Posts in Invention Basics

When is an Invention Obvious?

That being said, the possibility that a utility patent could be obtained cannot be definitively ruled out even if an invention seems quite likely to be obvious, which is one of the biggest problems with the law of obviousness. Indeed, one of the more frustrating things about working with the Patent Office is that there is a real lack of uniformity in application of the law of obviousness. For example, on January 7, 2014, the Patent Office granted U.S. Patent No. 8,622,700, which for all intents and purposes granted rights to the inventor to a glow in the dark ceiling fan blade. If this claim to a glow-in-the-dark ceiling fan blade is ever challenged I see no way that it could survive, but the patent issued.

How to Find Valuable Invention Services

Several years ago I was speaking to an inventor group about carefully selecting who they work with so they work only with reputable companies. At the time one particular invention promotion company, as near as I could tell had a remarkably low success rate. This company reported their successes all-time and reported the number of clients over 5 years, making it impossible to know what the success rate actually was. At best the success rate was approximately 1 in 2,700, but likely was much worse. I asked the room full of inventors this simple question: If I told you that only 1 in 2,700 inventors would ever succeed how many of you would be convinced that you would be the 1 and not the other 2,699? Virtually everyone raised their hand. That eternal optimism is wonderful, but it also contributes to getting taken advantage of by those who make money by telling you your invention is wonderful when that really isn’t the case.

A Better Mouse Trap: Patents and the Road to Riches

Inventors and entrepreneurs frequently take this mouse-trap quote all too literally, thinking that if they make a better product it will sell and make them rich beyond their wildest dreams. Although inventors hate hearing this, the truth is that the invention is the easy part of the process because it is the only part of the entire cycle from idea to commercial success that is completely controlled by the inventor. Once you invent something market forces and the reality of life takes over. There are any number of reasons why an invention won’t make money even if it truly is unique and superior to available alternative solutions.

I Can’t Find Prior Art for My Invention

It is absolutely critical to understand that a reference, such as an issued patent or published patent application, does not need to be identical to an invention in order for the reference to qualify as prior art. A reference can be used as prior art for whatever the reference explains. For example, if you design 5-wheel transportation device you are going to have to distinguish all other wheeled transportation devices, regardless of whether they are identical. So if a patent examiner finds a 4-wheeled transportation device that will be used against you as prior art. It will be up to you to explain why your 5-wheel device is not obvious in light of the 4-wheel device. The critical question will be this: Why wouldn’t it have simply been obvious to simply add another wheel?

Keep Your Money In Your Wallet Until Proof of Concept

most successful inventors and product development companies that I know, start off with a Proof of Concept Analysis BEFORE they start spending money. So if they do it, why not you? A full Proof of Concept Analysis consists of three equally important parts: Business Analysis, Ownership Analysis and Product Analysis. These steps should be developed simultaneously or at least completed before moving on to development or you WILL certainly regret it later. So after you savor that wonderful “Moment of Discovery” and you have finished daydreaming about striking it rich, you really do need to move forward to take a cold hard honest look at your new product. At this point you don’t have to go into excruciating detail, just a quick overview to make sure it is worth pursuing. The questions generated will form the basis of your development process.

Invention to Patent: Pitfalls, Perils and Process

To review, the law recognizes that with many, if not most, inventions there will be three steps to the invention process. The idea comes first, followed by the game plan, followed by the reduction to practice. When dealing with some inventions the idea, game plan and reduction happen rapidly. With other inventions there is some time between these steps. As you go along the way your invention will take shape and become more tangible and identifiable. As that happens you very well may have an invention that could be patented. At some point you will need to do a patent search. I am a fan of inventors doing their own preliminary searches, not because you are likely to find the best prior art but rather to educate yourself and learn. The more you understand the better inventor you will become.

Turn Your Idea into an Invention with a Good Description

In reality, it is probably better to think of the description requirement as the core to patentability. If you can describe your idea with enough specificity you no longer have an idea, but rather have migrated past the idea-invention boundary, which means you have something that can be patented if it is unique. The crux of this so-called adequate description requirement is that once the first four patentability requirements are satisfied the applicant still must describe the invention with enough particularity such that those skilled in the relevant technology will be able to make, use and understand the invention that was made by the inventor. For the most part, and from a legal perspective, this requirement can be explained as consisting of three major parts. First is the enablement requirement, next is the best mode requirement and finally is the written description requirement.

Financially Responsible Inventing: Prototype Basics

Getting professional patent illustrations or engineering drawings is certainly helpful, but there is simply no substitute for having a working prototype. Unfortunately, prototypes cost real money. Even though costs have dropped over the past few years thanks to new technologies, the prototype stage is where inventors start to really burn through cash at an alarming rate. For example, if you build an expensive prototype and then need to make a change because it didn’t work so well that means building another expensive prototype. That being the case wise inventors push off an expensive prototype as far into the future as reasonably possible. Instead consider starting with a 3D model, which is much less expensive than a prototype. 3D modeling starts to bring the invention into focus and really can allow you and prospective licensees and partners to envision the invention in a meaningful way.

Patent Searches: A Great Opportunity to Focus on What is Unique

The patent process can be expensive, so the last thing you want to do is spend a lot of time and money preparing and filing an application when there is easy to find prior art that will likely prevent a patent from issuing. Likewise, a patent search can give you a good idea about the likely scope of any patent claim that you may be able to anticipate. Still further, a patent search will give you an opportunity to discover which aspects of your invention are most likely to contribute to patentability, thereby allowing the description in any filed patent application to focus on those aspects most likely to contribute to patentability. Without a patent search you would just be describing all the various aspects of your invention as if they are equally important, which we know won’t be the case.

The Business Responsible Approach to Inventing

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.

Inventing 101: Protecting Your Invention When You Need Help

So how do you decide whether you have a mere idea or a conception that is on the road to a full blown invention? That is a difficult question to answer and one that has few, if any, bright line rules or useful generalizations. What I would say, however, is this: If you can sketch out the invention on paper (in the case of a device) or list the steps (in the case of a process) you likely have something that is tending toward the invention side of the idea-invention continuum. This is because in order to file a patent application you do not have to have ever made the invention or used it, you just need to be able to explain to others how to make and use the invention. So proofs on paper associated with written text explaining the particulars is enough to satisfy the patentability requirements in the United States. So in many, if not most, cases inventors have an invention capable of obtaining protection far earlier than they likely expect.

The Top 5 Mistakes Inventors Make

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.

Keeping a Good Invention Notebook

Even when we switch to first to file inventors will still in some cases need to be able to detail when they conceived of various aspects of their invention if they are going to attempt to rely upon the grace period. Affidavit practice to establish what was invented, when it was invented and that someone else derived their invention or disclosure from you will still be a part of patent practice even after March 16, 2013. Therefore, it is critical now to have an invention record and will similarly be extremely important even after the switch to first to file takes place.

Inventor Pitfalls: Causing Irretrievable Patent Damage

All too often inventors feel that the assistance of a patent attorney is really not necessary. That is an opinion shared by many unfortunately. It is not unfortunate for the patent attorney really, but rather it is unfortunate for those who hold the belief because invariably those who represent themselves obtain rights that are so narrow that they are practically useless. Recently I have had the occasion to be contacted by several independent inventors who did file their own nonprovisional patent applications and are now facing a First Office Action that rejects all the claims. A First Office Action that rejects all claims is not uncommon, but these applications have little or no useful discussion of the invention so there will be little or nothing anyone can do to help them ever achieve a patent. A bad patent application results in either an extremely narrow patent or no patent at all. All that time, money and energy wasted. These inventors, who are unfortunately the norm for those who represent themselves, may well have had an invention that could be protected but through a faulty application will now likely never receive a patent on their invention.

Patentability Overview: When can an Invention be Patented?

Unfortunately, the patentability requirements are frequently misunderstood, including by the United States Supreme Court. For many who are not well versed in patent law one of the reasons it can be confusing when considering patentability is due to the fact that the first of the patentability requirements asks whether the invention exhibits patentable subject matter. This is sometimes phrased in terms of patent eligibility, which leads the many anti-patent zealots and other patent neophytes to erroneously conclude that if an invention is patent eligible then a patent issues. Nothing could be further from the truth, but those who hate the patent system aren’t exactly concerned with facts or reality. So what is required for an invention to be patented?

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