Posts in Patent Basics

Patent prosecution can sometimes seem to be a rather byzantine process. As with anything, the more you understand, the better prepared you will be for the strategic decisions that lie ahead, some of which will result in a streamlined patent approval, but which will also raise the overall cost of obtaining the protection desired. In this regard the patent process is full of trade-offs. For many, getting a patent quickly is very important, as is the case with high-tech start-ups and SMEs seeking reputational advantages, additional funding, licensing opportunities and partnerships. With this in mind, here are eight helpful tips co-authored with the Morningside IP team and specifically aimed at those applicants filing at the European Patent Office (EPO) who are hoping to obtain a strategically reasonable set of patent claims with a streamlined patent application approval process. Of course, following these eight tips can and should also pay dividends with respect to getting your patent approved in other patent offices around the world.

Executives that have decision making capacity within any innovation-based organization, whether a young startup or a Fortune 500 corporation, almost universally have little or no familiarity with patents from a legal perspective. Sometimes these leaders also have little familiarity with science or technology, and are hired because they are particularly adept in leading a rapidly growing company with hopes of an initial public offering (IPO), or because they have shown a particular facility with raising ever increasing rounds of capital from investors, or for their ability to make returns to early investors on their capital investments. Whatever the case, after a high-tech startup has outgrown the founders as being the top leaders in the C-suite, it is commonplace for the top decision makers in those high-tech companies to be far more familiar with the business and marketplace realities facing technology companies than the actual science and technology that made them high-growth darlings in the first place.

If you are an inventor new to inventing, you undoubtedly believe you’ve come up with an idea, or two or three, that could really be successful. That eternal optimism and belief in one’s self is precisely what every inventor needs to succeed. Now, if you are like the so many others who have walked in your footsteps before you, you’ve probably started researching how to patent an idea but have quickly become bombarded with information from a variety of sources.  “I have no clue where to start, and I have only a limited budget,” is a typical new inventor question. “What should be my first step?” The patent process can be complex and knowing where to begin and how to approach the process in a cost-responsible manner is not always easy, particularly for first time inventors. Of course, before proceeding it is worth first asking why it is you want a patent? The road to invention riches may, or may not, include obtaining a patent, although at least filing a provisional patent application can be and usually is a wise first step for a variety of reasons.

In order to obtain exclusive rights on an invention, you must file for and obtain a patent. Many inventors will initially opt to file a provisional patent application to initiate the application process, which is a perfectly reasonable decision to make, and will result in a “patent pending” that can even result in a licensing deal. Ultimately, if a patent is desired, a nonprovisional patent application must be filed, and it is this nonprovisional patent application that will mature into an issued patent. U.S. patent laws require that the patent applicant particularly point out and distinctly claim the subject matter which the inventor regards as his or her invention. Any patent, or patent application, contains a variety of different sections that contain different information. Generally speaking, a patent is divided into a specification, drawings and patent claims. Only the patent claims define the exclusive right granted to the patent applicant; the rest of the patent is there to facilitate understanding of the claimed invention. Therefore, patent claims are in many respects the most important part of the patent application because it is the claims that define the invention for which the Patent Office has granted protection.

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 so into focus  with enough detail that it will cross the idea / invention boundary.  It is when an idea matures to the point of being concrete and tangible enough to be described to another that the idea has become an invention, at least in general terms.

As mentioned in Part I of this series, many inventors will seek to obtain some kind of patent protection so they can stake claim to their invention. Filing at least a provisional patent application is a necessary strategy, because when you file a patent application you are articulating your invention and getting on record with a filing date that cannot be taken away from you with respect to whatever is in your patent application. A provisional patent application can be a great first step, particularly if you are going to need some assistance later to develop your invention. It is also a good first step because you do not need a confidentiality agreement when dealing with a patent agent or patent attorney because the law already requires that information learned from clients or even prospective clients must remain confidential. So, even if you just seek the advice of a patent attorney or patent agent and never wind up hiring them, they are legally required to keep what you tell them confidential. This legal requirement is much stronger than any confidentiality agreement you could ever have them sign. This is true because any confidentiality agreement will say that if the information becomes public the signer is no longer obligated to keep the information secret. There is no such “out clause” in the attorney-client privilege. What you tell a patent attorney or patent agent about your invention is confidential and will remain confidential even if no representation relationship ever is undertaken.

Most inventors understand that a certain amount of paranoia goes a long way when dealing with an idea or invention. Ideas cannot be patented, but every invention starts with an idea. When you have an idea that has been sufficiently formulated and described in a provisional patent application, you may even be able to license that invention idea without yet having received a patent. This all falls apart if you tell others about your invention or otherwise disclose your invention before a patent application is filed. Worse, if you tell someone your idea without a confidentiality agreement, they are free to use the idea without paying you anything. It can feel like the wild west sometimes for inventors seeking to become entrepreneurs—whether their dreams are to license inventions, to build a company to sell a product, or to offer a service representing the invention. Once your idea crosses the idea-invention boundary (discussed here), you can receive a patent, provided of course that it is new and nonobvious. But if you start telling others about your invention, they could make and use your invention without paying you—which is bad enough, but the mere act of someone else moving forward with your idea could forever prevent you from obtaining a patent.

From a conceptual standpoint, it would seem logical to assume that writing text to describe a particular invention ought to be easy for the inventor of that invention. Unfortunately, it isn’t that simple. While inventors are very good at inventing, they tend to be less good at many of the adjacent and necessary tasks along the road from invention to market success. Indeed, while an inventor undoubtedly knows the invention better than anyone else, it can be enormously difficult for inventors to describe their own inventions. The inventor of a new and useful invention is always in the best position to describe the invention. The problem lies with the reality that most inventors simply don’t understand what needs to be described in order to satisfy the U.S. patentability requirements. And, sadly, when inventors forgo professional assistance, they all too often wind up focusing their entire description of their inventions on how their new device or gadget will be used at the expense of describing the parts and pieces that make up the invention. This is an enormous mistake, and one from which there is often no recovery.

Selling an idea and waiting for lottery-like winnings to arrive at your doorstep seems to be the American dream. It is certainly the dream of every inventor, and it is a dream fanned by late night television commercials that suggest all you need is an idea companies will be falling over themselves to pay you for the rest of your natural life for the right to use it.

It all sounds too good to be true! Well, that’s because—in its most simple terms—it is. That doesn’t mean there isn’t a kernel of truth to the story. There’s just a little more to it than suggested by those late night commercials.

Let’s begin with a simple question: Can you sell your idea for profit? The short answer is yes, absolutely. And, if you come up with the right idea, you can make a very handsome profit. But there is a bit of a catch (or problem really). The problem (or catch) has to do with the definition of what qualifies as an idea worth paying for and what qualifies as something too vague to be worth anything.

It is worth remembering, however, that an invention notebook is not just for proving when you invented aspects of your invention, which will rarely if ever be necessary for the overwhelming majority of inventors now that the U.S. follows first inventor to file laws. An invention notebook or invention record is comprised of a collection of notes that will be critical for you as you progress down the invention path. While we might all like to flatter ourselves with how capable our memories are, you are likely to try so many different things that either fail or succeed to varying levels that days, weeks or months later you will not be able to remember every aspect of your efforts. This can and will lead to a need to recreate the wheel. So, keeping a good invention notebook is far more useful as a personal reference than it is for evidentiary reasons.

The term patent pending is a well recognized term of art that many inventors rightfully covet. It subtly, and very directly, conveys great meaning. It means that an inventor has taken steps to protect their invention in hopes of ultimately obtaining a patent. It also conveys to consumers the aura of innovativeness. Of course, patent pending status is just a stop on the road to obtaining a U.S. patent.

Obtaining a patent can be the best business move you could ever make. On other hand, it may wind up costing you time, energy and a lot of money that you didn’t need to spend. The investment placed into getting a patent may be wise, but it is important to realize that no one is simply going to show up on your doorstep with a money dump truck and unload lottery like winnings onto your stoop. The road to riches in the invention world is hazardous, has many detours and seldom goes as planned. That is why the first question you absolutely must ask yourself before you rush off to your friendly neighborhood patent attorney is this: Why do you want to get a patent?

When you are moving from idea to invention to patent, regardless of how or why you find yourself stuck in the idea phase, the first order of business to get the ball rolling. You need momentum. In order to get that ball rolling what you need is a strategy to help you move past the idea and learn to describe your idea with enough specifics so that it no longer is what the law would call a merely an idea.  In a nutshell, if you can describe your idea with enough detail you don’t have an idea, what you have is an invention, or at least the makings of an invention. Here are 7 concrete steps you can take to help you get from your idea, to an invention worth patenting.

Many people ask: can ideas be patented? The short answer is no. Unfortunately, despite what you may have heard from late night television commercials, there is no effective way to protect an idea with any form of intellectual property protection. Copyrights protect expression and creativity, not innovation.  Patents protect inventions. Neither copyrights or patents protect ideas. This is not to suggest that ideas are not valuable, but they are not valuable in the same way or sense that pop culture has led many to believe.

The patent process is long and complex, but well worth the effort if it means protecting your invention and your new company. Key decisions made along the way can help simplify future steps in the process and make obtaining a patent significantly more efficient. Early on, determining a patent scope through patentability searches can help narrow a patent application to the important novel aspects that are most worthwhile to protect. Similarly, preparing a thorough provisional application can make the non-provisional application preparation much simpler and afford better protection against later published works or filings by others. By thinking about these key decisions ahead of time and being aware of the patent process, you can be more prepared when the time comes to seek protection for your invention.