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Preparing To Get a Patent

No invention should be patented until the inventor has determined that there is a reasonable prospect of marketing the invention.

A person seeking a patent should be knowledgeable about technical, business practices, and marketing issues of the market where the patent will be used. Many people end up with patents that are useless because they had a unique idea that wasn't cost effective or truly useful. They didn't realize that their idea wasn't worthwhile because they didn't understand the market. A person who doesn't thoroughly understand the area and market their patent is for could get a patent on something that is already in use. The idea would be considered prior art, and their patent would not be valid. A patent search will not always show prior art.

Expect to pay for services that you require. I have come across many would be inventors that expect to get services for nothing. There is no faster way to sour a service provider on all independent inventors than to leave him with a bad receivable! There are no free lunches!!

Acquiring a patent should be approached the same as an engineering project. Documenting your idea is the first step in the patent process. It is necessary to thoroughly plan to minimize both costs and the time required to get the patent.

You must file your U.S. patent application within one year of the first disclosure or commercial application of the idea. Either disclosure or sale ( including an offer to sell such as a quote ) will start the one year clock. Most foreign countries require that you file before any public disclosure or commercial application.

You may safely disclose information and not start the one year clock by having each and every person and company that you give information to sign a non-disclosure agreement. The following is a partial list of things you might do that could start the clock or at least create a gray area that an infringer would try to exploit to avoid paying damages. This is an area that is evolving in the law and you should seek counsel before any disclosure.

1) Tell a customer or others about the invention.
2) Distribute a data sheet.
3) Distribute price sheets or quotations that don't clearly state that the product is not yet available and that it is experimental.
4) Give a paper or publish information about the invention.
5) Sell the product at a profit, you may be able to supply free samples or samples at cost
without starting the clock.

Please note that while an NDA protects you from starting the clock it does not protect you from those who may misuse the information you have have given them. For example, well healed large companies with a large market presence may intentionally get another party to disclose your invention in an obscure publication. Doing this makes your patent invalid if it is published more than a year before your filing date in the US, and in most of the rest of the world it makes any patent filed after the date of publication invalid.

There are many organizations that aid inventors but a few stand out as the best.

United Inventors Association of the USA (UIA), P.O. Box 23447 Rochester, NY 14692; Phone: (716) 359-9310; FAX (716) 359-1132; UIA is an excellent broad spectrum resource.

It is possible to execute your own patent without the aid of an attorney. There are several books that you might find useful.

Innovation and Entrepreneurship by Peter Drucker (Harper and Row) is recommended reading.

This Lit'l Inventor Went To The Patent Office Phase I and Patent Application Work Book Phase II by inventor Wm. J. Nasset who markets both books himself for $39.95 post paid. His company is Strait-jacket 3923 Lancaster Drive, NE #5, Salem, OR 97305, (503) 391-4464 or for orders only (800) 789-6335, Fax (503) 391-4887, InventorWorld.

Another good book is From Patent To Profit: Secrets & Strategies For Success by Bob DeMatteis.

Nolo Press produces a number of useful books for small business and inventors. One book that also is available as software that I feel is a must for all inventors is Patent it Yourself. Both are by (patent attorney) David Pressman. The book is available for $36.95, the software is $229.95. They are available from either David Pressman himself or Nolo Press at 950 Parker Street, Berkeley, CA 94710-9867, general information (510) 549-1976, order line (800) 992-6656, fax (800) 645-0895. Nolo Press carries many other worthwhile books for inventor-entrepreneurs.

All of the listed books are useful for persons who are going to file a patent either with or without an attorneys help. Remember that better organization of your patent will result in lower attorney costs. Patent law is complicated and claim wording is very important. It is recommended that do it yourself applications be reviewed by a patent attorney before filing.

A clear write up of the idea and neat detailed sketches will help convey the proper information to do a patent search. I recommend that you not have the same attorney do the search and the patent. While most patent attorneys are honest, having the search and prosecution done by different parties helps keep them that way.

The search is the second step to determining if your idea has merit. The search, if performed by an attorney will take one to three months and cost less than $1000.00. You may go to a service provider that does searches and get one for between $150.00 and $450.00 depending on their rates and the amount of work involved. You do not have the benefit of an attorneys advise when using this approach.

It is difficult to come up with ideas that are broad in scope in areas that have well established technologies. The most valuable patents cover a process's basic idea, many patents that are improvements are not as valuable unless they are critical to the commercial success of the product. A patent on a specific circuit will not have much value if it is easy to design around that circuit and there is not much cost or performance penalty associated with the alternative circuit.

If you are involved in an area that is ripe for development consider all the other methods that could be used to solve the problem. It is important to build a fence around your main idea, locking up as many of the possible solutions as possible. This is necessary because a competitor could use a solution that you consider inferior. If his marketing is better than yours you could still lose the market. A good example of this is the VHS video tape standard winning the market over BETA.

A fence built with multiple patents also acts as a deterrent to infringers because it will usually cost them at least $500,000 per patent they attempt to invalidate. The uncertainties of prevailing when they are facing multiple patents makes it more likely they will negotiate a settlement.

Carefully study the results of the patent search to determine if your idea is unique before proceeding to the third stage, which is filing for the actual patent. Your attorney will work with you to draft the actual patent application. Expect this to take three to six months and to cost between $5000.00 and $10,000.00.

Once the patent application is filed you can expect to wait one to three years to receive the patent. If anyone infringes on your idea during this time you can notify them that you have filed for the patent but you can not sue until the patent is granted. The infringer is liable for damages starting from the latter of the time you filed and the time when they were notified. This is the most frustrating part of the patent process.

It is important that you closely study all correspondence between the patent office examiner and your attorney or agent. Attorneys don't always fully understand the patent and it is possible they will make a mistake in the way they argue your patent. A misunderstanding of what the patent should cover can lead to the attorney not arguing for the correct claim language which can significantly limit the scope and value of the patent. Remember that you have a partnership with your attorney and you must be active in the whole process to help insure the best results. If you don't invest the effort to follow the patent process and your patent is not executed in the most favorable manner you are as much to blame as the attorney. The inventor will be the one who suffers as a result of any problems with the way the patent has been executed.

A patent requires a long term commitment. Be ready to invest years, thousands of man hours, and thousands of dollars to successfully bring your idea to market. Don't get discouraged; all worthwhile things in life require perseverance.

Revision 15
Excerpted from revision 14 of Acquiring & Defending Patents, the 9th draft was published in PCIM - Dec 94

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