vaguely, describes the invention that is even worse.
John Calvert (r) with Senator Birch Bayh (ret.) at PTO 30th Anniversary celebration of Bayh-Dole.
John Calvert, a twenty-four year veteran of the USPTO, retired in June 2014. If you are in the independent inventor or product commercialization communities you undoubtedly know Calvert. After starting as a patent examiner, in 1999 he started working with independent inventors. He would ultimately be in charge of the independent inventor outreach efforts of the USPTO by the time he retired.
Calvert didn’t go quietly off into the sunset though, which is a good thing. A long time friend and champion of the independent inventor he is now going to work with and for inventors in the private sector by and through the United Inventors Association (UIA). As the new Executive Director of the UIA he will lend his time and talents in an endeavor that is near and dear to his heart.
Many within the independent inventor community are well acquainted with John Calvert. Calvert originally started out working for the United States Patent and Trademark Office as a patent examiner, but by the time he retired twenty-four years later he was in charge of the independent inventor outreach efforts of the USPTO. I have known him for a long time, he is a friend, and he has been a champion for the independent inventor community.
When Calvert retired in June 2014 I was saddened to see a him leave, but also saddened because I know how tirelessly he works to inform, educate and assist independent inventors. While he has no doubt earned a quite retirement I am extremely pleased to say that in retirement Calvert will continue to work with independent inventors; he was recently hired as the new Executive Director of the United Inventors Association (UIA). His energy, passion, knowledge and contacts should dramatically impact the UIA in a positive way. Good things are no doubt on the horizon.
Calling all inventors! InventionHome is once again hosting what is becoming a yearly DRTV Product Summit. The one-day event will be held on Wednesday, October 22, 2014 at Robert Morris University in Pittsburgh, Pennsylvania. Inventors will be given the opportunity to pitch their products to representatives of the six (6) DRTV companies on one day in one location.
This will be the fourth such DRTV Product Summit hosted by InventionHome. Over the first three Summits some 66 inventors pitched their inventions in the format described above. 61 of the 66 have left the Summit with at least one of the company representatives expressing some interest in pursuing additional discussions. Ultimately, 18 of the 66 inventors have received either a term sheet, licensing deal or rep agreement.
Unfortunately, this event is not open to all inventors. Over the past few years the event has grown and there has been significant interest in the inventor community. In order to be considered inventors must submit their inventions to be reviewed by a panel of referees. Submissions are due no later than Tuesday, September 30, 2014. The submission and selection process insures that only the highest quality inventions are presented to the representatives of the DRTV companies that will be present. This maximizes the value for those DRTV companies, which means they keep coming back year after year. It also reserves pitch time for inventors with the most commercially ready products that have the greatest immediate chance for a deal.
The focus of this particular article is on the disclosure of the invention in the specification. While it is true that the claims will define the exclusive rights that are granted to the patentee, the specification provides the information through which the claims are read. The specification provides the detail that defines what the claims mean, and as the result of a variety of cases over the past few years the specification is becoming an increasingly important part of the patent application. It has always been required and very important, but Courts seem to be marching the United States toward a strict technological advancement standard, which means the technology, mechanics, structure, architecture and environment in which the invention is used really needs to be described with as much detail as possible in order to guarantee that the claims are viewed as covering an innovation and not something trivial or unimportant.
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?
Before June of 1995, the patent laws in the United States provided that the term of a utility or plant patent ended seventeen years from the date of patent grant. To comply with Article 33 of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement resulting from the Uruguay Round Agreements of the General Agreement on Tariffs and Trade (GATT), the United States was required to establish a minimum term for patent protection ending no earlier than twenty years from the date the application was filed. Thus, the Uruguay Round Agreements Act amended 35 U.S.C. § 154, and these amendments took effect on June 8, 1995.
Generally speaking, utility and plant patent applications filed on or after June 8, 1995, have a term that begins on the date the patent issues and ends on the date that is twenty years from the date on which the application for the patent was filed in the United States. If the application that ultimately issues contains a specific reference to an earlier filed US or international application, the term ends twenty years from the filing date of the earliest such application. This patent term provision is referred to as the “twenty-year term.”