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There is a maze of information available online for new inventors, much of it very good and much of it highly questionable. Therefore, it is not surprising that each and every week I receive multiple general inquiries from newbie inventors. Although the inquiry can take many different forms, the question inevitably boils down to something like this: “I have recently come up with an idea that I would like to pursue. I have never invented anything in the past, and I have no idea where to start. Help!”
I recently updated our Invention to Patent 101 page, which is an excellent place to start on the journey to better understand the entire process. Having said that, 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.
PLEASE NOTE: As I discuss the following areas of concern I make reference on several occasions to what is called the 12 month grace period. Prior to March 16, 2013, you could engage in certain activities without jeopardizing your ability to obtain a patent in the United States, such as selling your invention. With passage of the America Invents Act (AIA), effective March 16, 2013, everything changed. It is true that there is still a very narrow grace period available and that the grace period lasts a maximum of 12 months. However, it is critical for inventors to consider the new “first to file” patent regime in the U.S. as requiring them to file a patent before engaging in any public use, sale, offer for sale or disclosure outside of a confidential relationship. The grace period can and should be relied upon only in the event of a mistake or accident.
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.
1. Sold the Invention
In the United States you have 12 months from the time the invention was first sold within which to file either a provisional patent application or a nonprovisional patent application. If you wait longer than 12 months then you have forever forfeited the right to obtain a patent in the US. Still, as mentioned above, in the new first to file era for U.S. patent law you should never sell your invention or offer your invention for sale without having first filed a patent application.
Even if you are aware of this rule and you do not sell or offer your invention for sale before you file a patent application there can still be traps that await you. For example, if you file a patent application that fails to adequately disclose your invention and then you start selling you may find out later that the application you filed did nothing to establish priority. That could mean you need to start over fresh with a new application done properly. The trouble now is that you have been selling the invention thinking you were safe, but then learn that the application you initially filed was so defective that it was as if you filed nothing.
2. Publicly used the invention
Public use of an invention can create the same problems as a sale or offer for sale. If you use an invention publicly you have 12 months from the first public use to apply for a patent. If you miss this 12 month window you will not be able to obtain a patent on that which you used publicly. Of course, if you want foreign rights you need to apply first before you use the invention publicly because in many countries there is no grace period of any kind. Remember also that the better advice is simply not to publicly use your invention before you file a patent application that adequately describes your invention.
3. Terrible provisional patent applications
A provisional patent application is a great tool when it is used properly, and devastating when it is not use properly. A provisional application is extremely easy to file because all you have to do is complete a cover sheet and then attach a description of your invention. There are no requirements that the description be in a particular format, and the truth is the Patent Office does not even look at the provisional application. This has lead to many non-lawyers and non-law firm vendors offering provisional patent application services for just a few hundred dollars.
Unfortunately for the unwitting inventor who uses a bargain basement, deep discount service provider, the law requires that a provisional patent application describe the invention with the same level of detail as is required of a nonprovisional patent application. This means that while you can easily get a provisional patent application on file and have a “patent pending” if you do not describe the invention with the level of detail and sophistication required by the patent laws your provisional application is worthless.
Even worse, because you had a patent application pending you may have done things, such as using or selling your invention, as mentioned above. This is a nightmare because if you filed a provisional application that was not specific enough and then used or sold your invention you have forever forfeited foreign rights, and the application you filed may not be able to be used later to support a filing date. Worse yet, a badly done provisional patent application could even conclusively prove that as of the time that you filed the application you did not have a completed invention. Even worse, if you first start using or selling your invention and then you file a provisional patent application you may think you are safe. But if the disclosure in the provisional patent application is so poor it won’t help. By the time you get around to filing a nonprovisional patent application it is now more than 12 months since your first use or offer for sale, which means you could be forever prevented from obtaining rights even in the United States.
The morale of the story is that a bad provisional patent application not only does not help you, but it could significantly and severly hurt you.
4. No professional patent search
I hear all the time from inventors who have done their own patent search and have found nothing similar to their invention. This is the first warning. With well over 9,000,000 US patents and counting, and many millions of published application that have never been patented, it is virtually impossible to do a patent search and not find something relevant. Patent searching is an art more than anything and if you are not intimately familiar with how the Patent Office classifies inventions and how attorneys characterize things then you would never find what you are looking for even if there is a patent out there that covers exactly what you invented.
Obtaining a patent is an expensive undertaking, and saving a few hundred, or even a few thousand dollars by doing your own patent search is just silly. Sure, look for yourself first. I even have an article explaining how to do your own search (see Patent Searching 101 and Patent Searching 102: Using Public PAIR). If you find something then you save the money you would have otherwise paid, but just because you do not find anything does not mean that there is nothing to be found. Why spend many thousands of dollars seeking a patent when a professional patent search would have shown you that a patent would likely not be awarded?
5. No Internet search
Over the years I have preached to inventors over and over again about the importance of doing a patent search. Earlier in my career I would hear from inventors who would say that they searched the Internet thoroughly and could not find the invention so they want to move forward. Wait a minute! There are any number of reasons why a product might be patented and not available for purchase. For example, independent inventors will many times obtain a patent and then not follow the project through, run out of money, lose interest or simply not succeed despite best efforts. Then when someone else has the same or similar idea/invention (which will ALWAYS happen) a search is done, the prior art is found and the decision is made that it isn’t worthwhile to commercialize if a patent cannot be obtained. There are many gadgets not on the market because no patent protection could be obtained because it was patented many years earlier.
Over time, however, I have come in contact with a variety of inventors who do their own patent search, then they have a professional patent search done in the responsible manner. Everything looks clear and then out of no where the inventor finds the exact thing is available for sale on the Internet. How can that happen?
A patent search is just that. A search of patents and published patent applications. You hire trained professionals to do a patent search, but the patent search does not typically include a product search online. That is the responsibility of the inventor. So for goodness sakes, if you come up with an invention the very first thing you should do is see whether it exists and can be purchased online or in stores. If it can be then you shouldn’t move forward. If you can’t find it online don’t celebrate and rush off to hire a patent attorney. Do your own patent search. Then once you confirm that you can’t find it on the Internet and you can’t find a patent reference, then proceed to a professional patent search with an opinion.
Knowing the pitfalls that lie ahead of you will help you stay on the straight and narrow path toward success. You can do it! The invention to patent to commercialization cycle just takes determination, and of course some funds to get things off the ground.
Of course, this article has only focused on certain aspects of getting started. For more basic information on patent basics, inventing, setting a budget, executing the plan and more please see:
- How to Use the USPTO Patent Public Search Tool
- Using Analytics to Assess the Effectiveness of Common Patent Prosecution Practices
- Tips from a Former Examiner on How to Conduct Interviews at the USPTO
- Ten Mistakes to Avoid When Drafting Information Disclosure Statements
- Defanging Descriptive Material Rejections
- Can You Refile a Provisional Patent Application?
- Ten Common Patent Claim Drafting Mistakes to Avoid
- It’s All in the Hardware: Overcoming 101 Rejections in Computer Networking Technology Classes
- Disclosure Requirements in Software Patents: Avoiding Indefiniteness
- Patent Procurement and Strategy for Business Success Part III: Prosecution – Wielding an Invisible Hand
- Patent Procurement and Strategy for Business Success Part II: Claims – Targeting the Right Infringers
- Patent Procurement and Strategy for Business Success: Building and Strategically Using Patents that Target the Right Infringers and Thwart Competitive Countermeasures
- Fit to Drive: Three Inspiring Office Action Responses from the USPTO’s Art Unit 3668
- Design Patents 101: Understanding Utility Patents’ Lesser-Known Cousin
- Two Key Steps to Overcome Rejections Received on PCT Drawings
- Errors in Issued Patents as a Measure of Patent Quality
- Intellectual Property for Startups: Building a Toolkit to Protect Your Products and Design
- Why the Patent Classification System Needs an Update
- Understanding What a Design Patent is Not
- Design Patents: Under Utilized and Overlooked
- Deciding Where to Obtain International Patent Rights
- When to Use the Patent Cooperation Treaty—and Why It’s So Popular
- Why and When Design Patents are Useful
- PCT Basics: Obtaining Patent Rights Around the World
- ipAwarenessAssessment: Inventors and Business Owners Should Start Their IP Journey with this USPTO-NIST Tool
- Successful After Final Petitions Can Help Advance Prosecution (Part V)
- From Agent to Examiner and Back Again: Practical Lessons Learned from Inside the USPTO
- WIPO’s INSPIRE Offers a New Way to Select Databases for Patent Searches Involving Machine Translations
- Understand Your Utility Patent Application Drawings
- Why It’s Time to Board the PCT Train: The Benefits of Filing U.S. Patent Applications via the PCT First
- Implications of Filing Subsequent Patent Applications in the United States (Part III)
- Types of Subsequent Patent Applications in the United States (Part II)
- Getting a Patent: The Devastating Consequences of Not Naming All Inventors
- Getting A Patent: Who Should be Named as An Inventor?
- Make Your Disclosures Meaningful: A Plea for Clarity in Patent Drafting
- Applying for a Patent in Germany
- Autopilot or Advocate? Raising the Bar in Ex Parte Appeals at the USPTO
- Time to ‘Think PCT’: Rethink Your Global Patent Strategy to Preserve Your Seat at the Table
- Patent Office Insights from Two Former Examiners
- Conventional Patent Wisdom Revisited
- Develop Your Database of Templates for Responding to Office Actions
- Background Pitfalls When Drafting a Patent Application
- Eight Tips to Get Your Patent Approved at the EPO
- Four Things C-Suite Executives Need to Know About Patents
- Starting the Patent Process on a Limited Budget
- What to Know About Drafting Patent Claims
- Beyond the Slice and Dice: Turning Your Idea into an Invention
- Mitigating ‘Justified Paranoia’ via Provisional Patent Applications
- Justified Paranoia: Patenting and the Delicate Dance Between Confidentiality and Investment
- Anatomy of a Valuable Patent: Building on the Structural Uniqueness of an Invention