As a patent attorney, I enjoy talking to inventors. I love helping inventors and entrepreneurs secure intellectual property rights in their respective works. A good part of my business involves the cultivation of working relationships with prospective clients. My hope is that they will retain my services in the future. But there are days where I am simply too busy to devote the time to each and every person who calls me up for basic advice. After all, there are only twenty-four hours in a day.
As an independent inventor, you want to maximize the quality of time spent working with your patent attorney. The last thing you want or need is your attorney billing you for information you could have easily obtained through an internet search. More importantly, you want your patent attorney to take you seriously. Having a few things in order before contacting a patent attorney for an initial consultation makes a huge difference when shopping around for the right patent practitioner.
I wrote this list of ten basic pointers for inventors who might not be sure whether they’re ready to discuss their invention with a patent attorney. My hope is that by following these ten basic steps, your initial consultation will be more productive. Furthermore, you will be better prepared to discuss your invention in detail and work with your patent attorney in preparing, filing and prosecuting your patent application. Patenting an invention can be a long, expensive and frustrating process. But being prepared for many of the common pitfalls along the way can make the process of obtaining a patent a smoother and less burdensome experience.
- Avoid Disclosing Your Invention to the Public
There will be plenty of time to discuss and market your invention after your file a patent application. In the meantime, take proactive steps to avoid disclosing your invention to the public. Under United States patent law, the first inventor to file a patent application gets the patent. Also, there is a statutory bar against patenting an invention which had been publicly disclosed or was available to the public for over one year. A few obvious examples of public disclosure include publications, trade show demonstrations and sales. However, an inventor may inadvertently make a public disclosure of their invention by blogging about it, posting pictures, videos and descriptions of it on social media, or discussing an invention in a public setting. Public disclosure of an invention starts the one year countdown on when you must either file a provisional or non-provisional patent application or forfeit your ability to obtain a patent. There are other countries who do not even extend a one year grace period to file a patent application after public disclosure, so keep in mind that disclosing an invention to the public can lead to very adverse consequences.
- Keep Track Of Critical Dates
Since the United States became a “first to file” country, keeping track of dates of conception and reduction to practice is not as important a practice as it once was. However, an inventor should maintain detailed records of the progress of his or her invention as a smart business practice. Most importantly, though, is that United States patent law bars an inventor from receiving a patent if he or she publicly discloses an invention over one year before filing a patent application. Keep track of dates which could come back as a bar to patenting your invention. If you believe that you have disclosed your invention to the public, then immediately discuss the details of any such disclosure with a patent attorney or patent agent. And remember that the clock is ticking. If you disclosed your invention to the public fifty-one weeks ago, you might have a very difficult time finding a patent practitioner who is willing and able to work with you on such a tight deadline.
- Have a Solid Technical Understanding of Your Invention
Nobody understands your invention better than yourself. But in order to obtain a patent, you must be able to explain your invention to others. A solid technical understanding of your invention involves the ability to explain to people of similar skillsets how to make and use your invention as well as how your invention works. You might even want to hire or work with an engineer under a nondisclosure agreement to prepare a good set of technical specifications. Although not required, it is recommended to have a working prototype that is capable of performing your invention’s desired functions. A patent application must describe an invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention, and it must enable a person of ordinary skill in the art to make and use that invention without undue experimentation. You will be required to disclose all relevant background information pertaining to your invention, a summary of your invention, as well as a detailed description of your invention. Having a solid technical understanding of your invention will make working with your patent attorney more productive and hopefully more rewarding.
- Prepare a Set of Pictures, Drawings and/or Figures
As the saying goes: “A picture is worth a thousand words.” Patent applications require one or more drawings whenever an invention is capable being described by way of illustration. Another way of putting this is that whenever drawings would assist a person in the understanding of your invention, one or more drawings are required. Because of this requirement, you will need to prepare a set of pictures, drawings and/or figures showing the most important features of their invention and how each and every feature works together. If your invention is a software or method-type of invention, you will need to include a detailed flow chart illustrating each and every step of your invention, and specific details of what is being communicated across computer or network components. Pictures and charts can also provide your patent attorney, and ultimately the examiner of your patent application, greater insight into how your invention works. Your figures do not have to be professionally created at first, but they should be detailed enough to describe and interrelate each and every feature of your invention. Your patent attorney or patent agent can have a set of professional CAD drawings prepared at the time of filing your application.
- Make Sure to Identify All Inventors
You may have worked with others while developing your invention. If this is the case, then you may have to name one or more of those people as a co-inventor. In a nutshell, a person is a co-inventor is he or she conceived or thought up of an essential element of what will be set forth in your invention in one or more of the patent claims. If you are working with others, make sure to document any sort of conceptual developments, and who came up with those ideas. Inventorship only pertains to the ideas behind the invention. A person is not an inventor if he or she simply followed your instructions. A person who contributed only labor, no matter how important that labor was, cannot be named as an inventor.
- Start Thinking About Competitors
For you to obtain the most valuable patent possible, you should start thinking about how competitors may attempt to “design around” your invention. In order to avoid infringing a patent, companies may devote significant resources to engineering simple or complex alternatives to a patented invention. Start thinking of improvements and modifications you or others can make to your invention. Think of uses for your invention which fall outside the scope of its intended use. Think about different ways your invention can be made. Think about different materials which can be used to make your invention. Your patent attorney can and should assist you with this, but it may prove helpful to start thinking about this concept as you develop your invention.
- Formulate a Budget
Sometimes, inventors lose sight of the business side of bringing a new invention to market. Whether you’re tinkering in your garage or have access to better research and development facilities, conceiving and developing an invention can be costly. But it needs to be understood that patenting an invention also requires a significant investment of time and money. Expect to pay several hundred to several thousands of dollars up front to retain a patent attorney. Expect to be working with your patent attorney for at least two years after your patent application is filed. Expect to pay a number of fees to the United States Patent and Trademark Office as well. For a small entity, the current cost of simply filing a nonprovisional patent application with the USPTO is $800 (the USPTO charges filing, search and examination fees). Don’t forget that it will require further investment of time and money to manufacture and market your invention as well.
- Begin Your Own Market Research
You are going to want to know who will ultimately be buying or using your invention. You might also want to know whether your invention will attract investors as well. From a business perspective, it is never too early to begin exploring your potential market and how you’re ultimately going to bring your invention to that market. Start thinking about your ideal consumer, and how you’re going to end up promoting and selling your invention. Use the power of today’s internet to discover what’s already on the market and how your invention will outperform what’s already being used. Start asking yourself whether there is a real demand for your invention, and whether you will be able to successfully manufacture and market your invention. Remember that patenting an invention is but one important business decision in a larger business plan; and that patenting an invention and bringing it to market comes with serious risks. As an inventor, you’re going to want to know whether the large investment of time and money necessary to bringing an invention to market will ultimately pay off.
- Perform a Preliminary Patent Search
It only makes sense to learn and understand what’s out there before embarking on the long, expensive and frustrating voyage of obtaining patents in the United States and abroad. If you have an internet connection and some spare time, there are several free resources available for you to perform their own patent search. Performing an initial patent search on your own is not impossible, but it does take a considerable amount of time and effort to learn a workable method of searching. Additionally, you can easily expect to spend over twenty hours of diligent searching in order to obtain a good amount of patent data. Patent searching is not easy, but the time spent uncovering whether your invention already exists pales in comparison to spending several years and thousands of dollars pursuing a patent which has already been claimed.
- Start Thinking of an Intellectual Property Strategy
You definitely want to know a few concepts behind intellectual property law before visiting a patent attorney. Take some time to learn from the free resources provided by the United States Patent and Trademark Office. Start researching the various types of patent applications available. There is a difference between a utility patent and a design patent. Sometimes, filing a provisional patent application makes better financial sense than does filing a nonprovisional patent application. If you’re serious about developing a product, then start researching other avenues intellectual property protection such as trademarks and copyrights. You’ve worked hard to take your invention this far, and you definitely want to remain in the driver’s seat as you take your invention to the next level.