Getting Started for New Inventors

QUESTION:

I am new inventor. I have a couple of products that are new .  The problem is that I have no idea where to start other than a patent.

ANSWER:

We do hear this from inventors a lot, but I have spent my career working with independent inventors.  There is a road map that you can follow to move forward if you are interested.  Doing so will take time and money, but I can help you do it in an economical and sensible way if you are interested.

The first step is typically to file a patent application.  I recommend provisional patent applications, and for what it is worth I file provisional applications on my own inventions (yes I am an inventor too).   When done properly it provides you tremendous benefit for a reasonable price.  You will eventually need to file a nonprovisional patent application (best to think of it as a regular patent application) but the provisional application gives you benefits.  A provisional application will freeze in place your filing date for 12 months, which means that when you later file a nonprovisional patent application it will be entitled to the filing date of your provisional application, at least with respect to whatever you disclose in the provisional application.  So if you do a conscientious job describing your invention in the provisional a later filed nonprovisional application, which will hopefully ultimately mature into an issued utility patent, will be entitled to be considered filed as of the provisional filing date.




An early filing date is important because it prevents what others do after you file from becoming prior art.  So when the Patent Office gets around to reviewing your invention those things that come after your provisional filing date cannot be used against you to prevent the issuance of a patent.  Another benefit of a provisional patent application is that it can be used to conclusively prove that you were in possession of your invention at the time of its filing.  This is important because the US is a first to invent country, meaning the person who invents first is entitled to the patent if sufficient proof can be provided to demonstrate that you are the first inventor.  So having a US Patent Office filing date for a provisional application can be an important piece of evidence to demonstrate your invention date is at least no later than its filing date.  So you get “patent pending” status immediately upon filing a provisional patent, you have locked in your priority filing date and you have 12 months to work on your invention to see whether it will ultimately make sense to move forward with the time and expense of filing a nonprovisional patent application.

Perhaps the best benefit of a provisional is that the cost is substantially less than the cost of a nonprovisional patent application.  Typically my firm can file a provisional application for clients for $1,500 plus the filing fee due to the US government.  A search and drawings can come later, but if you add those to make the provisional application very polished, (which is a good idea if you can afford it). A search with opinion and follow-up consultation typically costs $1,500, and professional drawings can be acquired for $300 or so.  Many inventors simply do not get professional drawings or do a patent search at this point, which is certainly a viable option.  Given the cost of getting an application on file is only $1,500 it is certainly a viable option to hold off on a search and drawings until later.  If you are pretty sure you are ultimately going to move forward with a nonprovisional patent application then doing the search and drawings would be advisable because it makes the provisional application better and you can just rely on the same search later and use the same drawings when you ultimately file the nonprovisional patent application.

In terms of the cost associated with a nonprovisional patent application, that is really tough to estimate without knowing a good deal about the invention.  But when someone uses my firm to create a provisional patent application and then ultimately wants a nonprovisional the amount spent on the provisional patent application is credited toward the cost of the nonprovisional application.

During this 12 months you can tell folks that you have a patent pending, and since your application has been filed you can sell the invention and tell others about the invention without worrying about compromising your patent rights.  It is always best to get a confidentiality agreement when you talk to others about your invention, but once you have a provisional patent application filed it is less important.

So during the 12 month period that the provisional patent application is pending you then move forward with trying to contact those who could manufacture your invention, those who may be able to help you sell the invention or get it placed in stores and you might consider starting a business to move forward.  You can also see if there is interest on the part of anyone to acquire your patent rights.  Truthfully, selling patent rights to a provisional application is not that common, although trying is common.  Trying won’t hurt, but if your ambition is to sell the rights you are probably far better off getting a patent and selling the patent.

We focus on patent practice and do not offer advise or consulting on the manufacturing and/or selling end.  I do know some reputable professionals who could help you with that if you are interested.  In truth, most of the stuff you can do on your own with some guidance.  It just takes determination, and of course some funds to get things off the ground.

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4 comments so far.

  • [Avatar for Gene Quinn]
    Gene Quinn
    October 7, 2010 02:52 pm

    Kelly-

    In virtually all countries around the world except the US the law is about absolute novelty. That means if you sell a product that embodies your invention before you have a patent application on file you lose the ability to obtain a foreign patent. You must file a patent application first before you sell if you want foreign rights.

    After you file in the US, either a provisional or nonprovisional patent application, you have 12 months within which to file a foreign application. If you do not then you lose your filing date and if you have sold the invention you would lose the ability to obtain a foreign patent.

    Essentially, there is no grace period allowed in foreign jurisdictions, only in the US.

  • [Avatar for Kelly]
    Kelly
    October 7, 2010 01:19 pm

    Hello Gene,
    We have gone the route of applying for a non provisional patent and are now patent pending. We have not disclosed or sold our invention yet to anyone. My question is about obtaining foreign patents which we cannot afford to do that at this time nor want to until we know we have a successful product. So if we sell our invention in the US and then want to pursue a foreign patent are our chances of getting a foreign patent lost because of sales made here? I read your article detailing the12 month grace period here for US patents and how that is a problem for foreign patents but just need a little more clarification. Thank you, Kelly

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 5, 2009 12:56 pm

    For patent drawings take a look at http://www.inventiapatent.com/.

    For help with marketing Lambert & Lambert is good – http://www.lambertinvent.com/.

    Good luck.

    -Gene

  • [Avatar for Carmen]
    Carmen
    June 5, 2009 12:48 pm

    This is a great article. Thank you.
    Is it possible to get some contact names for those professionals whom you know that create the drawings, manufacture and help sell inventions.

    Many thanks.

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