Posts in Patent Basics

This page and website contain contain detailed information to help inventors on the road from invention to patent… Below are a sampling of inventor help links to specific patent and invention related information throughout our website. As you read these articles you will invariably come across links to other articles of interest, which you can and really should read. While I believe inventors should take the time to read all of the pages throughout IPWatchdog.com, I have gone through the IPWatchdog.com archives and created several “reading assignments,” which will hopefully make the task of figuring out where to start more manageable, and which will help get you started. I recommend you do them in this order (i.e., starting with Reading Assignment 1), but if you find something that you just need to know then by all means jump ahead. You can also visit our Inventor Education Archive as well.

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… Now that the United States has become a first to file country and abandoned our historic first to invent ways it is critically important to file a patent application as soon as practically possible. Filing a provisional patent application that adequately describes the invention will establish priority and satisfies the need to act swiftly under first to file rules. A well prepared provisional patent application is your best friend in a first to file world.

A utility patent is one of three separate types of patents the U.S. Patent and Trademark Office (USPTO) can award inventors to protect their inventions. Generally speaking, a utility patent will have a term that begins on the date the patent issues and ends on the date that is twenty years from the date the application for the utility patent was filed in the United States. To obtain a utility patent a utility patent application must be filed at the U.S. Patent Office. Many inventors will choose to start the process toward obtaining a utility patent by filing a provisional patent application first and then within 12 months filing a non-provisional utility patent application.

In simple terms: a patent is a grant of rights by the government, for a limited time, that can be used to stop others from making, using, or selling your invention… Knowing your reason for seeking a patent can help you decide whether it is worth the time, money, and effort to seek a patent. It can also help you and your attorney pick the right strategy in the beginning of the process, as well as make appropriate decisions along the way. Let’s consider the merits of each of these common reasons for seeking a patent. As we take a closer look, some of them are more compelling than others.

Inventors know very well what they have invented and what they plan to do with their invention. But the typical inventor has a terrible sense of what their invention could be… All too often inventors and entrepreneurs spend too much time with their heads down, plow forward, and focusing only on the day to day operations associated with inventing. This is, after all, what inventors do and the inventor’s mindset. There is a problem to be solved and solved it must be! The problem this creates, however, is that is prevents inventors from looking at the bigger picture as they are inventing, which can lead to a catastrophe if the tunnel vision gets too severe… It is also critical for inventors and entrepreneurs to have a strategy to succeed, which seems simple enough, but is typically anything but simple for the creative types that are so good at inventing. The goal is not to create an invention that is cool, the goal is not to get a patent, the goal is almost universally to make money. The cool invention and patent are a means to the end, not the end in and of themselves.

Unlike certain rejections one faces in life, a rejection from a patent examiner is never the end of the story, and definitely not final – even when the rejection is called a final rejection all hope is not lost and there are things that can be done to continue to attempt to persuade and ultimately convince the patent examiner you are entitled to a patent… Generally speaking, what you will want to do after you get a final rejection will not be the type of thing you will have the right to do. In that likely situation, the most common thing to do is file what is called a Request for Continued Examination (RCE), which is allowed under 37 CFR 1.114. An applicant request continued examination of an application at any time after prosecution in the application is closed.

First, every patent claim needs a preamble, which is the introductory phrase in a claim… Second, every patent claim needs a transition. The most common transitions are: “comprising” and “consisting of” … Third, the first time you introduce a limitation you MUST introduce it with either “a” or “an”, as is grammatically appropriate… Below in an example of an independent claim that applies the above stated three simple rules, which is taken from U.S. Patent No. 6,009,555, titled Multiple component headgear system.

The patent process can be overwhelming and quite costly for an inventor who wishes to secure patent protection on their invention. But there are certain steps of the process that should not be neglected because of financial constraints, otherwise your efforts could actually be counterproductive and work against you in the end… In other words, even if you qualify as a micro entity, which entitles you to pay 25% of the regular USPTO fees, the fees due just to the federal government will more than eat up a $600 budget and that is if you represent yourself, which can be quite risky.

The art of patent claim drafting is an undeniably difficult art to master. It is, however, essential for those in the patent space to both appreciate, understand and master. Before we put the cart before the horse let’s take a step back. Given the importance of patent claims it is not unreasonable to want to start there, electing to jump right into the deep end. That would be a mistake. That is not how patent attorneys do it, and if you want to succeed that shouldn’t be your approach either. Before you ever think about writing patent claims there are several very basic questions must be answered first.

If serial provisional patent applications seems like a good strategy for Wal-Mart, which is one of the largest corporations in the world, and if serial provisional patent applications is recommended by the likes of Gaudry and Franklin at a well respect law firm like Kilpatrick Townsend, why wouldn’t serial provisional patent applications be an appropriate strategy for inventors, small businesses and start-ups working with a shoestring budget?

Sometimes inventors get so caught up in the creation aspect of inventing that they fail to stop and ask whether they should be investing the time, money and energy into the creation. The key to making money with innovation is to be able to solve a problem that will lead to a product or service that others will be willing to pay for. As Thomas Edison famously learned early in his career, inventing for the sake of inventing is not something that will lead to riches. After one of Edison’s first inventions was a flop he famously vowed to never again invent anything without first researching and determining that there would be a demand for the invention or innovation.

One big problem independent inventors face when they choose to represent themselves is with respect to the very real problem of admissions. Truthfully, those who are representing themselves should be given patent-style Miranda warnings before they file a patent application or say anything during the prosecution of a pending patent application… Another problem is with respect to not wanting their patent applications to be “too specific” and, therefore, keeping everything very general. If you are afraid to be specific in a patent application you really shouldn’t be seeking a patent in the first place.

There are many examples of patents that had virtually no value because the claims were undetectable, unenforceable, or ridiculously narrow. In the process of getting a worthless patent — a bad patent, the company gave up their complete roadmap for how to manufacture and use their product. These bad patents are not just a waste of money, but their competitive advantage is eviscerated by disclosing everything they know. The bottom line: Some patent applications can be very damaging to a startup company.

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.

A patent is a proprietary right granted by the Federal government pursuant to laws passed by Congress. The Congressional power to authorize patents is found in Article I, Section 8, Clause 8, of the United States Constitution. exclusive rights are provided for a limited time as an incentive to inventors, entrepreneurs and corporations to engage in research and development, to spend the time, energy and capital resources necessary to create useful inventions; which will hopefully have a positive effect on society through the introduction of new products and processes of manufacture into the economy, including life saving treatments and cures. See Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480 (1974).