I am a big fan of provisional patent applications, and they can be a very useful tool, but only when they are done right. When a provisional patent application is done poorly you not only don’t get any benefit, the filing potentially demonstrates that as of that moment you were not in possession of an invention, which could be catastrophically bad.
Poorly done provisional patent applications are almost certainly useless for their intended purpose, but can be used against the inventor later as a weapon to demonstrate there was no invention, or at least that the invention had not ripened past the idea stage at the critical moment the invention was memorialized at the time of filing the provisional patent application. Therefore, it is critically important to understand what is required in a provisional patent application and not to fall prey to those who knowingly or unknowingly prey on unsophisticated inventors.
First, let me point out that there are some operating on the Internet who are peddling provisional patent courses and/or various methods for drafting provisional patent applications. Inventors and businesses need to be very wary. Not all of those courses and methods are bad, but there are at least some that have been put together by inventors who think a few patent applications make them experts on drafting patent applications. Listening to one who is not a patent attorney or patent agent about what needs to go into a patent application is a little like needing brain surgery and instead of seeking a brain surgeon asking a psychiatrist to perform the surgery since they are familiar (at least to some extent) with how the brain behaves. The first rule of brain surgery is that you need a brain surgeon! Similarly, the first rule of drafting a patent application is that you need the help of a patent professional, which means a patent attorney or a patent agent.
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.
Up until March 16, 2013, conception was quite an important legal concept in the United States because under U.S. law the patent was awarded to the inventor who was first to conceive. See Brave New Patent World: First to File Becomes Law. Although that sounds easy and has been romanticized by many, there were strict legal rules about the proof required for the first to conceive to prevail over the first to file and ultimately be awarded the patent. For the most part those types of issues are now irrelevant. Effective March 16, 2013, the United States is now a “first inventor to file” country, so filing a patent application as soon as you have something tangible enough to qualify as an invention is of critical importance.
But rushing to file is putting the cart before the horse. First you have to get from idea to invention and then to the patent process.
Image taken from US Patent No. 6,655,077 titled “Trap for a mouse”
To paraphrase the famous quote of Ralph Waldo Emerson, if you build a better mouse-trap the world will make a path to your door. Of course, inventors and entrepreneurs frequently take this quote all too literally, thinking that if they make a better product theirs will sell and make them rich beyond their wildest dreams. Obtaining a patent is an important part of a commercialization strategy, but it is but one of the many steps along the road from idea to commercial success.
There are many different reasons why building a better mouse-trap is only the first of many steps on the road to financial freedom. First, there is no guarantee of financial success given by any patent office in the world. This is true even if you have a strong patent that covers a great product that enjoys robust consumer demand. Unfortunately, many inventors operate under the misunderstanding that getting a patent is like owning Boardwalk and Park Place in the popular board game MONOPOLY. The truth is that turning an invention into cash is much more complicated than simply placing hotels on Boardwalk and Park Place. Yes, a patent is an essential ingredient because without one you have no right to exclude competitors from engaging in competitive activities, but you must treat inventing as a business if you want to truly be successful.
I have a few ideas that I think could really be a success. I started researching “how to patent an idea” but have been bombarded with information. I have no clue where to start, and I have only a limited budget. What should be my first step?
This is a question I receive quite frequently. The patent process can be complex and knowing where to begin and how to responsibly pursue your inventions in a cost-responsible manner is not always easy, particularly for first time inventors.
The reality is that inventing and patenting does take financial resources and there is no patent attorney or patent agent who can help you if you have no funds. Limited funding will scare away many, but there are ways to move forward even with limited funding. Of course, the more limited your funding the more you will have to do on your own, which means you need to be prepared to do some reading, becoming as familiar as possible with the process and legal requirements. Thus, the best first step you can take is to familiarize yourself with the concepts, law and regulations. I strongly recommend starting your journey on our Inventing page. There is a collection of “reading assignments” there to lay the foundation on the basic information you will need to know. Each article will also contain links to other articles for more information on the topic.
InventionHome will be hosting the DRTV Product Summit, a one-day event on October 24, 2013, at Robert Morris University that will give everyday inventors the opportunity to pitch their products to six (6) leading “As Seen On TV” companies in one location. Twenty-four (24) inventors will be selected from all of the submissions received and invited to attend the event. Submissions are due by September 30, 2013. The selected inventors will receive 10-minute private pitch sessions with each of the six companies in attendance (60 total minutes). Essentially, this is the inventor/licensee equivalent of speed-dating. There is no fee for either the companies to attend or the inventors selected to participate. InventionHome is paying to cover the cost of putting the event on at Robert Morris University, which is located in Pittsburgh, Pennsylvania.
So why is InventionHome doing this and how will they make money? InventionHome will only make money if one or more of the inventors in attendance strike a deal as a result of interest generated by the pitch and the product subsequently generates revenue on the market. If a deal is closed InventionHome will broker the deal, which means they manage the entire product review and evaluation process, handle contract review and contract signing and ensure royalties are collected when due. The InventionHome broker’s fee for those reaching deals as the result of the Summit is 20% of any net revenue received for a license agreement or 5% of gross revenue if a wholesale agreement is reached.
According to Russ Williams, the President of InventionHome, when this idea was first conceived they wanted to come up with “something that was a win-win for everyone involved.” Initially he told me they were a little anxious about whether something this ambitious would be possible. “When you embark on a project like this you hope and then wonder,” Williams said. “Will we get enough high quality inventions? Will we get enough interested companies? Will both parties perceive there to be value, because if either party doesn’t perceive value it could end up a failure.” But now with two successful events under his belt he sees the sky as the limit. (See the YouTube clip below for information and testimonials from inventors and companies that attend.)
Previously I wrote Describing Your Invention Completely in a Patent Application, which focused on the type of information you want to include to capture the full glory of your invention. This article is a follow-up to that, focusing this time on what the law requires and why, concluding with suggestions to help in breaking through the idea and getting to something more tangible. Reading these two articles in conjunction should give a more complete understanding of what is required and how to get from idea to patentable invention.
I start this tale observing a central reality: Inventors are creative people who observe a problem and envision a solution. Practically anyone can be an inventor because the first step on the path to inventing is the generation of an idea. Unfortunately, ideas cannot be patented and for many individuals the path to invention stops right there. But it doesn’t have to stop there. Frequently you just need some help collecting thoughts and a little push in the right direction. In fact, many people are surprised by what is required to be an inventor and have an invention that is capable of being patented.
One thing that many individuals and professional inventors employed by corporations (i.e., “kept inventors”) have in common is that they frequently do not perceive what they have come up with as worth patenting. So many have the idea that a patent is something that gets awarded to breakthrough innovations, when in fact it is far more common to have a patent awarded to an improvement on an existing product. If you can improve upon something, there is already a market in existence for the underlying product and consumers will perceive your improvement as worth paying for then you very well may have a winning invention. Certainly, you are much farther along the path to success with that trifecta.
Over the years I have had the opportunity to work with many inventors. In fact, over the years I have worked with or advised literally thousands of inventors, the overwhelming majority of which were first time inventors, or inventors who were for the first time attempting to protect their own invention for their own company. I have found that those who are serious are capable of meaningfully participating in the preparation of their own patent applications. Such inventors are highly motivated, but they just don’t know what to do, or exactly how to do it. Frequently they are afraid to mess things up by trying to do something themselves that is over their head, not because they are not smart enough, but rather because this “patent stuff” is quite complicated.
The patent rules at times seem arbitrary (because they are) and show little evidence of an overall thoughtful consideration. For example, why would you ever set up a regime where there are different time frames for completing various mandatory responses for free, but also having the ability to obtain automatic extensions of time of varying length? For example, you will have 3 months to respond to an Office Action issued by an examiner, but that can be extended for another 3 months. But if you get a Notice of Missing Parts you will get 2 months to respond, but that could be extended up to 5 months. Talk about arbitrary lunacy! How is an independent inventor supposed to navigate such a mindless maze?
I am frequently asked by inventors whether they should file a patent application and obtain a patent before they submit the invention to a licensing company like Lambert & Lambert.
This is an age-old question, which is really the patent/invention equivalent of 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 whether you ultimately obtain a patent. So I do believe there needs to be market considerations factored into the analysis. After all, the goal is to make money and investing in a business or to obtain a patent makes sense only if there is a reason to believe more money will be made than spent. Having said that, without at least a patent pending you have absolutely no protection unless you obtain a signed confidentiality agreement, which is not always easy to do. But even if you do obtain a signed confidentiality agreement that contract will only protect you with respect to those who have signed the agreement.
Without a patent pending you also don’t have anything to license other than an idea that lacks tangible boundaries. While that is not always an impediment to moving forward, the further you can develop your idea the better. The more tangible the more valuable. So an idea is worth something to some people, but an idea that has taken more shape and is really an invention is worth even more. An invention that has been defined in a provisional patent application is worth more, and of course an issued patent takes away much of the risk and questions associated with whether your invention is new and unique. But now we are getting ahead of ourselves. The business of inventing needs to be considered a marathon — not a sprint. Take things one step at a time, proceed deliberately and invest little by little and only so long as it makes financial sense. See Financially Responsible Inventing. That is why starting with a provisional patent application is frequently the best thing to do.
How to Write a Patent Application is a must own for patent attorneys, patent agents and law students alike. A crucial hands-on resource that walks you through every aspect of preparing and filing a patent application, from working with an inventor to patent searches, preparing the patent application, drafting claims and more.
Without hesitation I recommend One Simple Idea and think it should be required reading for any motivated inventor. There is so much to like about the book and so much that I think author Stephen Key nails dead on accurate. The book is educational, information and inspirational. For the $14 cover price it is essential reading.
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