The Patent Process Can Be Daunting for the Beginning Inventor. Here Are Some Simple Steps to Consider.
By Ken Tarlow
Once you've focused your idea and created a working prototype, you will no doubt begin to consider protecting your new invention. The patent process in the United States has been set up to give inventors exclusive rights to manufacture and sell their products, but for the novice that process often seems like an impossible maze that can never be mastered.
But don't worry. If you take it slowly and consider the following steps, your trip through patent land can be much smoother.
STEP ONE: Make Sure Your Invention is Practical
Under the conditions of the patent law, your discovery must also be "useful." This means that your discovery must have a purpose and your invention must work. The process of making sure that your invention will work to perform its useful purpose is called "reduction to practice." (Importantly, it's not always necessary to actually reduce your invention to practice. You may use lab tests to demonstrate the usefulness or the filing of the patent application is, under the law, a constructive deduction to practice).
If you think your invention is both useful and operative and you can demonstrate that it indeed can be used successfully for its intended purpose, you should do one more thing before proceeding to the next step in seeking patent protection. This is the right time to do a preliminary search of existing literature and patents. Quite simply, maybe someone else has already had the same idea--and received a patent. Later, if this is not the case, after you have tested your idea, you will need to do a more extensive search.
At this point, however, you should follow the practice of industrial researchers and conduct a preliminary literature search to determine that in fact your idea has not already been described. It would not be a wise investment of time without knowing your idea was novel.
STEP TWO--Keep Records That Document Your Discovery
It's important to keep accurate records documenting your progress on your invention. Make a complete written description, with drawings and photographs if appropriate, at all stages of your experimentation. Keep any correspondence about your work, sales receipts from materials and any other records that might help you prove the facts and dates of your accomplishments. Get at least one trusted person who can understand your invention and corroborate your work and have that witness sign and date your written description of your project. Then sign the records yourself and affix the date. If another inventor should come up with "your invention" at about the same time, the records could be relied upon to establish who was the first inventor.
At this stage, you should be secretive about your work. Quite simply, when in doubt--don't disclose information about your work. If you describe your invention in a printed publication or if you use it publicly or place it on sale, you must apply for a patent within a year of the public disclosure.
Otherwise, your right to patent the invention in the U.S. will be lost. Importantly, although you have a one-year grace period in the U.S. after public disclosure or sale, a public disclosure even one day before filing your patent application can bar the patent in foreign countries. No other country provides the grace period extended in the United States.
STEP THREE--Search Existing Literature and Patents Relating to Your Invention
You've tested your idea and you know it works. You've kept complete and accurate records of your experimentation. Now what? Under the conditions of the patent law, you must establish that your idea is novel. An invention cannot be patented if:
1) The invention was known or used by others in this country2) The invention was previously patented in this or another country
3) The invention was described in a printed publication anywhere in the world on a date before you made claim to the invention
If you wish to establish whether your invention is indeed new and unobvious, you'll have to search for existing patents and literature related to your invention. The literature search can be carried out by usual means available to scientists and engineers. I recommend the IWI Patent Search. A search of only the U.S. Patents can be made in the search room of the Patent and Trademark Office or at a patent depository library.
If, in a search, you have identified U.S. patents that are relevant to your invention, for a nominal fee, you may obtain copies of such patents from collections or microfilms maintained by any of the patent depository libraries located throughout the U.S., where collections of patents can be accessed by computer and then studied.
STEP FOUR--Study Those Existing Patents and Literature Relating to Your Own Invention
Whether you conduct the search yourself or hire someone else to do it, you'll have to study the patents and publications that are identified. If any of the patents discloses your idea, you cannot be granted a patent. Likewise, if your invention is described in any of the scientific literature, you cannot obtain a patent on it.
It's possible that one or several existing patents or publications might describe something similar to your discovery, but they may be different in some way. In order for you to obtain a patent for your invention, those differences must be unobvious to anyone with knowledge in the area related to your invention. For example, ordinary differences, such as the substitution of one material for another, changes in size, or other obvious modifications are generally not patentable.
You can, however, obtain a patent to cover an improvement or a new feature which makes your invention different from the prior patents.
The determination of unobviousness and of patentability of an invention is often a complex issue involving a combination of legal principles and technical facts. Generally, you should not attempt to make these determinations on your own.
If you haven't yet hired a registered patent practitioner, you should do so now. Together you should discuss the important features of your invention and then decide whether you have a fair chance of getting patent protection for your discovery. If you decide to continue seeking a patent, the practitioner can help you with step five, preparing and filing the patent application documents.
WRITING YOUR OWN PATENT
You can write your own patent if you're willing to take the time. The best resource on writing your own patents is the book, PATENT IT YOURSELF, by David Pressman (Nolo Press). The book looks big but there are really about 40 pages in the middle of the book that actually show you how to write the patent.
THE FINAL STEP--Review By a Patent Office Examiner
When you have your application documents finished and mailed to the Commissioner of Patents and Trademarks, the papers will be studied by a Patent Office examiner. You'll be notified in writing about any decision concerning your patent application (Be patient--it takes 1-2 years for the Patent Office to process each application). If your patent is denied, then you and your patent practitioner can amend the claims and point out why the patent should be granted.
It's usual that the patent examiner will first reject your application, even if it's found to be eventually patentable. This exchange of rejections from the Patent Office and amendments by you and your practitioner may continue until the patent examiner allows your application or says that the rejection is final. If you wish to continue seeking a patent in this eventuality, then you and your practitioner may appeal to the Board of Patent Appeals and Interferences.
Review these steps several times before beginning your own path toward obtaining a patent. Best of luck.
Ken Tarlow is president of Tarlow Design, a full-service product development company that helps independent inventors design, prototype, patent and license consumer product ideas. He has developed more than 300 consumer products worth over one billion dollars in retail sales. Tarlow's office is in San Rafael, CA. He may be reached at (415) 457-6428.
The above article was excerpted from Tarlow's MIND TO MONEY, a cassette tape/workbook package that can help you develop a new product from the idea stage to the marketplace. MIND TO MONEY may be ordered from Dream Merchant at $59.95 plus $4.95 CA sales tax and $5 shipping and handling ($69.90 total). Send orders to Dream Merchant, 2309 Torrance Blvd., Suite 104, Torrance, CA 90501.
