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.
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.
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.