Posts in Patent Basics

The best mode requirement still exists, although the America Invents Act (AIA) has largely removed any consequences for failing to disclose the inventor’s best mode, which means the current state of the law is at best a bit murky. But why would you ever want to file a patent application that does not disclose something that you prefer or regard as better? The goal of filing a patent application has to be to completely disclose your invention with as much detail and description as possible, paying particular attention to alternatives and variations. So while you may be able to get away with not disclosing any preferences doing so would likely be a tragic mistake.

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.

For better or for worse, there is no such thing as a world-wide patent. There is, however, something that approximates a world-wide patent application that can ultimately result in a patent being obtained in most countries around the world. This patent application is known as an International Patent Application, or simply an International Application. The international treaty that authorizes the filing of a single patent application to be treated as a patent application in countries around the world is the Patent Cooperation Treaty, most commonly referred to as the PCT. You can file an International Application pursuant to the rules of the PCT and that application will effectively act as a world-wide patent application, or at least a patent application in all of those countries that have ratified the PCT, which is virtually all of the countries where you would want a patent anyway.

As Key works with inventors he coaches, who he refers to as students because he teaches them how to do much of the work for themselves, he explained that increasingly he is seeing interest on the part of companies in licensing inventions without a patent attached to the product. ”What we have noticed is that companies say they care about patents, but the bottom line is really about speed to market and how fast they are going to be able to sell them,” Key explained. ”The life cycle for products is so short.”

In order for a patent applicant to satisfy the utility requirement the claimed invention must be “useful” for some purpose either explicitly or implicitly. Utility problems normally arise in one of two scenarios. First, it is not apparent why the invention is “useful,” which can occur when an applicant fails to identify any specific and substantial utility for the invention or fails to disclose enough information about the invention to make its usefulness immediately apparent to those familiar with the technological field of the invention. Second, there are rare instances where an assertion of a specific and substantial utility for an invention is simply not credible.

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.

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.

Design patents are, in my opinion, an unfortunately overlooked patent. While a single design patent is a weak form of protection, they can be obtained quickly, rather inexpensively, and you can market the product using the terms “patented design” once a design patent has been obtained. Therefore, inventors and their representatives would do well to consider whether one or more design patents would be useful to supplement protection sought by a utility patent in order to facilitate a larger business strategy.

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. 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.

Inventors and entrepreneurs who are looking to cut costs frequently want to do their own patent search. This is a wise first move, but inventors need to be careful. It is quite common for inventors to do a patent search and find nothing even when there are things that could and would be found by a professional searcher. So while it makes sense to do your own search first, be careful relying on your own search to justify spending the thousands of dollars you will need to spend to ultimately obtain a patent. In other words, nothing in this article should be interpreted as me suggesting that inventors can or should forgo a professional patent search. There is simply no comparison between a patent search done by an inventor and a patent search done by a professional searcher. Having said that, every inventor should spend time searching and looking if for no other reason than to familiarize themselves with the prior art. Of course, if you can find something that is too close on your own you save time and money and you can move on to whatever invention/project is next.

Patents provide a competitive advantage, and those sophisticated in business know enough to look for and exploit whatever competitive advantage exists. Patents are the 800 pound gorilla of competitive advantage, but realize if you are going to want and need significant sums of money from investors rarely does a single invention or patent command attention. No one wants to invest significant funds into a company that has a one-and-done approach to innovation. That is why the most valuable inventions will have applicability in a variety of fields, and will have a variety of different implementations, alternatives and variations.

When setting out on a new endeavor it is not wise to pursue a path to the end and then ask whether what you did was correct. You should seek help along the way to make sure you are doing what is required. Otherwise you are likely to get to a point where the most economical solution is simply to start over.

Estimating US patent costs is a difficult matter because so much depends on the technology involved, but answering “it depends” is not particularly insightful or helpful. What follows are some general ballpark estimates, which should give at least some guidance when trying to budget for the filing of a patent application at the United States Patent and Trademark Office.

It is important for inventors to understand that there is reluctance among some patent attorneys to take on independent inventors as clients. This is at least in part because some independent inventors take up an extraordinary amount of time and rarely convert into clients. Even if they do convert into clients many want to pay a low rate and are never satisfied.

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.