“Starting the patent process on a limited budget doesn’t mean you can’t or won’t succeed, it means you are being responsible. Of course, your budget must be realistic—you cannot expect highly qualified professionals to work on your behalf for free, and you must be willing to put in a lot of sweat equity along the way.”
If you are an inventor new to inventing, you undoubtedly believe you’ve come up with an idea, or two or three, that could really be successful. That eternal optimism and belief in one’s self is precisely what every inventor needs to succeed. Now, if you are like the so many others who have walked in your footsteps before you, you’ve probably started researching how to patent an idea but have quickly become bombarded with information from a variety of sources.
“I have no clue where to start, and I have only a limited budget,” is a typical new inventor question. “What should be my first step?”
Taking the First Step
The patent process can be complex and knowing where to begin and how to approach the process in a cost-responsible manner is not always easy, particularly for first time inventors. Of course, before proceeding it is worth first asking why it is you want a patent? The road to invention riches may, or may not, include obtaining a patent, although at least filing a provisional patent application can be and usually is a wise first step for a variety of reasons.
Inventor coach Stephen Key refers to the filing of a provisional patent application as attaining “perceived ownership” because if you do follow the patent process through to completion you can own the invention you’ve described in the provisional application. Perceived ownership is generally very important because with an application pending you can use the term “patent pending” and potential partners and licensees can evaluate what you claim your invention is as defined by a proper filing with the U.S. Patent and Trademark Office (USPTO).
Find the Funds, Do the Research
Once you do decide that a patent, or at least pursuing a patent by filing some kind of patent application, is a worthwhile strategy it is important to realize that inventing and patenting will take at least some financial resources. Unless you qualify for the pro bono assistance program through the USPTO, no patent attorney or patent agent will be able to help you if you have no funds. To qualify for the pro bono assistance program you would need to have income of no more than three times the poverty line, and even then the pro bono program does not cover licensing assistance or trademark assistance, for example. So, there is no way around the fact that the invention and patent processes require a financial investment, and it is virtually impossible to find anyone to invest in an idea or nascent invention prior to the filing of a patent application.
Still, the typical independent inventor, whether a new inventor or seasoned independent inventor, will have limited funding to move forward in their pursuit of commercializing their invention. While the process of commercializing an invention is itself not cheap, inventors should always start off by realistically considering the size of the market to determine whether moving forward with the investment of time, money and energy is warranted. Assuming the market size and invention potential are great enough, one of the first expenditures will likely be to protect the invention and that typically means a patent application.
The more limited available funding is, the more inventors will need to do on their own, which means being prepared to do some reading and becoming as familiar as possible with the patent process and legal requirements. With this in mind, I strongly recommend inventors – both newbies and seasoned veterans – start with Invention to Patent 101: Everything You Need to Know to Get Started. There resides a collection of “reading assignments” that will provide a strong foundation on the information you will need to know, starting out with the basics and then progressing to more advanced topics. Each article will also contain links to other articles for more information on the topic, which you can and should read as time permits.
Be Realistic With Your Limited Budget
Next, after getting a sense for the laws, rules and challenges, work on a realistic budget is an absolute necessity.
I have worked with independent inventors and small businesses over the past generation and have helped many with limited budgets make the most out of the money they have to work with. I can definitively say that it is possible to start with a limited budget and to do things step by step within a budget and still succeed. In fact, an inventor I started working with back in 2008 on provisional patent applications has since appeared on Shark Tank (although he did not get funded) and is killing it in his sector. See Zup. If you follow inventor coach Stephen Key on LinkedIn or Facebook you know it has worked for many of his students (it seems he announces a student has received a new licensing deal once or twice a week) and Trevor Lambert not only encourages this approach for the clients he works with, but he follows it with the products he develops himself. See VaBroom. So, starting out with a budget and pursuing protection as ideas and business demand not only works in theory, it works in practice. Although not an apple to apples comparison, that is how IPWatchdog.com started – as a bootstrapped business that has now been visited by many tens of millions of people.
Starting the patent process on a limited budget doesn’t mean you can’t or won’t succeed, it means you are being responsible. Of course, your budget must be realistic—you cannot expect highly qualified professionals to work on your behalf for free, and you must be willing to put in a lot of sweat equity along the way. Invest a little and if it makes sense and you start making money, invest more. That is how you bootstrap a business, and how you bootstrap an invention.
Professional Patent Drawings Are Key
The key to starting with a limited budget is planning ahead and developing a strategy that makes sense within your resources and one that doesn’t invest unnecessarily or recklessly. Conserve resources in a responsible way, while still laying the groundwork for obtaining the benefits and protections offered by the patent laws. The nightmare scenario you need to avoid is spending too much on any one invention that winds up going nowhere. If this happens you not only lose what you invested, but you also potentially lose valuable funds that could be used to pursue the next great idea you have. That is why you need to educate yourself on the processes, and if you do not have the funds to hire an attorney or patent agent you need to diligently work to create the best provisional patent application you can yourself. That should mean hiring a skilled patent illustrator who can draw your invention and the various parts and pieces because illustrators are very inexpensive and patent illustrations are the single best and most economical way to expand any patent disclosure. Also consider the Invent + Patent System, which guides you step by step through describing your invention.
Over the years as I have worked with inventors and musicians, what I have learned is that creative people are rarely, if ever, only going to create once. So, don’t invest everything indiscriminately all at once! That is the worst mistake you can make. That is also why Stephen Key encourages his students to move on after they’ve filed a provisional patent application if there is no licensing interest. It is also why many entrepreneurs talk about “failing quick”. If you fail slowly you bleed resources (i.e., time and money). If you are going to fail you want to hurry up and fail so you can move on to whatever is next with as many resources intact as possible.
To Search or Not to Search
Of course, any time you start the invention and patenting process on a limited budget there is something of a chicken and an egg problem. Do you start with a patent search to see whether it makes sense to move forward, or do you start with a provisional patent application first? Notice that I have already ruled out a nonprovisional patent application as the starting point. The cost of a nonprovisional patent application can be quite high and unnecessary to start the process. You can file a provisional patent application, use the coveted terms “patent pending” and then within 12 months file a nonprovisional patent application if it appears as if the invention will be worthwhile. You can also file a provisional patent application without the same adherence to formalities, which allows you to focus on the disclosure and not the format. The filing fees are cheaper. In short, done properly a provisional patent application is the way to go.
A lot of inventors will do their own patent search first, and if it is okay then file a provisional patent application. If you want to do your own patent search first, which is a good idea, definitely read Patent Searching 101, which explains how to do a good search. I tend to think that inventors doing a patent search is an absolute must. Inventors will never be able to find as much as a professional searcher or a patent practitioner, but trying to find what can be found is very helpful to the overall learning process, and reading patents to get a sense of the level of detail necessary can only help.
Ultimately, you will want to a comprehensive patent search done by a professional searcher so you can understand the obstacles in front of you, and so you can describe your invention in a way that accentuates the positive differences to the greatest extent possible over the prior art (i.e., what is found in the patent search). See Why Patent Searches are Critical. The question is when you should have a professional patent search done now that the U.S. has switched to a first to file system.
First to File Means File First!
As just mentioned, today the United States is a first to file country, which means you really must file your patent application first! Once upon a time it was acceptable to take some time to do a patent search, consult with a patent professional and have a proper search done, and then file a patent application armed with that information. In an ideal world if you can get the search done immediately and an analysis of that search also in rapid fashion, getting a search done allows you the best opportunity to know how to characterize your invention in light of the prior inventions the patent examiner is likely to compare against your invention when they initiate examination. But searches and analysis take time, and in a first to file world filing first and getting an early filing date is critically important. So, current best practice is that it is preferred to do the best job describing the invention that you can and file a provisional patent application as reasonably quickly as possible. Then on the road to filing a nonprovisional patent application have a professional patent search done and reviewed by a patent attorney or patent agent who can help you understand the implications with respect to your invention.
Although it will cost an additional provisional patent application filing fee, there is nothing wrong with filing a second provisional patent application. So, an advanced strategy is to file the best provisional patent application possible as reasonably quickly as possible. Then do a search. Based on the patent search you will learn what the prior art contains and your description of your invention will need to become more nuanced. File a second provisional patent application with that more nuanced description of your invention and subsequently file the non provisional patent application within 12-months of the first provisional patent application. This strategy is explained more fully in Provisional Patent Applications the Right Way, the Walmart Way. Walmart filed 39 provisional patent applications on a single invention before they filed a non provisional patent application claiming priority to all the previously filed provisional patent applications. That is an extreme example, but it shows how you can and should protect your invention as you make important improvements along the way.
In conclusion, when starting the patent process on a limited budget, inventors need to understand that the onus will be on them to do much of what otherwise would be contracted out to professionals by those with larger budgets. This, however, doesn’t mean the process is going to be free. Invest wisely and spend money where it will matter the most. Hiring a professional patent illustrator to get high quality drawings really needs to be considered necessary because of the low overall cost and the overall benefit obtained. Filing a provisional patent application should ordinarily be considered an important first step as well. For help creating a provisional patent application please see our do-it-yourself system I originally created to teach law students how to write patent applications. It has helped thousands of inventors over the years.
For More information
The pages of IPWatchdog.com are full of information for both newbie and more experienced inventors. To start your journey forward we recommend starting with Invention to Patent 101: Everything You Need to Know, which have various “reading assignments” assembled to help you based on your knowledge level and what information you are specifically looking for today. You might also find it useful to read through some of the articles below.
- An Alternative to Claim Mirroring in Initial Patent Application Filing
- IP Goes Pop! You Can’t Do That – What IP Cannot Protect
- 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
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Join the Discussion
14 comments so far.
TernaryDecember 31, 2019 12:09 pm
Thanks for the link to the Feynman article, Anon. Very interesting collection of articles on that CalTech site.
AnonDecember 31, 2019 08:05 am
Now, after refreshing my memory of the article, I will completely disagree with Mr. Cole as to the proper role of the patent attorney.
We are not arbiters of the Scientific Method, and patent applications are not technical papers anywhere near the degree to which Mr. Cole would direct us.
Furthermore, if his directions are taken “in the blind,” and we are not forthright with clients that we engage TO write applications for, we may well be committing legal malpractice, as we would be charging an excessive amount of money to do something outside of the scope of writing a legal document.
On the other hand, if we do explain why we would be undertaking such extensive effort and obtain the permission of the client to spend so lavishly, then the “win” that Mr. Cole sees as so beneficial to the larger society may be obtained — and obtained ethically.
Short of that type of disclosure, and according to the law as it is (with the facts being as they are: we do NOT write scientific papers; we only must enable such that no undue experimentation may be required; neither the inventor NOR us truly know the LEGAL state of PHOSITA at the time of filing; and — so very often — we must write these legal documents under an imperfect state of constraints), it is simply not within our bounds to extinguish “Cargo Cult Science.”
AnonDecember 31, 2019 07:14 am
TernaryDecember 30, 2019 01:08 pm
No question in my mind that a patent attorney is and should be a procedural referee as to the requirements of a valid patent for a client.
However, a scientific journal referee has additional tasks that fall outside the tasks and often the capabilities of a patent attorney. The journal Science requires for assessing a Research Article: “They should be in the top 20% of the papers
that Science publishes and be of strong interdisciplinary interest or unusual interest to the specialist.” This is not a task for a patent attorney. Also, most of the attorneys I know would be unable to perform that task and are not interested to fulfill that task.
Furthermore, advanced research papers that rely on for instance mathematical steps or even pseudo-code are often difficult to follow and almost impossible to assess on their correctness. In many cases you have to accept the assurance of the inventor that the steps are correct. To rely on a patent attorney for an opinion on correctness would be foolish. In most cases an attorney cannot do anything but trying to understand what is being disclosed and if the claims find support in the specification.
TernaryDecember 30, 2019 10:22 am
I wish I could. Unfortunately, clients do not always want to listen. They hear what you are saying, but it seems not to register.
On the positive side, once they go through the experience they become believers in prior art search. The best ones then apply these searches almost in real-time to further distinguish their inventions.
Paul ColeDecember 30, 2019 09:02 am
As we are scientifically qualified before we become patent attorneys we are well placed to carry out many (but not all) the functions of a journal referee. In particular, we can and should carry out the kind of disclosure checks to which I have referred, and omitting to do that can have devastating consequences for patent validity. On my desk at the moment is a European application where the Examiner is refusing to give credibility to the experimental results obtained because the starting materials were in her opinion inadequately disclosed. Inventors are often tempted to hold back on important detail in the hope that they can obtain patent protection without giving enough detail to make it easy for third parties to reproduce their results, and the need to carefully review drawings and the overall disclosure cannot be over-emphasized.
If you look at the Glidden patent on barbed wire (held valid by the US Supreme Court) you will see that there was no mention that the wire was steel wire, still less that it was galvanised (which distinguishes the wire from piano wire). No diameter or range of useful diameters was given. Experience shows that in this regard many of us have learned little since the 1860’s and the same kinds of mistake and omission are still encountered today.
MaxDreiDecember 30, 2019 04:51 am
Ternary, you make a good point, that eminent scientists can be “stunned” by a 103 objection.
How can that be? Is it not the most fundamental task of a patent attorney to explain to the client the function that a patent claim serves?
Once the client correctly appreciates that function there should be no possibility of his or her being “stunned”.
Is it not the first rule of client relations, that the client shall suffer “no nasty surprises”?
TernaryDecember 29, 2019 05:04 pm
“An important aspect of our work as attorneys, often downplayed, is to act as a scientific referee.”
A patent attorney is at most a procedural referee. That is: does the patent application meet all the requirements for a valid and eligible patent? Considering the number of Office Actions, even that role is doubtful. Unless the inventor blunders on basic and accepted science/textbooks, there is no way that your average patent attorney/agent can be a scientific referee. And one should not promote this role of the patent attorney.
An inventor should not rely on a patent attorney on evaluating the scientific aspects of her/his invention. That is not the role of the attorney or agent. I would recommend an inventor listens if an attorney has problems with the science. However, if an attorney gives a scientific blessing on an application, like a referee, I would be concerned.
A patent is not a scientifically refereed article. In fact claimed subject matter that has been published as a refereed article in a scientific journal is often rejected in an Office Action as being obvious. That is why scientists with an outstanding reputation as a leader in their field are absolutely stunned when they receive their first 103 rejection.
Paul ColeDecember 29, 2019 12:56 pm
Especially as a result of my work on section 101 cases I have become increasingly aware of the importance of teamwork as between the inventor and the prosecution attorney. Possibly the key element here is the completeness and thoroughness of the original disclosure. Whilst the services of a professional draftsman have been recommended, he can only work with the drawings or perhaps models provided by the inventor, and these have to be adequate to show the important details of the invention and in particular how the parts work together to produce the significant new result on which the patent is to be based. In the chemical arts, examples that are poorly written up, omitting to explain in detail the starting materials used and procedural steps involved, the quantities employed, and the other process conditions will undermine what would otherwise be patents of the first rank. It pays to re-read Dick Feynman’s classic commencement address- Cargo-Cult Science. In particular his explanation that the idea is to try to give ALL of the information to help others to judge the value of your contribution, repeat your experiments and check whether you were wrong or right.
An important aspect of our work as attorneys, often downplayed, is to act as a scientific referee checking so far as we can the completeness and accuracy of the information supplied. If there is a flowchart, is there adequate information for the structures required and the functions to be carried out at each step? If there is a chemical/biotech experiment described, is what the inventor actually did described fully and with adequate attention to detail? Has a lazy arm-waving inventor omitted to do this and simply said that the new compounds can be made by standard chemical procedures? That sort of thing should be picked up by referees reviewing journal papers. Even more important is that it should be done for inventors’ write-ups and drawings.
On searching, invaluable information can straightforwardly be found nowadays by intelligent use of Google. And although the USPTO database is invaluable, parallel searches in [email protected] will pay rich dividends, especially since each entry includes both previously known citations and forward citations, enabling a picture of how a given reference has been received and what further developments it stimulated to be rapidly assessed.
Dave SavageDecember 29, 2019 12:13 pm
If you are looking to license you product, the costs of patents are only a small part of the costs of making a professional and attractive pitch to a company that has a history of being fair and reliable.
You have to understand all of the expenses they will have to pay and recoup before you get any money. You have to know when to say yes or walk. What should a what immediate and tong term benefits and protections will be included for you and the licensing company. As past-president of the Inventors association of Georgia I’ve heard too many stories of not asking enough questions, not understanding what are reasonable goals and expectations for their situation.
Dave SavageDecember 29, 2019 12:12 pm
If you are looking to license you product, the costs of patents are only a small part of the costs of making a professional and attractive pitch to a company that has a history of being fair and reliable.
You have to understand all of the expenses they will have to pay and recoup before you get any money. You have to know when to say yes or walk. What should a what immediate and tong term benefits and protections will be included for you and the licensing company. What is reasonable in the many situations of success or too-little performance? As past-president of the Inventors association of Georgia I’ve heard too many stories of not asking enough questions, not understanding what are reasonable goals and expectations for their situation.
AnonDecember 29, 2019 11:13 am
I realize that an article such as this one cannot be all things to all people (and I do not want to denigrate the attempt to be helpful here). With that said, there is one thing that I would stress first and foremost: Anyone pursuing patent protection should ask themselves how the patent path fits with the larger business plan.
The answer to that question is what should be being fleshed out as all of the additional reading occurs.
MaxDreiDecember 29, 2019 08:34 am
Huge amount of very helpful stuff for inventors here. In my long years, I have seen the tragedy of the “slow bleed” rather too often. The danger is to suppose that the more money you invest in an invention, the greater are its chances of success. Accordingly, I think the single most valuable tip is to “fail fast”.
What I missed, in our “First to File” world, is the pithy injunction, to “Tell the PTO before you tell anybody else”. It is NOT a good idea to put any trust whatsoever in the statutory grace period, nor any trust in the ability of anybody to “keep a secret”. Others are surprisingly quick to convince themselves that the idea buzzing around inside their head did not come from anybody else. And then they are lightning fast to file at the PTO, causing you endless problems with priority contests and derivation disputes. Agreed?
Hans U. MeyerDecember 29, 2019 06:30 am
Enjoyed reading this, including your older story about Walmart. Since 2006, I always filed provisional patents myself, before filing a non-provisional ones through my patent attorney. The PPA’s were filed with my handmade drawings, followed by professional ones for the RPA’s. Would there be a reason to file professional drawings already for provisional applications? Can’t think of any, but maybe I missed something.