Posts Tagged: "independent inventors"

So you have an idea and want to file a patent application? There are a number of things that you need to know about the invention and patent process that can help you focus your efforts and know what obstacles lay in front of you. I have gone through the IPWatchdog.com archives and created several “reading assignments,” which will hopefully be more manageable, and which will help get you started.

Calling all inventors! Lifetime Brands, the largest non electrics housewares company in the United States, is hosting an Innovation Day on Monday, October 5, 2015, at their corporate headquarters in Garden City, NY. This event will give housewares inventors the opportunity to pitch their products for the purpose of landing a licensing deal with this industry leader.

Pitfalls to be on the lookout for when you are preparing the Background of the Invention. First and foremost it is critical to remember that your patent application is about your invention, not the prior art. You will only discuss in vague, cursory terms the prior art and only to the extent that it can be useful and not harmful. You must always remember the problems inventors face when they lock themselves into a particular articulation of structural features and when they trivialize their own invention by making it seem obvious.

It is absolutely critical to understand that this complete and full description MUST be present as of the filing date of your application. If you file an application that does not describe the invention to the required level required by U.S. patent laws the application is defective and it cannot be fixed. The only way to fix an inadequate disclosure is to file a new application with an adequate disclosure, but that means you obtain no benefit from the filing of the earlier inadequate patent application.

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.

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.

It is understandable that those who are entering into a business endeavor would want to know what their potential exposure might be, and when you have an invention perhaps the single largest potential liability looming is the threat of infringing a patent owned by another. This being the case, it is understandable that individuals and small businesses would like to be able to obtain a patent search and opinion that if they were to do what they are about to do they would not be sued for patent infringement. The analysis required in order to make this determination is daunting, takes a lot of time and comes with substantial liability for the patent attorney who offers the opinion. What this adds up to is a freedom to operate opinion costing a lot of money. Allow me to explain why.

If you are going to file a patent application you must have drawings to include in the application, but patent drawings are not the only type of “drawings” that an inventor should be considering. Patent drawings are wonderful for a patent application, but they don’t always do the invention justice if you are trying to capture the attention of a prospective licensee, or if you are trying to convince a buyer to place orders or sell the invention in their store. Patent drawings and other types of invention drawings, such as 3D renderings and photo realistic virtual prototypes serve different purposes.

The trick to drafting an excellent patent application is to describe anything that will work, no matter how crude, no matter how defective. You want to capture everything. This is because the only power of a patent is to prevent others from doing what is covered in the patent. If you are making money there will be others who want to do what you are doing. Your patent can prevent them from doing what you are doing, but a strong patent will also prevent would-be-competitors from doing anything that is close.

Last week I wrote about adopting a patent strategy in order to lay the foundation for success. What the article did not touch upon, however, is how you can use procedural mechanisms available at the Patent Office to expand your patent into a patent portfolio, or how to correct unforeseen problems with your patent (or portfolio) that may needlessly compromise…

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 Section 32 of the Leahy-Smith America Invents Act became law in fall 2011, the USPTO began working with intellectual property law associations across the country to establish pro bono programs designed to assist financially under-resourced independent inventors and small businesses secure patent protection for their inventions. Minnesota was the first state to establish a program, and now joins the growing list of programs expanding to cover nearby states. The efforts of those programs, in conjunction with the USPTO, has been astounding: within the past ten months, the number of states now having access to a patent pro bono program has more than doubled.

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.

The United States Patent and Trademark Office current fee schedule went into effect on January 1, 2014, and was last revised on April 1, 2015… The lesson here is that fees can add up quickly. It is true, however, that once you file an application it will likely be many months (or perhaps years) before the Patent Office will get back to you so you can usually stagger these additional fees.