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. 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.

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.  It has always been extremely important to keep detailed invention records in case you ever need to prove the particular date you invented. Notice the use of past tense in the previous sentence. On March 16, 2013, the United States moves to a first inventor to file system, which significantly changes U.S. patent law. For all intents and purposes inventors would do themselves well to assume that first inventor to file means file first!

That being said, there is a very limited grace period that is far more narrow than anything the U.S. has previously had. Inventors should not, in my opinion, rely on the grace period whatsoever — it is extraordinarily narrow. Nevertheless, it is conceivable that in some very limited circumstances it will be necessary to demonstrate that someone else derived your invention from you after you disclosed your invention. The only way to be able to hope to prove that will be with detailed records. Thus, record keeping should become more robust moving forward. You will not only need records that relate to how and when you arrived at the invention, but you will need records about how and when you disclosed your invention. Still, filing some kind of patent application as soon as possible will be the best move.

When filing a patent application it is extremely important to make sure that the invention is as fully described as possible. Patent attorneys say this all the time, but what does it really mean? How do you “fully describe” an invention in a patent application?

The answer is that you always want to have as much information about the invention as possible. You want to very broadly and generally describe the invention, but you also need to have high specific discussion of the various nuances of each and every aspect of the invention. Frequently inventors will say to me, “but I don’t want to be highly specific because then it will be easy for someone to get around my invention.”  This is typically following with a very confident: “Therefore, I will only generally describe my invention without mentioning to many specifics.” That is a tragic mistake.

What happens if the patent examiner finds the broad, general description of your invention to be in the prior art? If you don’t have nuances described in your specification what will happen is you will get a rejection that is impossible to overcome. Those nuances are going to be how you distinguish your invention over the prior art, both the prior art you know about when you file but more importantly the prior art that you didn’t know about and couldn’t have known about because it hadn’t yet been published prior to your filing.

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 conception 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 take a State Bar Examination, patent attorneys must have a scientific background or else they cannot even sit for the Patent Bar Examination.  As my friend 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?

It is extremely common for inventors to make mistakes that will render their hopes and dreams of a patent null and void.  I cannot tell you how many times over my career I have talked to inventors who have come up with something really special and are now ready to file a patent application.  Frequently the story is that the inventor created something several years ago (perhaps more) and they have been using it and people love it.  They finally now have the money to pursue a patent and want to get started.  Those familiar with patent law know they cannot get started, because rights have irreparably been lost.  The only recourse is to improve your magnum opus enough so that it is patentably unique compared to your original invention, which is not something that is typically easy for individuals to do.

Another thing I see with increasing frequency is the inventor who doesn’t have much money and who wants to do things themselves.  The first question inventors without much money should ask themselves is whether they should even be pursuing an invention.  The cost of filing for and obtaining a patent is typically quite minor in comparison to the amount of money required to create, market and distribute the invention.  So if you can only muster several hundred dollars and need to file your own application because that is all you have, what are the realistic chances that you will be able to move forward in the commercialization process?  Have you thoughtfully considered what you will do with the patent? Have you explored whether there are realistic licensing opportunities? Do you know there is a market for the invention?

On Wednesday, December 5, 2012, the House of Representatives passed two bills that are now await President Obama’s signature.  The bill — S. 3486— implements both the Patent Law Treaty (PLT) and the Hague Agreement Concerning the International Registration of Industrial Designs.  The U.S. Senate previously passed the same bill in the same form on September 22, 2012. Thus, the remaking of U.S. patent law and patent practice continues, and we will see more rulemaking coming from the United States Patent and Trademark Office.

S.3486 is the implementing legislation that modifies U.S. consistent with treaty obligations. The Senate ratified both the PLT and Hague Agreement in 2007.

With respect to the Hague Agreement,  it will now be possible to file a single application in English at the USPTO and have that application be the basis for design protection in each country that has similarly adopted the treaty.

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. This is far more tragic than you might suspect.

Sure, if you can afford to you should hire a patent attorney to assist you.  The patent attorney is there to, among other things, drag information about your invention out of you and translate it into the archaic legalese used in patent applications.  The job of the patent attorney is to present your invention in a way that is most likely to accentuate the positive — namely the core uniqueness of your invention that will most probably lend itself to being determined to be patentably distinct compared with other inventions.

Even when hiring a patent attorney inventors still need to be engaged in order to give the patent attorney the best information available about the invention. This seems simple enough, but so many inventors fail to understand what information is important and why it is necessary.  If you don’t understand the “why” you will you will almost never be able to provide all the information necessary.

While I don’t mean to imply that inventors are children, a perfect example of what I’m talking about comes from when parents attempt to teach their children not to touch the stove.  Why? Because it is hot, of course. But does the child really understand that? No, not until they touch it anyway and connect “hot” with the pain they experienced. Experiential learning is formative for children, and in my experience the most powerful, formative type of learning — even for adults!

Inventors and entrepreneurs who shop around find that if they take their invention to a number of different patent attorneys they are likely to get a number of different quotes for services ranging from patent searches to patent applications. In fact, you have probably seen the ads on the Internet where a patent attorney or patent agent proclaim that they can prepare and file a U.S. nonprovisional patent application for some ridiculously low price, perhaps as low as $1,400. It is my opinion that there is no legitimate way to adequately prepare and file a nonprovisional patent application for $1,400. In fact, the lowest quotes we typically provide are for between $6,000 to $8,000 plus the filing fees and costs of drawings.  See Cost of Obtaining a Patent.  So why the great disparity? The first thing to understand is that like everything else in life, you get what you pay for. There is just no way to escape that economic reality.

Often times a patent attorney or patent agent will start with drafting a set of claims. In fact, it is probably accurate to say that about 70% of patent attorneys start with the claims. There is nothing wrong with starting with the claims, and there is nothing wrong with starting with the written description, it is a matter of preference really. The claims will be what defines the exclusive rights that are ultimately granted, and many patent attorneys and agents think in terms of claims. The difficulty comes, however, when a set of claims are drafted and then the written description is drafted to match the set of claims crafted. When this occurs the written description is no broader than the claims, which means that there is no support in the written description for anything other than the claims originally filed. This is one way that some bargain basement providers operate, and it can be catastrophic for the unknowledgeable inventor.

There really is no one-size-fits-all approach to inventing that can be claimed to be a road-map to success that will work in all cases. Notwithstanding, there are certainly a number of things that can and should be done early in the inventing process if an inventor is going to pursue inventing as more than a hobby. I continually preach to inventors the need to follow what I call a “business responsible” approach, which is really just my way of counseling inventors to remember that the goal is to not only invent but to hopefully make some money. Truthfully, the goal is to make more money than what has been invested, which is how the United States Congress defined “success” in the American Inventors Protection Act of 1999.  The odds of being successful with one of your inventions increase dramatically if you engage in some simple steps to ensure you are not investing time and money on an invention that has little promise.

I am frequently asked a version of the same question by inventors, which goes something like this: “I have an idea but I am unable to turn it into anything myself.  I am going to need some help.  What should I do to make sure I am protected?”

Patent attorneys and agents reading will likely start to immediately say that ideas cannot be patented and it doesn’t sound like you have anything that could be protected.  I too have explained that to many inventors of the years and written about that very topic (see Protecting Ideas and Moving from Idea to Patent).  But with this presentation there is no way to know yet whether there is an invention lurking there or whether the individual has merely a raw idea without any knowledge about how to bring it into being.  Thus, this question begs the essential inquiry, which is this: At what point does an idea take enough form to be considered an invention that can be protected?  Many times there is an invention that could be defined and protected well before one might suspect.

There is a maze of information available online for new inventors, much of it very good and much of it highly questionable.  Therefore, it is not surprising that aach and every week I receive multiple general inquiries from newbie inventors.  Although the inquiry can take many different forms, the question inevitably boils down to something like this: “I have recently come up with an idea that I would like to pursue.  I have never invented anything in the past, and I have no idea where to start.  Help!”

The first step toward commercializing an invention and making money from it is typically to pursue the patent path.  On the road to a patent there are many mistakes that inventors can make unwittingly, some of which will ultimately make it impossible to obtain a patent.

With that in mind, here is a list of the top 5 mistakes inventors make, followed by discussion of what you should do to move your project forward in an appropriate and responsible way.

As you can probably imagine, over the years I have had the opportunity to work with many inventors, the 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 also capable of meaningfully participating in the preparation of their own patent applications. These folks are motivated, but they simply do not know what to do, or exactly how to do it, and 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 really hard and very complicated.

As I tell students in the patent bar review course I teach, you could not – drunk and on a bet – come up with a more screwy patent system than we have in the United States.  The rules are complex, and unnecessarily so in many (if not most) situations.  For example, do you know how long “a month” is?  I bet you think you do, but I bet you haven’t a clue how long “a month” is considered to be under the rules in place at the USPTO.  See Do You Know How Long A Month Is?

It has come to my attention that earlier today in his e-mail newsletter Hal Wegner has once again attempted to take a cheap shot at yours truly.  Yes, I know that truth and accuracy are not the hallmarks of Hal’s newsletter, and normally I do look the other way when I learn of cheap shots by Hal, which are a dime a dozen. When Hal challenges my business and makes blatantly inaccurate statements I do find it necessary to respond.

In his newsletter Hal takes issue with my Invent + Patent System™, which is an innovative approach to the patent process on which I have my own patent pending.  See U.S. Patent Application No. 20090307004. Hal writes: “[IPWatchdog.com] touts a do-it-yourself drafting system that promises a pro se inventor one (1) hour preparation time for a complete provisional application…”  Again, I do realize that Hal Wegner is not known for his investigative accuracy, and he seems to not let facts get in the way of telling the story he wants to tell.  Notwithstanding Hal’s need to cut down everyone and everything, whether deserved or not, I would expect that even Hal would be able to appreciate that what he wrote is inaccurate and unfair.  In fact, the inaccuracies and lack of due diligence suggest that Hal’s comments may rise to the level of intentional malfeasance.

Although a patent application is not a sales pitch per se, most inventors will find it quite helpful to list as many descriptive objectives of the invention as is possible. As a general rule you should, however, stay away from laudatory language and puffery (e.g. “the best gadget known to man” or “the perfect solution” or “using this tool is unquestionably the choice any professional would make”).  When you puff the tendency is to skimp on the descriptive details, which are essential to an appropriate patent application.  Further, is anyone really likely to take your word for it being “the best”?  That is why infomercials demonstrate the functional capabilities of an invention.  In a patent application you need to describe the functionality and leave the selling to the salespeople later.

By way of example, many times inventions are not one of a kind, but rather they are improvements upon existing solutions. In this situation it is common that the advantage of the new invention lies in that it is cheaper to make, easier to use, more efficient, less noisy, easier to clean, more durable, stronger, faster, more resilient, etc. etc. These are things that you should include in your disclosure, but frequently this type of patentably relevant information is not conveyed with as much detail as possible and appropriate.

I am frequently asked a version of the same question by inventors, which goes something like this: “I have an idea but I am unable to do it myself.  I am going to need some help.  What should I do to make sure I am protected?”

Patent attorneys and agents reading will likely start to immediately say that ideas cannot be patented and it doesn’t sound like you have anything that could be protected.  I too have explained that to many inventors of the years and written about that very topic (see Protecting Ideas and Moving from Idea to Patent).  But with this presentation there is no way to know yet whether there is an invention lurking there or whether the individual has merely a raw idea without any knowledge about how to bring it into being.  Thus, this question begs the essential inquiry, which is this: At what point does an idea take enough form to be considered an invention that can be protected?

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 it 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.”

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 but, as with most things in life, there are pitfalls that can and do trap the unwary and unknowledgeable.

Over the past several months I have received a number of inquiries from inventors who set out to draft their own patent applications.  The inquiry typically goes something like this: “I have a draft patent application and I would like to get an attorney to review and make any necessary changes before I file.”  This is quite a reasonable request, and in fact a very good idea.  I have encouraged this myself on numerous occasions, but now find that a bit of clarification might be useful.

It is certainly true that once you file a nonprovisional patent application your ability to make additions to the application has largely ceased (although you can add claims if the original filing describes what you seek to add).  Even if you are filing a provisional patent application, while you could always file another provisional patent application to correct mistakes, the first filing is only as good as what is disclosed.  Taking the first filed patent application seriously and making sure it has all the necessary disclosure is absolutely critical.  Therefore, having a professional review  your patent application before you file is definitely wise.  The question, however, is when do you seek the assistance?  Frequently many inventors wait too long before they seek help, which means much of what they have done is unusable and various levels of difficult (or impossible) to work with.