Patents are a valuable set of rights that can be obtained by an inventor. They provide protection for certain “patentable” inventions. Patent owners have distinct competitive advantages, including the right to prevent others from making, using, selling, or importing the patented invention in the United States.
Also, just like other forms of property, a patent can be sold or licensed for royalties. While a properly prepared patent can be invaluable, numerous pitfalls exist during the patent application process that can decrease the value of the patent or even prevent you from getting the patent in the first place.
- write your ideas down
- talk to a patent attorney
- search for similar ideas
- think about how you would use the patent
- talk about your invention
- procrastinate about applying for a patent
- prepare the patent application by yourself
- leave ideas out of the application
Writing the ideas for your invention down can help establish ownership over the idea and serve as the first step in the process of applying for a patent.
In the United States, only inventors, the persons that actually conceived of the invention, can apply for the patent. Writing your ideas down helps to establish that you conceived of the invention if someone were to try to take your ideas and claim the invention to be his or her own. Writing your ideas down also helps you think about the details and different aspects of the invention to include in the patent application.
Include as much detail as possible about how the invention works and the problem the invention solves. Include diagrams, flowcharts, screen captures, etc. These written documents can serve as a road map for the patent application that is prepared and filed with the Patent Office.
Preparing a patent application is a complex process that can have different options and objectives. A good patent attorney will talk you through the steps of filing a patent application and develop a strategy for preparing the application with the best chances for being granted as a patent.
Ask questions to find out whether the patent attorney has knowledge and experience with the types of technology pertaining to your invention. Ask about costs for preparing the patent application. Find a patent attorney that understands your goals and is motivated to help you succeed.
One of the largest hurdles in getting a patent is often whether the invention is novel and not an obvious modification or combination of known ideas. The Patent Office uses “prior art”, which includes prior patents and published documents, to show what is not novel and obvious. Finding relevant prior art can give you an idea where the “state of the art” is and what you will need to include in your patent application to distinguish your invention as novel and not obvious.
Search on the Internet (e.g., www.google.com/patents), search the United States Patent and Trademark Office website database (http://patft.uspto.gov/), look at what competitors are doing, and how the problem solved by the invention had previously been solved. If you do not find anything close, great! Unfortunately, however, sometimes the prior art is very similar. In these instances, think about ways to distinguish your invention over the prior art or ways to characterize your invention as an improvement to the prior art.
Talk to your patent attorney about what you have found, not only for ideas on how to present the invention as patentable, but also for him or her to submit to the Patent Office as required. The search may not always give you the results you hope for, but it is better to have this information before you spend the time and money to apply for the patent.
Patents can be a valuable economic tool, with emphasis on the word “economic”. While being an inventor holds a level of prestige, patents can be expensive to obtain. Recuperating the cost of obtaining the patent and leveraging the value of the patent should be considered early on in the process for applying for a patent. Are you planning to start a business that sells or uses the invention?
Having a patent can provide your business with exclusivity in the marketplace. If the invention has economic potential for someone else to use or sell in running their business, you could sell or license the patent for royalties. On the other hand, if you are not planning on using the patent or the economic potential for use of the patented invention is low, the costs of obtaining the patent may outweigh the value of the patented invention.
Share these ideas about how you intend to use the patent with your patent attorney. The way you plan to use the patent should influence the way the patent application is prepared. For example, certain terminology is preferred for use in patents that are licensed. Also, if you are planning to use the invention in your business in a certain way, your patent attorney can craft the claim language of the patent application to provide your business with the most protection available. Thinking about how you would use a patent is a useful guide in preparing an application suited for capturing the maximum economic potential for the patent.
Be careful about who you talk to about your idea. What you say and when you said it could bar you from obtaining a patent or give other people the chance to try to steal your idea. For example, any offer to sell or publication of the invention starts a one year clock until the invention is barred from being granted as a patent. Also, someone could publish or try to steal your idea if you tell him or her about it. Technically, only original inventors are allowed to apply for a patent, but then this becomes a matter of proving who invented what and who stole what from whom. If you have already filed the patent application before you discuss your ideas with other people, then, for the ideas described in the application, there are no bars to worry about, and anyone who tries to apply for a patent automatically has a later priority date, in addition to the not an original inventor issue. Get signed confidentiality agreements before discussing your invention, especially if filing beforehand is not possible.
In the past, inventors were given priority as of the date of their invention. However, recently Congress changed that rule. Today, priority is based on the date the patent application is filed at the Patent Office with few limited exceptions. This means that the clock is ticking for the priority given to your invention. Patent applications filed and documents published before your application will likely count as prior art. Going through the steps of finding a patent attorney, deciding whether to apply for a patent, and preparing the patent application takes time, often several months. Acting quickly and decisively in applying for a patent can make the difference in whether you get the patent.
A patent application is a complex legal and technical document that has many different requirements and standards from objective ones, such as procedural rules to follow, to highly subjective ones, such as how to best describe the invention to distinguish it over prior art, to ones that are constantly evolving, such as what constitutes patentable subject matter. Inventors tend to focus on the advantages of their invention, which is only one of several objectives for a patent application. Importantly, patent applications need to have sufficient description and detail about how the invention is implemented not only to increase the chances of the patent of being granted but also to maximize the value of the patent. While some mistakes made in preparing a patent application can be corrected later on, some cannot be overcome. A poorly prepared and prosecuted patent application could even be used as prior art against one of your later filed applications.
You cannot add new ideas to a patent application once it is filed, at least not without resetting the priority date for those new ideas. Carefully review the patent application before it is filed. Make sure that any and all potentially patentable ideas are fully described. Think about different ways the invention could be used and include those ideas in the application. Even if you do not plan on using the invention that way, someone else might.
A patent can be very valuable if it is properly prepared. Think about your invention and write your ideas down. Promptly find a good patent attorney and discuss your ideas and options with him or her. Conduct a search for prior art as the best plan may be to think of further improvements or decide not to apply. Develop a plan for monetizing the patent and be careful about who you talk to about your ideas. It is important to consult with a patent attorney about these matters to prepare the patent application suited for meeting your goals.