Posts Tagged: "provisional patent application"

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.

The first step toward commercializing an invention and making money from it is typically to pursue the patent path.  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.

All too often inventors feel that the assistance of a patent attorney is really not necessary. That is an opinion shared by many unfortunately. It is not unfortunate for the patent attorney really, but rather it is unfortunate for those who hold the belief because invariably those who represent themselves obtain rights that are so narrow that they are practically useless. Recently I have had the occasion to be contacted by several independent inventors who did file their own nonprovisional patent applications and are now facing a First Office Action that rejects all the claims. A First Office Action that rejects all claims is not uncommon, but these applications have little or no useful discussion of the invention so there will be little or nothing anyone can do to help them ever achieve a patent. A bad patent application results in either an extremely narrow patent or no patent at all. All that time, money and energy wasted. These inventors, who are unfortunately the norm for those who represent themselves, may well have had an invention that could be protected but through a faulty application will now likely never receive a patent on their invention.

It has come to my attention that earlier today in his e-mail newsletter Hal Wegner has once again attempted to take a cheap shot at yours truly. Yes, I know that truth and accuracy are not the hallmarks of Hal’s newsletter, and normally I do look the other way when I learn of cheap shots by Hal, which are a dime a dozen. When Hal challenges my business and makes blatantly inaccurate statements I do find it necessary to respond.

At what point does an idea take enough form to be considered an invention that can be protected? First, it is completely correct to say that ideas cannot be patented. Having said that, it is equally correct to say that every invention starts with an idea. The patent laws in the United States differentiate between a mere idea and 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.

With most provisional patent applications the 80-20 rule applies. To get to 80% complete it takes 20% of the time and the final 20% will take 80% of the time. Thus, the approach to provisional patent applications is to make sure you have all the disclosure we need later when we will prepare the nonprovisional patent application. This can include attaching one or more supplemental documents to a drafted provisional patent application, it can and usually does include filing many drawings, sketches and even photographs.

It is certainly true that once you file a nonprovisional patent application your ability to make additions to the application has largely ceased. Even if you are filing a provisional patent application, while you could always file another provisional patent application to correct mistakes, the first filing is only as good as what is disclosed. Taking the first filed patent application seriously and making sure it has all the necessary disclosure is absolutely critical. Therefore, having a professional review your patent application before you file is definitely wise. The question, however, is when do you seek the assistance? Frequently many inventors wait too long before they seek help, which means much of what they have done is unusable and various levels of difficult (or impossible) to work with.

For example, does a hair dryer with integrated radio, beer bottle opener, shaving cream dispenser that floats sound marketable? Perhaps as a gag gift maybe, but the addition of random features for the sake of obtaining a patent is not usually wise. I’ve seen terribly broad disclosures filed for an inventor with one extraordinarily specific embodiment. Right away I can tell what is happening. The patent attorney (or patent agent) is drafting the disclosure so that at least one claim, no matter how narrow, can be obtained. Unfortunately, it does not typically make sense to layer on specifics unless those specifics contribute to marketability, and in most cases layer after layer of detailed specifics only makes the claim narrow and less valuable. So if you are going to try and get around prior art to obtain a patent make sure the specifics added will provide an advantage.

Under the “first to file” AIA regime, the effective prior art date is what prior art exists before the U.S. patent filing date. In other words, the U.S. patent applicant no longer has the luxury of that potential up to one year “window” after the invention date. Instead, the danger of intervening prior art by others steadily (and potentially exponentially) increases as time passes between the invention date and the U.S. patent filing date. Put differently, U.S. patent applicants are now really in a “race to the U.S. Patent & Trademark Office (USPTO)” to minimize the ever increasing danger of intervening (and accumulating) prior art coming into play. For the Goliaths, they’ve been existing in this situation for many years because the rest of the world (ROW) is “first to file.” But for the American Davids, “first to file” under the AIA is going to be culture shock of the worst, and most expensive kind, with time pressure that these Davids aren’t prepared or trained to handle.

Once you have done as much as you possibly can on your own you might want to consider hiring an engineering firm to provide additional information and input to put your invention over the top. The thing to remember is that if the person or firm you hire provides information that relates to the conception of the invention they will be considered a co-inventor. As a co-inventor they have rights to the patent. In order to get the help you don’t want to give up rights to your invention. You will want to have an agreement in place keeping ownership of the patent rights if you seek assistance from someone else, whether they are a professional or not. You should also have a confidentiality agreement in place, unless you are speaking with an attorney, in which case a confidentiality agreement is unnecessary. We have some free sample confidentiality agreements you can use as you see fit.