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.
The patent process actually starts well before you file a patent application or seek assistance from a patent attorney. Every patent application starts with an invention, and every invention starts with an idea. While ideas are not patentable, there will be a point in time when the idea you are working on comes into vision with enough detail to cross what I call the idea / invention boundary. To have a protectable invention you have to be able to describe it with enough detail so that someone of skill in the relevant technical field can understand how to both make and use the invention. Once you can do that, or once the patent attorney or patent agent you hire can, you are ready to file a patent application. If you are struggling at the idea phase please see Turning Your Idea into an Invention and Moving from Idea to Patent.
The first step in the patent process should really be a patent search. Doing a patent search is the only way to get a realistic idea about whether the invention is likely able to be protected. There is nothing wrong with inventors doing their own preliminary search, and in fact that is very useful task. SeePatent Searching 101. At some point as your project proceeds you should have a professional patent search done. Only with a professional patent search will you really discover everything that can be found. Just like a novice in your field would make mistakes, as a novice patent searcher won’t find everything that can be found, including many things that really need to be considered during the drafting stage of a patent application. After all, the whole point of a patent application is to articulate how the invention is unique. How can you do that without a comprehensive knowledge of what exists in the prior art?
In many cases, if not most cases, a patent search will suggest that at patent could be obtained. The critical question, however, is not whether a patent can be obtained, but rather whether a useful patent can be obtained. If you layer on enough specifics to any invention you will cross the point where the patent examiner will say your invention is new and non-obvious. But a patent that has such narrow claims is hardly useful for anything other than framing and hanging on the wall.
Unfortunately, despite what you may have heard from late night television, satellite radio commercials or snake oil salesmen, there is no effective way to protect an idea. Copyrights protect expression and patents protects inventions, and neither protect ideas. In both cases the idea is the first critical step, but without some identifiable embodiment of the idea there can be no intellectual property protection obtained and no exclusive rights will flow unto you. This does not mean that you should give up when you only have an idea, but it does mean that you will need to proceed to flesh out your idea to the point where it is concrete enough to be more than what the law would call a “mere idea.” The moral of the story is that ideas alone cannot be protected, so you need to think in terms of invention. Inventions can be patented. You just have to get from idea to invention.
On your journey from idea to invention to patent and ultimately, hopefully riches, please stop thinking that you will get rich by selling your idea to industry and sit back and collect royalty checks for doing nothing. If inventing were that easy everyone would be a filthy rich inventor! Ideas are a dime a dozen. What is valuable is not the idea that it would be wonderful to have this or that functionality, but rather the valuable piece to the puzzle is how to specifically provide that functionality you identify.
If you get stuck in the idea phase don’t just throw in the towel. Many good many inventors will become stuck in the idea phase from time to time, so if that is where you are you are not alone. It may surprise you to learn that you just think you are stuck in the idea phase and you might actually have an invention without even knowing it yet. United States patent laws do not require you to have a prototype in order to apply for a patent, all that is required is that you be able to describe the invention so that others could both make and use it. So while you do need to have some kind of identifiable embodiment you can start by proving your concept on paper.
Most inventors know that a healthy amount of paranoia goes a long way when dealing with an idea or invention. Ideas cannot be protected, so if you tell others they are free to use them unless they have signed an agreement saying they will pay you if they use your idea — good luck with that!
Inventions can be patented, but if you start telling others about your invention they could make and use your invention, which has immediate negative consequences for the patenting of the invention. Outside the United States many, if not most, countries follow an absolute novelty standard, which means you need a patent application on file before any public activity associated with the invention. Since March 16, 2013, the United States is also a first inventor to file jurisdiction. There are exceptions, but extraordinarily narrow exceptions. So narrow are the exceptions to first inventor to file prevails that they are hardly worth mentioning and not at all worth relying upon. So you really need to consider the law as rather black and white — file first before doing anything public.
Of course, the advice about filing first, which everyone should follow, begs the question about exactly how much paranoia is too much paranoia? After all, many inventors are going to need assistance from someone in order to bring their invention into being.
First, inventors need to know who can be trusted with your invention, and the short answer is not many people. This prompts many to attempt to secure a signed confidentiality agreement prior to disclosing their invention. By all means do try and obtain a confidentiality agreement if possible, we have free sample confidentiality agreements here on IPWatchdog.com that you can use at your discretion. Having said this, don’t be surprised if the other party does not want to sign. This is because prior to the signing of the confidentiality agreement no liability existed for the party receiving the information. After the signing of the agreement liability exists and there is no guarantee that anything of value has been conveyed in exchange, but liability has been created.
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.
Generally speaking, a patent application will publish 18 months after the earliest priority date claimed. What gets published does become prior art, but the rights may never mature into an issued patent. Sometimes it can be quite interesting to look at published patent applications to get an idea about what a company or University may be working toward achieving, as Steve Brachmann does for us every week as part of our Companies We Follow series. But there are no doubt some bizarre patent applications that have published over the years, such as a method of walking through walls like a ghost. See Knowing When You Have Too Much Time on Your Hands. So you never know quite what you will get with a patent application, although the jokesters are typically kept at a minimum given the expense of filing a patent application.
Nevertheless, recently as I was talking with Paul Dougherty of The Patent Box, he indicated that he could run a search that identified the shortest patent claims. It seemed like it could be fun, and perhaps might become a new series here on IPWatchdog.com.
In terms of observations about these claims, although short some of them may be more detailed than you might think, particularly the synthetic gene that makes reference to a particular gene sequence, for example. Of course, biology and chemistry are beyond the scope of my expertise, so these claims are provided here for your consideration. Hopefully some of our regular community members, who I know do specialize in bio/chemical matters will weigh in with comments.
While the gene sequence claim is no doubt more narrow than you might think, others are almost laughably broad to the point where they have absolutely no chance of being issued. For example, there are a couple so-called omnibus claim on this list, although many were located. An omnibus claim is not allowed in the United States and basically says “I claim what is described in the specification.” That type of claiming is simply not allowed and will be summarily rejected without any meaningful, substantive examination. There are also other very short mechanical claims listed, which seem to have no chance of succeeding on a first review by the patent examiner.
There is a great misunderstanding among many inventors and entrepreneurs regarding what many simply refer to as a “provisional patent.” The first thing that needs to be said is that there is no such thing as a “provisional patent.” Instead, what you file is called a provisional patent application. Like any other patent application, a provisional patent application is effective to stop the clock relative to so-called statutory bars and immediately upon filing a provisional patent application you can say you have a “patent pending.”
Perhaps most importantly, now that the United States has become a first to file country and abandoned our historic first to invent ways (see A Brave New World — First to File Becomes Law) it is critically important to file a patent application as soon as practically possible. Filing a provisional patent application that adequately describes the invention will establish priority and satisfies the need to act swiftly under first to file rules. A well prepared provisional patent application is your best friend in a first to file world.
Of course, a provisional patent application must be understood as nothing more than the first step toward receiving a patent. Ultimately you will need to file a nonprovisional patent application in order to obtain a patent in the United States. Still, there are substantial benefits to beginning with a provisional patent application. As with most things in life, however, there are pitfalls that can and do trap the unwary and unknowledgeable.
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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