I am frequently asked a version of the same question by inventors, many of whom are not really sure that they have an invention yet. The question goes something like this: “I have an idea but I am unable to turn it into anything myself. I am going to need some help. What should I do to make sure I am protected?”
The patent attorneys and agents reading will undoubtedly say that ideas cannot be patented and it sounds this person has nothing more than an unprotectable idea. I too have explained that very thing to many inventors of the years, and written about that very topic (see Protecting Ideas and Moving from Idea to Patent). Of course, every invention starts with an idea. This truth can make it very difficult for inventors to appreciate when they have crossed over the idea/invention boundary, from merely having an unprotectable idea to having an invention that could be protected.
When you ask the question as articulated above there is no way to know yet whether there is an invention lurking somewhere or whether the individual has merely a raw idea without any knowledge about how to bring it into being. Thus, this question begs the essential inquiry, which is this: At what point does an idea take enough form to be considered an invention that can be protected? Many times there is an invention that could be defined and protected well before one might suspect. I find that to be the case particularly with sophisticated inventors who frequently, and mistakenly, believe that if they came up with it then it couldn’t possibly be an invention.
First, it is completely correct to say that ideas cannot be patented. Having said that, it is equally correct to say that you have to start somewhere and at the very beginning every inventor will have nothing more than a mere idea at some point. The patent laws in the United States differentiate between a mere idea and a conception. When you have a conception you have an invention, and the easiest way to define the term “conception” in lay terms is as an idea plus some knowledge regarding how to bring the idea into being, whether your idea is a compound, a product, a process or unique software. So think of conception as an idea plus some appreciation about what it is that you have, why it is important and how you will need to bring it into being.
The actual bringing of the invention it into being is reducing the invention to practice, which concludes the invention process. Patent law recognizes two types of reduction to practice. The first is an actual reduction to practice, which is when you actually build the invention or carry out the process. The second is a constructive reduction to practice, where you adequately describe the invention in a patent application.
Many inventors, or would-be inventors, will get caught up somewhere between idea and conception. Still others will get caught up after a conception but without the ability to move forward to either an actual reduction to practice or a constructive reduction. In many instances the individual presenting the “what do I do?” question will explain that they will need some assistance from an engineer to help them build the device or figure out certain aspects of the invention. In my experience, when one knows that they will need assistance from an engineer they are likely to have something that is more developed than a mere idea, and are struggling with the fact that they know they will need help creating a prototype or preparing engineering drawings, for example. In this case it is likely there is already an invention worth protecting, at least on an initial level.
So how do you decide whether you have a mere idea or a conception that is on the road to a full blown invention? That is a difficult question to answer and one that has few, if any, bright line rules or useful generalizations. What I would say, however, is this: If you can sketch out the invention on paper (in the case of a device) or list the steps (in the case of a process) you likely have something that is tending toward the invention side of the idea-invention continuum. This is because in order to file a patent application you do not have to have ever made the invention or used it, you just need to be able to explain to others how to make and use the invention. So proofs on paper associated with written text explaining the particulars is enough to satisfy the patentability requirements in the United States. So in many, if not most, cases inventors have an invention capable of obtaining protection far earlier than they likely expect.
This is not to say that the endeavor of creating a prototype, even a crude prototype, is not worthwhile. You will learn so much from trying to create a prototype, even a crude one, that you should absolutely endeavor to create a prototype to prove the concept. You don’t need one that costs many tens of thousands of dollars to start, and 3D printing has dramatically dropped the cost, but having some proof that the invention will work on at least some basic level makes all the sense in the world, and will undoubtedly provide you with better information than you could have ever come up with when only describing and proving the invention on paper.
We are starting to get ahead of ourselves though because in most situations the people asking the “what do I do?” question are not capable of providing detailed sketches of the invention, engineering drawings or modeling the invention in 3D on a computer, all of which are relatively inexpensive, but absolutely critical first steps. So what you need to do is define the invention you have to the greatest extent possible and file a provisional patent application. Whatever you define in that provisional patent application will start to be the foundation of the overall invention you ultimately file a patent application on, but it will cast in stone that which you have come up with and are the undisputed inventor of prior to seeking help from others.
I always recommend a patent search prior to filing a provisional patent application because it is a waste of time to engage in a project if there is no chance at obtaining a patent, and even if there is a likelihood of obtaining a patent not knowing what to focus on as the most likely unique aspect of the invention means you are describing the invention in a vacuum, and nothing good can come of that. But you can start by doing your own patent search and then if it looks good move on to a professional patent search. For more on doing your own search see Patent Searching 101 and Patent Searching 102.
As you are going through the search phase you will start to see things that are similar and if you actually read the patents, which should be considered essential, you will start to see how others have described their inventions. This will help you focus on the unique aspects of what you have come up with, which is how you will identify the patentable features. It will also likely be a surprise to many that patent applications and issued patents are NOT blueprints, but rather generalized discussions of the big ticket aspects of the invention with focus on those things that render the invention worthy of a patent (i.e., those things that are unique). In fact, engineering drawings are almost never used in a nonprovisional patent application, although they will be required if you are ever going to build the invention. A patent application is about teaching the invention in its grandiosity. It is not about machining tolerances and appropriate size for a product to be comfortably be placed on a store shelf. It’s not that engineering drawings are bad, and if you want to have very specific drawings that is fine, but you also absolutely need to also have generalized drawings that do not include sizes, etc. that you normally see in engineering drawings. Having specific versions of the invention is fine, but if that is all you have your patent will be much too narrow; far more narrow that necessary in virtually all cases.
So once you have done a patent search you will need to start describing what about your idea is unique and how it is unique. When you are at the point where you can describe the uniqueness of your idea in comparison to other patents and pending applications then you are again tilting heavily toward the invention side of the idea-invention continuum. So if you can describe what is unique and why, and you can sketch out what you have, then you certainly have something that is ready for a provisional patent application.
Once you have that provisional patent application filed you will have 12 months within which to file a nonprovisional patent application claiming the benefit of that provisional filing date.
An effective use of provisional patent applications, particularly when you are going to need help from others, is to secure that first filing date relative to whatever you can explain yourself, seek help, and then as you make progress and the full glory of the invention takes further shape file another provisional patent application. You can file as many provisional patent applications as you want over that 12 month period and the priority date of the invention will be whenever that aspect of the invention first showed up in an application at the USPTO. Some Universities use this serial provisional approach regularly because their scientists are working on cutting edge technology and learning more and more all the time. Then within 12 months of the first filed provisional patent application you file a nonprovisional patent application wrapping together all of the provisionals you filed and adding whatever else new you have since the last provisional patent application.
This serial provisional filing strategy is excellent when you are developing an invention and making progress toward a completed invention. Once complete you can file the nonprovisional patent application that claims the benefit of any provisional application filed within the last 12 months. This is very important now that the U.S. is a first to file nation. You absolutely need to interpret first to file as meaning file first! Filing a provisional application as close in time to conception is very important.
It is also important to know that when you file a nonprovisional patent application you have no additional ability to make additions without filing another nonprovisional patent application, so filing a nonprovisional application during development is frequently not the right choice. Wait until development is complete, and whenever a significant improvement occurs think about another provisional to lock in a new priority date with respect to that new, significant improvement.
Once you get that first provisional patent application filed you are ready to approach others for assistance with your invention. You have a measure of protection, but never forget you have no exclusive rights until the patent ultimately issues. You should also still get a confidentiality agreement signed by anyone who provides assistance to you. While the clock in the US is ticking to file the nonprovisional, the real important significance of confidentiality agreements after a provisional filing is so that those who assist you will not run off with your invention on their own. With this in mind, it is ABSOLUTELY CRITICAL that you get an assignment of rights with respect to any protectable aspects provided by those giving you assistance. You essentially want to set it up so that you pay them for help and in exchange they agree to help you with your invention, agree to keep it confidential and they agree to assign any rights over to you because, after all, it is your invention. You should also put into the agreement they sign something about them agreeing to cooperate with a patent application because they may need to be named as a co-inventor.
Thus, the moral of the story is that just because you will need assistance doesn’t mean you do not have an invention worth protecting. Virtually all inventors will need assistance of varying kinds, from patent attorneys or agents, from industrial design engineers, from those who can create engineering drawings and/or CAD drawings and from those who can help with respect to manufacturing and distribution. The key is that you need to take responsible steps as early as practical to understand what you have, know what others have related inventions and then define your idea so that the core uniqueness can be appreciated. When you can do that it is safe to say you no longer have an idea, but rather you have an invention.
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5 comments so far.
Kip AzzoniNovember 6, 2016 08:47 am
Thanks Gene. Great piece. Very helpful the way you explain, “the easiest way to define the term “conception” in lay terms is as an idea plus some knowledge regarding how to bring the idea into being, whether your idea is a compound, a product, a process or unique software. So think of conception as an idea plus some appreciation about what it is that you have, why it is important and how you will need to bring it into being. Thanks for being such a voice to all us indie inventors.
Gene QuinnNovember 5, 2016 03:12 pm
Thanks Lost in Norway. I’m glad to hear that practitioners find these articles useful as well. Cheers.
Lost In NorwayNovember 5, 2016 02:25 pm
Oh! I missed your “conception is an idea plus a game plan” phrase 🙂
Lost In NorwayNovember 5, 2016 02:24 pm
I just wanted to let you know that your articles for inventors have also been a great help to me as a patent practitioner. These are the questions I get from almost every inventor. They help me to put myself in their shoes and squeeze that invention out of them.
Dr.S.Rama murthyNovember 5, 2016 12:41 pm
Very good article distinguishing idea and conception and the importance of prior art search for the inventors.