Posts in Invention Basics

There is no such thing as a provisional patent

It is important to understand what a provisional patent application is, what benefits are provided and perhaps most importantly what a provisional patent application is not. First and foremost, there is no such thing as a provisional patent. It is absolutely critical to understand that a provisional application will never mature into an issued patent! Ultimately, if you are going to want to obtain a patent you will need to file a non-provisional patent application. Thus, a provisional patent application is best viewed as an economical first step on the path to a patent.

First to File Means File First! The Risk of Not Immediately Filing a Patent Application

When people say that inventors do not need to start with a patent application and can wait to file I cringe. It is not that this is universally bad advice, but it certainly comes with a lot of risk, even more risk now that the United States is a first to file country with only an infinitesimally small grace period remaining. Today it is imperative that the U.S. first to file laws be interpreted to mean file first before you disclose anything, demonstrate your invention publicly or offer it for sale. The risk of waiting to file a patent application is simply too great and may forever foreclose the ability to obtain a patent.

Understanding Obviousness: John Deere and the Basics

The legal determination about whether an invention is obvious seems completely subjective and sometimes even arbitrary. In some technology areas nothing ever seems to be obvious, in other areas virtually everything seems to be obvious. This requires a patent attorney or patent agent to have familiarity with how patent examiners interpret the law of obviousness in a particular innovative area. You might suspect that this would mean that for low-tech gadgets it is more difficult to describe an invention that is non-obvious; while in high tech areas it would be easier to describe an invention as non-obvious. That frequently isn’t the case though, which leads to even greater frustration for inventors.

Describing an Invention in a Patent Application

It is absolutely critical to understand that this complete and full description MUST be present as of the filing date of your application. If you file an application that does not describe the invention to the required level required by U.S. patent laws the application is defective and it cannot be fixed. The only way to fix an inadequate disclosure is to file a new application with an adequate disclosure, but that means you obtain no benefit from the filing of the earlier inadequate patent application.

When should you do a Patent Search?

When to get a patent search done is largely a matter of choice, but one that also depends upon the purpose of the search. Most frequently, inventors will seek a patent search once they have an invention that they think is worth patenting, but sometimes inventors won’t yet have an invention that is complete, but would like to get a sense of the patent landscape to determine whether it even makes sense to continue the project and whether there may be some available space that they could target. These are two different purposes for a patent search, so the first step is to determine why it is that you want a patent search.

Plausibly estimating the market for your invention

There is nothing wrong with dreaming, but there is an extremely important cautionary tale to be told about the tremendous harm that can be done to opportunity when inventors exaggerate the market size for their invention. People with money or those who control distribution channels don’t usually prefer to do business with those who are not professional. They also don’t appreciate exaggeration because it screams that you are unrealistic, which means you will be difficult to work with in the long run. Nobody enters a business deal with someone when they think they will only create a headache.

Every invention starts with an idea

The truth is you cannot patent or protect an idea or a concept. However, it is also an undeniable truth that all inventions start with an idea, but an idea is not something that can be protected by any form of intellectual property protection. Said another way, you simply cannot patent an idea or concept. Similarly, you cannot copyright or trademark an idea or concept. So what do you do when you have an idea? How much is required in order to have an invention?

Patent Drafting: Identifying the Patentable Feature

Without a patent search you will invariably describe all aspects of the invention with equal importance, although we know from experience that there will always be certain features that deserve greater attention because they will contribute more to patentability. While it is helpful to identify any difference between an invention in the prior art, it is critical to spend the greatest amount of time discussing the features and variations that that will contribute to a patent being issued; that is where the patentable invention resides. This uniqueness will allow you to build a patent application that can lead not only to a patent, but a patent that meaningfully protects the core of what makes the invention unique compared with the prior art.

The Importance of Keeping an Expansive View of the Invention

You want to capture everything you possibly can in a patent application. That means generally describing the invention, it also means specifically describing the invention and all the different versions (called “embodiments” in patent speak). The only power of a patent is to prevent others from doing what is covered in the patent. With your patent you want to prevent would-be-competitors from directly competing and from competing with substitutes, even substitutes that are inferior. Think of the patent as creating a wall around your invention. You do not have to use all of what you capture/define in your application, but having it will create the barrier to entry that can insulate you from copyists or those who want to get into your market and offer something as close as possible without actually infringing.

Patent Application Drafting: Ambiguity and Assumptions are the Enemy

Explaining the function of the invention is helpful, but only explaining something in terms of function leaves many questions unanswered because it is not terribly descriptive. For example, assume you are unfamiliar with a couch. If I were to try and describe a couch by explaining that you sit on it to watch TV, would that bring to mind a couch? It might, but it might also bring to mind a chair (of various sorts), a recliner or perhaps a love seat. Maybe even a bar stool. Notice also that when describing the couch for sitting we are leaving out lying on the couch. If I were to describe the couch structurally, however, the reader would be able to understand that you could sit on it or lay on it. The description would also easily distinguish the couch from a bar stool or chair. Thus, describing function can be helpful to get the reader thinking in the right direction, but normally it does not bring the reader all the way to an unambiguous understanding.

Getting Your Invention to Market: Licensing vs. Manufacturing

Of course, whether you are going to pursue licensing or manufacturing, for the first lesson is to realize that there are no tricks to invention marketing. It just takes work. Of course, you need to first determine what it is that you want to accomplish with your invention, which should be covered in some form of patent pending prior to beginning commercialization efforts. But once you have determined which path to follow you just need to focus your efforts and attention to identifying opportunities, pursuing them and not taking no for an answer. Certainly, there may be a time that you will have to retreat and move on, but those who succeed by and large share the same quality of determination. Determination is critical.

Obtaining Exclusive Rights for Your Invention in the United States

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… 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… 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.

Completely Describe Your Invention in a Patent Application

Simply said, a patent application is only as good as what is included within the application, and general or vague descriptions do nothing more than guarantee that no patent will ever issue. Beyond that, how can you realistically do a patent search on a first level, vague articulation of an invention? At present there have been more than 8.7 million U.S. utility patents granted and over 700,000 design patents granted. I can guarantee that if you vaguely describe your invention it will be easy to find prior art that will be exactly what you have described. Of course, when you see it you will say: “that isn’t anything like my invention.” But if you say your invention is multi-purpose knife, for example, and that is all you say then any multi-purpose knife would be prior art that would prevent you from obtaining a patent.

The Successful Inventor: Patenting Improvements

Perhaps Edison’s most famous invention was the light-bulb. Truth be told, however, Edison didn’t really “invent” the light-bulb. Edison significantly improved upon the technology by developing a light-bulb that used a lower current electricity, a small carbonized filament, and an improved vacuum inside the globe. Edison’s invention lead to a reliable, long-lasting source of light. Prior to Edison’s invention light-bulbs lasted only a few hours, but after Edison’s improvement light-bulbs could last 50 to 60 days, making them practical for the firs time. So it is entirely fair to say that Thomas Edison invented the first commercially useful light-bulb, which was an improvement on previously existing light-bulbs.

Protecting Ideas: Can Ideas Be Protected or Patented?

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… 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… Many people will have great ideas, but what separates those who can turn their ideas into money from those who cannot is a strategy to define the idea enough so that it can become an asset that can ultimately be protected.

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