Tips for New Inventors
Many of our clients are inventors who have not previously patented an invention. We pride ourselves on fully informing our clients and answering all of their questions, so that they know what to expect, can make informed choices, and generally feel engaged in the process. Following are answers to some of the questions that we are frequently asked.
This can be a difficult question to answer. In general, an invention must be new, and must not be “obvious.” It also cannot be purely “abstract.” In the patenting world, this is called being directed to “statutory subject matter,” and being “patent eligible.”
An invention need not be technical to be patentable. In fact, it need not be anything that exists physically. For example, methods of doing things can be patentable. However, certain categories of invention have fallen into disfavor with the patent office and the courts in recent years, including methods of doing business, and methods of making calculations.
In our experience, many if not most inventions can be defined in a way that will make them “patent eligible.” For example, a method of making a calculation may not, in itself, be patentable, while the same method, when combined with a final step where the result of the calculation is used in some way that has a physical result, may be patentable.
In summary, this is not a question that you should try to answer on your own. If there is any doubt, you should discuss the issue with a patent professional.
While many patents are filed by large organizations, patents can be of even greater value to individuals, startups, and other small businesses. In many cases, large businesses have the capital, manpower, and marketing budgets to compete successfully in the marketplace against any rival organizations that attempt to steal and copy their ideas, even if they are not patented. In contrast, without a patent, individuals and small businesses are vulnerable to being simply driven out of the marketplace by much larger competitors who copy their innovations. Indeed, a larger competitor may wait to see if a new idea actually has market value before stepping in. As a result, you may bear the full cost of inventing, productizing, prototyping, and market introduction without reaping any commercial benefit, because once the commercial value of the invention has been demonstrated, the market can simply be stolen out from under you by a much larger, better funded, and better-known competitor.
A patent can therefore be essential for an individual or small business to successfully “monetize” their invention. Essentially, obtaining a patent is the only legal way to actually “own” an invention – to make it really “your” idea, rather than just “an” idea that you happened to think of. Once you take “ownership” of the invention, by obtaining a patent, you cannot be easily ignored, even by much larger organizations. You may decide to bring the product to market yourself and enjoy the revenue that results from product sales. Or, if a larger organization is motivated to make and sell the product, you may choose to either sell or license the patent rights to them. This can be a very low cost, high reward strategy, because a larger organization may already have the means to finalize the product, and the market presence to successfully sell the product. By selling or licensing the patent, you may be in a position to reap significant rewards without any further expense.
Licensing an invention rather than purchasing it is often a more attractive option for an investor, because a license will generally include only a small initial cost, plus a royalty based on product sales. Accordingly, the cost to the licensee begins relatively low, and grows only as the invention generates offsetting revenue. Ideally, you may be able to cover the invention and patenting costs with an initial license fee, and then share in the further profits through royalties as the invention becomes a commercial success.
In addition, you may possess certain knowledge and experience that goes beyond what can be learned merely by reading the patent. License agreements often include a requirement that you will help the efforts of the licensee to benefit from your experience and knowledge, which creates a joint effort and joint reward partnership.
Even before a patent issues, you will have the benefit of marketing the product as being “patent pending,” which will usually lend a certain “gravitas” to the invention, i.e. people will take it more seriously even if you are not well known in the marketplace.
The only actual alternative to seeking a patent it to simply keep your invention secret. This is what we call a “trade secret,” and there are circumstances where it might be more desirable than seeking a patent. One classic example is the formula for Coca-Cola. So long as the invention remains secret, the protection can be indefinite, and certainly much less expensive than if it were patented.
However, trade secrets only work when it is possible to market the resulting product while at the same time keeping the invention secret. If the secret is ever revealed, or independently discovered by another, then the protection is gone. At most, you may be able to sue a former employee or business partner for trade secret theft, but you will never be able to recapture control of the invention itself. If it is relatively easy to observe a product and see how the underlying invention works, or take it apart and reverse engineer it, then keeping it a trade secret in the long run is probably not the right strategy. Initially, all inventions should be kept secret. However, in most cases a patent for an invention should be sought as soon as feasible.
After all initial questions are answered and a strategy is agreed upon, the next step in preparing a patent application is a “disclosure” by the inventor of his/her invention to a patent professional. At a minimum, the disclosure may simply be a verbal description provided by the inventor, with both hands waving and an occasionally doodle on the back of an envelope. In many cases, the inventor can further support the disclosure by providing drawings and/or photographs of the invention, or even by showing a prototype of the invention to the patent professional.
In general, the inventor should use whatever materials are available, and whatever skills are possessed by the inventor, to convey an understanding of the invention to the patent professional who will be drafting the patent application. It is also very important for the inventor to convey to the patent professional an understanding of the “state of the art” that existed before the invention was made, which in patent language is referred to as the “prior art.” This can be vital to enabling the patent professional to distinguish the invention from the prior art, and to highlight the new features and advantages of the invention. This may involve some searching of the internet on your part to see what is out there.
In addition, you may wish to request that a professional search be performed for prior art. The additional cost for this will be about $1400. The choice is entirely up to you. Generally speaking, if you are an expert in your field and you regularly monitor the relevant technical literature, attend trade shows, etc., then you may feel confident that you are already familiar with the prior art. On the other hand, if you are not an expert in the field of your invention, and if your internet skills are not strong, you may wish to invest in a professional search. It is notable that no search will be perfect. Furthermore, patent applications are not normally published until 18 months after they are filed. This creates an 18-month “black window” that cannot be searched. Any new business venture includes risk, and patenting an invention is no exception. Searching can reduce risks associated with filing for patent protection, but cannot eliminate them.
Once the patent professional feels that he or she understands the invention, and once any searching has been performed, he or she will prepare a first draft of the patent application for your review and approval. In some cases, it may be necessary for one or more revisions of the application to be prepared and reviewed before it is ready to file. Finally, the application is filed, and voila – you are patent pending!
A patent application, and any resulting patent, generally includes three basic elements, which are the Specification, the Drawings, and the Claims. The Specification is a written description of the invention and how it differs from the prior art. Typically, it includes examples of how the inventive concept can be implemented for practical purposes. Ideally, the Specification includes multiple examples that illustrate the range of applications to which the inventive concept is applicable. The Specification will typically include a Title and Abstract, a Background section that describes the prior art, a Summary section that gives the basic idea of the invention, and a Detailed Description section that describes the invention in more detail and gives examples.
The drawings are illustrations that support the description given in the Specification. They can include drawings that illustrate the prior art (clearly marked as such), as well as drawings that illustrate the invention. With rare exceptions, the drawings must be black-and-white “line” drawings. This is a requirement that originated when drawings were prepared by hand with India ink using a quill and a ruler and a French curve, but they are still in force. Black-and-white “half-toned” illustrations can be used to present actual photographs if needed, much as is done in newspapers. In rare cases, a special petition can be filed asking the patent office to accept color drawings and photos, but this is rare, and is only done when absolutely necessary to describe the invention.
The claims are the most important part of the application, because the claims define the metes and bounds of the invention that is to be protected. In other words, the claims define what a competitor is NOT allowed to do, once your patent is in force. Included are one or more “independent” claims that define the protected invention it the broadest possible terms, as well as “dependent” claims that define narrower aspects of the invention. We are often asked whether a limitation that appears in a dependent claim will limit the invention as a whole. The answer is no. It is the independent claims that define the boundaries of the patent. The dependent claims mainly represent “backup” protection, in case the independent claims are found to be anticipated by the prior art, either by the patent examiner or in court. By analogy, if your patent were compared to a medieval castle built to keep competitors away, the broad independent claims would represent the outermost wall that competitors were not allowed to cross, while the dependent claims would represent inner walls that provide additional lines of defense in case the outer wall is somehow breached.
As noted above, there are filing strategies that can reduce initial costs by deferring a significant portion of the costs until later. Often, this approach is adopted when it is hoped that, in the meantime, an invention can be licensed or a product brought to market, so that the resulting revenue can pay for the deferred costs when they become due.
Some inventors are able to further reduce the initial costs by increasing their participation in the process of preparing the patent application. For example, sometimes an inventor is able to reduce the amount of time that is required of the patent professional, and thereby reduce the preparation cost, by providing a detailed written description of the invention. It is rare that a patent professional can use such text verbatim.
However, a well written description can be an excellent starting point, and can streamline the process, if the inventor is able to provide one. In addition, if the inventor can provide an engineering drawing and/or high-quality illustrations, preferably black-and-white “line drawings,” these can be a big help in preparing the figures for the application. Better still if the drawings are provided as vector graphics rather than bitmaps, and even better still if a 3D drawing can be provided, for example as a “step” file. However, an inventor should be honest with himself or herself as to what he or she can reasonably provide. In many cases, quality illustrations or engineering drawings may simply be unavailable, and even some of the most brilliant inventors are not very skilled at writing. Your patent professional will, of necessity, be a skilled writer and illustrator, and will certainly be able to work with whatever you can reasonably provide, so long as you are somehow able to help him or her to understand your invention.
It simply means that some sort of patent application for the invention has been filed somewhere. Once you are patent pending, you should indicate this on any product that you sell that incorporates the invention, and you may wish to also indicate that you are patent pending on associated marketing materials.
If you are interested in licensing your invention to an established company, or in seeking a partner or investor, you may find that being “patent pending” is a necessary first step. Many potential licensees, partners, and investors are understandably concerned that after you disclose your invention to them, they might subsequently be accused of “stealing” your idea. This is especially true of potential licensees who already make similar products. As a result, they may require that you be patent pending before they will even talk with you, and they may warn you explicitly that you must rely on your patent pending status to protect you against any potential theft of your invention.
You should not publicly disclose your invention before you are patent pending. Some disclosures are obviously public, such as describing the invention in a technical journal article. Other forms of disclosure can be more debatable, such as disclosing the invention to potential customers. Usually, disclosing the invention to a potential supplier, designer, programmer, etc. will not be considered a public disclosure, especially if a non-disclosure agreement is in place.
If there has already been, or may arguably have been, a public disclosure of the invention, all is not necessarily lost. If the public disclosure was more than a year ago, then it may “bar” any efforts to seek a patent. However, if there has been a significant improvement to the invention in the meantime, then it may be possible to patent the improvement, and thereby establish an advantage in the marketplace.
The same “bar” will also apply to seeking foreign patents, even if the public disclosure was less than a year ago. However, US patent law includes a 1-year “grace period” during which, in theory, your public disclosure cannot be used against you. So, in most cases, you will still be able to patent your invention in the US even if it was disclosed by you, so long as the disclosure was not more than a year before the patent application was filed.
Furthermore, if someone learned of your invention due to your disclosure, they should not, in principle, be able to “beat you to the patent office” and patent the invention themselves, because they would not be the inventor of the invention. Of course, enforcing your rights under such circumstances will require detailed and convincing documentation to prove what happened, and such documentation is not always available. Hence, it is always important to document your inventive process, so that you will be able to prove later on that you were, in fact, the inventor of the invention. And it is always highly preferable that you wait until you are “patent pending” before making any public disclosure of the invention.
A provisional patent application is a special type of “temporary” patent application that offers several advantages, and some disadvantages, as compared to filing a “non-provisional” as the first filing for an invention. As is the case for any first filing of a patent application, filing a provisional application establishes your “priority date” for the invention, which is carried over into any subsequent non-provisional filings for the invention. From the moment that the provisional application is filed, you are “patent pending.” For this reason, a provisional patent application is sometimes inaccurately referred to by lay persons as “a patent pending.” To a patent professional, however, the use of the term “patent pending” in this way is both incorrect and “cringeworthy.”
A provisional patent application is not published, is not reviewed by the patent office, can never, by itself, become a patent, and expires after one year. If the inventor wishes to continue seeking a patent, then before the first anniversary of the provisional filing it must be replaced by a “non-provisional” that claims the “benefit” of the provisional.
Advantages of filing a provisional include slightly reduced initial costs, in that the filing fees are lower and the preparation can be less formal, and therefore quicker, than for a non-provisional. Another advantage is that a provisional application does not “count against” the term of any eventual patent. Furthermore, if the inventor decides not to replace the provisional with a non-provisional, i.e. decides to walk away from the process after filing the provisional, it will remain unpublished, and therefore undisclosed to others, unless it has been publicly disclosed by the inventor in some other way.
One of the biggest advantages of filing a provisional application, in many cases, is that it offers the possibility to add “new matter” to the eventual non-provisional application that replaces the provisional. Accordingly, if the basic concept of an invention is established, but improvements are ongoing, then filing a provisional may be the best approach, because it will protect the basic concept, while enabling any improvements that are made during the first year to be added to the eventual non-provisional.
Disadvantages of filing a provisional include a higher total cost of obtaining a patent, despite the lower initial cost. Also, the issuing of any resulting patent(s) will be delayed by one year. In addition, it is very important that the provisional application be prepared with the same care and quality that would be given to a non-provisional application. A first-filed application for an invention, whether it is provisional or non-provisional, is the foundation upon which any eventual patents will rely. Therefore, if the first application does not clearly present the invention, or if it defines the invention too narrowly or too broadly, then it may be much more difficult to obtain a meaningful patent for the invention. Because a provisional is not reviewed by the patent office, and because fewer formalities apply to a provisional application, it can be especially tempting to try to save cost by filing a “quick and dirty” provisional that is of poor quality. This can create a false sense of security, which may not be discovered until 2.5 years later, when the eventual non-provisional application receives its first office action from an Examiner. By then, of course, it is far to late to correct any flaws in the provisional.
We are sometimes asked about books with titles such as “Patent Pending in 10 Minutes” that claim to teach the reader how to write and file their own provisional patent application. We generally encourage our clients to read such books if they wish, so that they will be even more informed regarding the patenting process. However, we strongly discourage our clients from actually attempting to draft and file their own provisional applications. By analogy, if you were in need of having your appendix removed, and if you saw a book entitled “How to Remove Your Own Appendix,” it might be helpful to read the book so that you knew what to expect. However, few of us would actually attempt to remove our own appendix! That’s a job for a professional.
The time required to obtain a patent can also vary widely. In most cases, the process requires from 18 months to two years. However, there are ways to significantly speed the process up, or to slow it down. For example, a special fee can be paid to obtain “Track 1” status for a patent application, which can result in the issuing of a patent withing 4-6 months of filing. On the other hand, filing a provisional application as the first step, and proceeding at a normal pace after that, can result in a patent being delayed until about three years after the application is filed. Either approach may be optimal, or something in between may be preferred, depending on the inventor’s strategy for monetizing the invention.
Nothing – and everything! From a legal standpoint, nothing needs to happen during the first year after the application is filed. However, this one year “quiet” period is the ideal time to launch your efforts to monetize your patent pending invention. Depending on your strategy, this might include “productizing” your invention and bringing it to market yourself, or seeking a partner, investor, or licensee who will help to bring the product to market.
After one year, you will need to decide whether to seek international protection of the invention. This can include filing directly in one or more foreign countries under the Paris convention, or filing a PCT application with WIPO.
If you have filed a provisional application, then at the end of the first year a non-provisional will need to be filed to take its place. The non-provisional can be a PCT. In other words, filing a PCT is all that you need to do after one year to maintain both your domestic rights and your foreign rights. Eventually, you can file in the US as one of your PCT “national phase” countries.
If you have decided not to pursue international protection, then the provisional can be replaced by a US non-provisional application.
Once a non-provisional has been filed in the US, either directly or as a national phase filing of a PCT, the application will be assigned to an examiner at the patent office, and it will enter his or her queue, waiting for its turn to be examined. This waiting period can last another 1-2 years. Finally, the Examiner begins the “prosecution” phase by reviewing the application and performing a search of the prior art to see if the application can be allowed. Based on his/her review of the application and prior art search, the Examiner will then issue a first “office action.” On rare occasions, the application is allowed on the first action. Much more often, the application is rejected on the first office action, and we will need to draft and file a response to the office action with claim amendments and arguments that attempt to overcome the Examiner’s rejections.
What ensues then is a sort of “tennis match” between us and the Examiner, where the Examiner issues rejections and we file our responses. Each such “round” of prosecution can take about six months, and can cost about $4500. It is not uncommon for 2-3 rounds of prosecution to be required before an application is allowed. Accordingly, the prosecution phase is when the bulk of the total patenting cost is incurred. Statistically, about one half of all applications that are submitted to the patent office are eventually allowed and issued as patents. Our success rate is generally much higher than that, but there is certainly no guarantee of success.
On rare occasions when an Examiner is clearly wrong, but is refusing to budge, we may need to appeal the Examiner’s decision. The cost is roughly equal to two rounds of prosecution, but may be the only way to move forward. Statistically, about one half of all such appeals are successful. Once again, our success rate is generally much higher than that, but the outcome cannot be guaranteed.
Assuming that we eventually succeed, we will receive a notice of allowance from the patent office, at which point we are given a two-month deadline to pay the “issue fee,” after which the application will issue as a US patent. Periodic maintenance fees will be payable about every 4.5 years after issue, but otherwise that’s it.
Patents are inherently “national,” in that they are issued by individual countries and protect inventions only in the countries where they are issued. In today’s highly global market, it is therefore important to consider whether to seek international protection of an invention. The costs can be very high, even as compared to costs in the US, but the rewards may worth it. Obtaining foreign patents can also be a much slower process than in the US.
Most countries in the world, including the US, are signatory to the “Paris Convention,” which requires that once an inventor files for patent protection in one Paris Convention country, he or she can wait for up to one year to file for similar protection in other Paris Convention countries while claiming the “priority” of the first filing. In most cases, an inventor who resides in the US will file a first patent application for their invention in the US. Accordingly, after this first application is filed, the inventor can wait up to one year before filing additional patent application in other countries. After one year, the inventor’s US application will be considered “prior art” against any foreign filings, effectively barring the inventor from seeking international patent protection.
A year can go by very quickly, and it is not uncommon for an inventor to remain unsure as to if, and where, international protection should be sought. Fortunately, there is an international patent forum where a generic “international” application can be filed. The forum is called the “World International Property Organization” (WIPO), and was formed by the “Patent Cooperation Treaty” (PCT). WIPO does not actually issue patents. However, all of the signatories to the PCT, which is nearly all countries in the world, have agreed to accept entry of “PCT” applications into their national patent process at any time until 18 months after the international PCT application is filed. This means that an inventor can file a US application, wait one year, file a PCT application, and wait another 18 months (total of 2.5 years) before the inventor is forced to decide if and where to file for international protection.
The PCT process is described as including two “phases.” The first phase is the 18 month period during which the international PCT application is pending. The second phase is called the “national” phase, and refers to entry of the patent application into selected individual countries as “national phase” applications.
For both Paris Convention and PCT national phase filings, Europe is considered to be a single “country.” Rather than filing separately in Germany, the UK, France, etc., an inventor can file and prosecute a single patent application with the “European Patent Office” (EPO), hopefully receiving a granted European “patent” as a result. But there is a catch. A European “patent” cannot be enforced as such. Instead, it must be “validated” in individual, selected European countries, after which it will be enforceable only in those selected countries. Accordingly, at the end of the process, it remains necessary to choose the individual countries in Europe where protection is needed.
However, it is expected that as of Spring of 2023 a new option will become available in Europe, whereby an inventor will be able to obtain a single “unified” patent that covers all European countries. Of course, the cost of a unitary patent will be high, but it is estimated that if validation is desired in 6 countries or more, a unitary patent will likely be the less expensive option.
It is notable that most foreign countries charge “maintenance fees” (also called “annuities”) every year, beginning when the national phase or other Paris Convention application is first filed, and continuing through the life of the patent. By comparison, in the US maintenance fees are charged only every 4.5 years, and only after a patent issues.
For both US and foreign patents, the protection lasts up to 20 years from the date when the first application was filed. So, for example, if your first application is first-filed as a non-provisional in the US, with PCT and national phase applications following in other countries that claim the priority of the US filing, then the term for all of the resulting patents will be 20 years from the filing date of the US application.
There is an exception, however. If you begin the process by filing a provisional application in the US, this will not count against your patent term in any country. Instead, if you establish your priority date by filing a provisional application, the term of any resulting patents will be 20 years from the filing of your first “non-provisional” application, which means that, effectively, your term can be up to 21 years from the filing date of the provisional.
If you are seeking a reliable U.S. patent law firm that is accessible, effective and efficient, please give us the opportunity to introduce ourselves. Since 1993, we have provided U.S. intellectual property law services for clients throughout the U.S. and abroad, including patent and trademark prosecution and licensing, and IP portfolio management.
At Maine Cernota & Curran, we have a New England Attitude about cost, quality, client relationships, and great service. Call us at (603) 886-6100.