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 each 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!”
I recently updated our Invention to Patent 101 page, which is an excellent place to start on the journey to better understand the entire process. Having said that, generally speaking the first step toward commercializing an invention and making money is typically to pursue the patent path. For those new to the industry it is important to understand that 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.
PLEASE NOTE: As I discuss the following areas of concern I make reference on several occasions to what is called the 12 month grace period. Prior to March 16, 2013, you could engage in certain activities without jeopardizing your ability to obtain a patent in the United States, such as selling your invention. With passage of the America Invents Act (AIA), effective March 16, 2013, everything changed. It is true that there is still a very narrow grace period available and that the grace period lasts a maximum of 12 months. However, it is critical for inventors to consider the new “first to file” patent regime in the U.S. as requiring them to file a patent before engaging in any public use, sale, offer for sale or disclosure outside of a confidential relationship. The grace period can and should be relied upon only in the event of a mistake or accident.
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.
1. Sold the Invention
In the United States you have 12 months from the time the invention was first sold within which to file either a provisional patent application or a nonprovisional patent application. If you wait longer than 12 months then you have forever forfeited the right to obtain a patent in the US. Still, as mentioned above, in the new first to file era for U.S. patent law you should never sell your invention or offer your invention for sale without having first filed a patent application.
Even if you are aware of this rule and you do not sell or offer your invention for sale before you file a patent application there can still be traps that await you. For example, if you file a patent application that fails to adequately disclose your invention and then you start selling you may find out later that the application you filed did nothing to establish priority. That could mean you need to start over fresh with a new application done properly. The trouble now is that you have been selling the invention thinking you were safe, but then learn that the application you initially filed was so defective that it was as if you filed nothing.
2. Publicly used the invention
Public use of an invention can create the same problems as a sale or offer for sale. If you use an invention publicly you have 12 months from the first public use to apply for a patent. If you miss this 12 month window you will not be able to obtain a patent on that which you used publicly. Of course, if you want foreign rights you need to apply first before you use the invention publicly because in many countries there is no grace period of any kind. Remember also that the better advice is simply not to publicly use your invention before you file a patent application that adequately describes your invention.
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3. Terrible provisional patent applications
A provisional patent application is a great tool when it is used properly, and devastating when it is not use properly. A provisional application is extremely easy to file because all you have to do is complete a cover sheet and then attach a description of your invention. There are no requirements that the description be in a particular format, and the truth is the Patent Office does not even look at the provisional application. This has lead to many non-lawyers and non-law firm vendors offering provisional patent application services for just a few hundred dollars.
Unfortunately for the unwitting inventor who uses a bargain basement, deep discount service provider, the law requires that a provisional patent application describe the invention with the same level of detail as is required of a nonprovisional patent application. This means that while you can easily get a provisional patent application on file and have a “patent pending” if you do not describe the invention with the level of detail and sophistication required by the patent laws your provisional application is worthless.
Even worse, because you had a patent application pending you may have done things, such as using or selling your invention, as mentioned above. This is a nightmare because if you filed a provisional application that was not specific enough and then used or sold your invention you have forever forfeited foreign rights, and the application you filed may not be able to be used later to support a filing date. Worse yet, a badly done provisional patent application could even conclusively prove that as of the time that you filed the application you did not have a completed invention. Even worse, if you first start using or selling your invention and then you file a provisional patent application you may think you are safe. But if the disclosure in the provisional patent application is so poor it won’t help. By the time you get around to filing a nonprovisional patent application it is now more than 12 months since your first use or offer for sale, which means you could be forever prevented from obtaining rights even in the United States.
The morale of the story is that a bad provisional patent application not only does not help you, but it could significantly and severly hurt you.
4. No professional patent search
I hear all the time from inventors who have done their own patent search and have found nothing similar to their invention. This is the first warning. With well over 9,000,000 US patents and counting, and many millions of published application that have never been patented, it is virtually impossible to do a patent search and not find something relevant. Patent searching is an art more than anything and if you are not intimately familiar with how the Patent Office classifies inventions and how attorneys characterize things then you would never find what you are looking for even if there is a patent out there that covers exactly what you invented.
Obtaining a patent is an expensive undertaking, and saving a few hundred, or even a few thousand dollars by doing your own patent search is just silly. Sure, look for yourself first. I even have an article explaining how to do your own search (see Patent Searching 101 and Patent Searching 102: Using Public PAIR). If you find something then you save the money you would have otherwise paid, but just because you do not find anything does not mean that there is nothing to be found. Why spend many thousands of dollars seeking a patent when a professional patent search would have shown you that a patent would likely not be awarded?
5. No Internet search
Over the years I have preached to inventors over and over again about the importance of doing a patent search. Earlier in my career I would hear from inventors who would say that they searched the Internet thoroughly and could not find the invention so they want to move forward. Wait a minute! There are any number of reasons why a product might be patented and not available for purchase. For example, independent inventors will many times obtain a patent and then not follow the project through, run out of money, lose interest or simply not succeed despite best efforts. Then when someone else has the same or similar idea/invention (which will ALWAYS happen) a search is done, the prior art is found and the decision is made that it isn’t worthwhile to commercialize if a patent cannot be obtained. There are many gadgets not on the market because no patent protection could be obtained because it was patented many years earlier.
Over time, however, I have come in contact with a variety of inventors who do their own patent search, then they have a professional patent search done in the responsible manner. Everything looks clear and then out of no where the inventor finds the exact thing is available for sale on the Internet. How can that happen?
A patent search is just that. A search of patents and published patent applications. You hire trained professionals to do a patent search, but the patent search does not typically include a product search online. That is the responsibility of the inventor. So for goodness sakes, if you come up with an invention the very first thing you should do is see whether it exists and can be purchased online or in stores. If it can be then you shouldn’t move forward. If you can’t find it online don’t celebrate and rush off to hire a patent attorney. Do your own patent search. Then once you confirm that you can’t find it on the Internet and you can’t find a patent reference, then proceed to a professional patent search with an opinion.
Knowing the pitfalls that lie ahead of you will help you stay on the straight and narrow path toward success. You can do it! The invention to patent to commercialization cycle just takes determination, and of course some funds to get things off the ground.
Of course, this article has only focused on certain aspects of getting started. For more basic information on patent basics, inventing, setting a budget, executing the plan and more please see:
- Distinguishing Colloquial Obviousness and Legal Obviousness
- Your Developers Could Be Publicly Disclosing Source Code By Using Third-Party Code Repositories
- How to Be an Effective Advocate When Responding To Examiners
- Matching Patents to Products: Determining Which Patents Will Be Implemented in Real-World Commercial Products
- Strategies for Preparing Infringement and Validity Opinions
- Mitigating ‘Justified Paranoia’ via Provisional Patent Applications
- Justified Paranoia: Patenting and the Delicate Dance Between Confidentiality and Investment
- Simultaneous Invention as Secondary Evidence of Obviousness
- Combating the ‘Dunning-Kruger Effect’ in Inventors
- Anatomy of a Valuable Patent: Building on the Structural Uniqueness of an Invention
- How Can I Sell an Idea for Profit? Unlocking the Idea-Invention Dichotomy
- Dear Examiner: I am an Imposter
- Keeping a Good Invention Notebook Still Makes Good Sense
- Patent Pending: The Road to Obtaining a U.S. Patent
- Why do you want a Patent?
- Moving from Idea to Patent: When Do You Have an Invention?
- Protecting an Idea: Can Ideas Be Patented or Protected?
- Investing in Inventing: A Patent Process Primer for Startups
- How to Write a Patent Application
- Filing a patent application is still a smart decision for inventors
- Inventorship 101: Who are Inventors and Joint Inventors?
- Patent Search 101: Why US Patent Searches are Critically Important
- 10 Critical Pieces of Advice for Inventors
- There is no such thing as a provisional patent
- Patent Searches: A Great Opportunity for Inventors to Focus on What is Unique
- Should I File a Patent Application Before Licensing the Invention?
- Can cake designs result in intellectual property protection?
- Turning Your Idea into an Invention
- Learning from common patent application mistakes by inventors
- Why Patent Attorneys Don’t Work on Contingency
- Patentability: The Adequate Description Requirement of 35 U.S.C. 112
- Germany Suspends Requirement of Presidential Signature for Formal Ratification of UPC Agreement
- Patentability: The Nonobviousness Requirement of 35 U.S.C. 103
- Patentability: The Novelty Requirement of 35 U.S.C. 102
- Patentability Overview: When can an Invention be Patented?
- Invention to Patent 101 – Everything You Need to Know to Get Started
- The Benefits of a Provisional Patent Application
- What is a Utility Patent?
- Do You Need a Patent?
- Inventing Strategy 101: Laying the Foundation for Business Success
- Patent Prosecution 101: Understanding Patent Examiner Rejections
- Patent Drafting for Beginners: The anatomy of a patent claim
- The Patent Process on a Tight but Realistic Budget
- Patent Drafting for Beginners: A prelude to patent claim drafting
- Provisional Patent Applications the Right Way, the Wal-Mart Way
- Inventing to Solve Problems
- 5 things inventors and startups need to know about patents
- The Quid Pro Quo – How Bad Patents Can Harm A Startup Company
- There is no such thing as a provisional patent
- What is a patent and where do patent rights come from?