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INVENTION TO PATENT: PITFALLS, PERILS AND PROCESS

Gene Quinn

October 5, 2013, 09:15 AM   5

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So you have an idea and want to get a patent? There are a number of things that
you need to know about the invention and patent process that can help you focus
your efforts and know what obstacles lay in front of you.

The first thing to know is that you cannot patent an idea. Many people will have
great ideas, but will not be able to put that idea into a package appropriate
for a patent because there is no invention, only a concept. To be sure, the idea
is the all critical first step in the invention process. After you come up with
the idea or concept you now need to put together a game plan on how to carry
that idea through. The idea and game plan together form what the law calls
conception.

Up until March 16, 2013, conception was quite an important legal concept in the
United States because under U.S. law the patent was awarded to the inventor who
was first to conceive. See Brave New Patent World: First to File Becomes Law.
Although that sounds easy and has been romanticized by many, there were strict
legal rules about the proof required for the first to conceive to prevail over
the first to file and ultimately be awarded the patent. For the most part those
types of issues are now irrelevant. Effective March 16, 2013, the United States
is now a “first inventor to file” country, so filing a patent application as
soon as you have something tangible enough to qualify as an invention is of
critical importance.

But rushing to file is putting the cart before the horse. First you have to get
from idea to invention and then to the patent process.







Although conception is not the important issue it once was under U.S. patent
law, inventors really should still document the stages of invention as they move
from idea to more tangible idea and ultimately to conception and the beginning
of an invention. Documentation is not completely irrelevant, and keeping good
records is never a bad idea. Thomas Edison, for example, once explained that a
failed experiment was not really a failure at all since you now know at least
one thing that won’t work. I’d add a corollary to that famous statement though:
Even an invention success can be a waste of time without proper notes and
documentation. After all, if you keep no records how will you know what failed,
or what succeed for that matter? Edison is right, failure teaches but never
forget that memory fades.



So as you are moving forward keep good, comprehensive notes, which can take the
form of a diary, book of sketches, ideas, notes to yourself or a combination
thereof.

Once you do conceive (idea + game plan) you will need to be diligent and not let
any grass grow under your feet as you move forward toward defining and
experimenting with your invention. This is true because first to file really
needs to be interpreted as “file first.” There are exceptions where an inventor
might still be able to prevail if they file second, but the exceptions are
almost too narrow to even mention. Still, if you have reason to believe someone
disclosed before you filed or even filed a patent application before you did,
you may still find it worthwhile to file a patent application as quickly as
possible. No one knows how the courts will interpret these exceptions, but if
you don’t get something on file as soon as possible even a more liberal
interpretation about the exceptions several years down the road won’t help you.

Once you have the idea and the game plan you are at the point where you are
moving forward trying to finalize your invention. This process is trying to
accomplish what the law calls a reduction to practice. You do not need to have a
prototype built in order to get a patent, but you will need to be able to
describe your invention with enough specificity so that someone who is
technically skilled in the area of the invention can understand how to make and
use the invention. Reduction to practice, therefore, can occur through the
creation of a prototype or the specific definition of the invention in writing
in a filed patent application. If your invention is complex more explanation and
definition is required. If it is relatively simply then less explanation is
required, at least generally speaking. The more specificity you provide,
however, the easier it will be for you and/or your patent attorney to write a
patent application. If you hire an attorney you likely want to provide as much
as is possible so that the attorney does not need to spend a lot of time weeding
through invention notebooks to define the invention.

The more you do and the more organized you are the better. Organization and good
information will generally allow for one of two outcomes that impact the cost
associated with hiring a professional to assist you. First, if you are organized
and have a good grasp on what you have invented, together with at least decent
sketches or drawings, you can expect to pay less in attorneys fees, at least at
the beginning. The other alternative is that you will pay the same but by
presenting the information in a coherent, thoughtful and detailed manner you
give your patent attorney the ability to do far more with the funds you have to
spend. The reality is that you will run out of money before a patent attorney
runs out of ability to further expand the description of your invention. There
is always something more that can be written and claimed in a patent
application, even for something of modest complexity. But if you present good
information in an organized manner the attorney can spend time adding value,
which is what you want them to do and the reason you are hiring them in the
first place.  Patent attorneys charge for their time, whether by the hour or as
part of a project fee. So less time figuring out what the invention is and the
various aspects and nuances the more time they have to produce a much more
detailed patent application, which will result in better, stronger rights long
term.

[Inventors-Books]

Let’s return to the game plan for a minute. The game plan is what connects your
idea with the reduction to practice. What you need is the knowledge and
understanding of how you can take your idea and move forward toward a reduction
to practice. Your game plan does not need to be flawless. It can and frequently
will be modified over time as you begin conducting research or otherwise working
on your invention. It might even change as you start to see the invention as
described by your patent attorney, which for many is the first time they really
see the big picture and how important it is to describe even seemingly minor
nuances. The game plan, however, is frequently where many inventors,
particularly first time inventors, encounter significant problems. Remember,
simply coming up with an idea is not enough.

From time to time I will hear from people who say: “I have this great idea and I
want to get a patent. I just need to find someone who can figure out how to make
the product, but if someone could figure out how to make it I know I could make
money.” What we have here is someone with an idea but no game plan, at least not
yet. You cannot protect an idea. You should also remember that if you tell
someone your idea and you do not have a promise (i.e., some kind
of confidentiality agreement) from them to not take it they can indeed take it
for themselves. Be careful. Having said this, there is absolutely nothing wrong
with more than one person working on an invention and being what is called joint
inventors. A patent will need to be applied for in the name of all joint
inventors (frequently called co-inventors), and absent an agreement each joint
inventor will have equal rights to the patent if one issues.

If you are in or contemplating a joint inventor collaboration I strongly
recommend seeking the assistance of an attorney who can help you memorialize any
agreement among and between the inventors. It is always easier to get such
agreements in writing and out of the way on the front end prior to money rolling
in. Once money is being made these agreements become difficult to achieve,
everyone has a different understanding based upon what would reward them most
and the entire negotiation/relationship starts to take on the characteristics of
a divorce. So get these potentially thorny issues out of the way sooner rather
than later.

[Inventors-Google]

To review, the law recognizes that with many, if not most, inventions there will
be three steps to the invention process. The idea comes first, followed by the
game plan, followed by the reduction to practice. When dealing with some
inventions the idea, game plan and reduction happen rapidly. With other
inventions there is some time between these steps. To get from idea to an
invention that is reduced to practice it is sometimes necessary to find
assistance. If that is the situation you are in take a look at Moving from Idea
to Patent. Also consider speaking with a product development specialist who can
help you with concept drawings, 3D modeling and product engineering. Whatever
you do, before you rush out to spend money on a prototype please first read
Financially Responsible Inventing: Prototype Basics and Keep Your Money in Your
Pocket Until Proof of Concept.

The moral of the story is that inventing is a process. You start with an idea,
you then need a game plan to turn your idea into a reality. As you go along the
way your invention will take shape and become more tangible and identifiable. As
that happens you very well may have an invention that could be patented. At some
point you will need to do a patent search. I am a fan of inventors doing their
own preliminary searches, not because you are likely to find the best prior art
but rather to educate yourself and learn. The more you understand the better
inventor you will become. For more on patent searching see: Patent Searching
101: A Do it Yourself Tutorial and Patent Searching 102: Using Public PAIR.

Happy inventing!

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Gene Quinn Gene Quinn is a patent attorney and a leading commentator on patent
law and innovation policy. Mr. Quinn has twice been named one of the top 50 most
influential people [...see more]
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Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not
constitute legal advice, nor do they create any attorney-client relationship.
The articles published express the personal opinion and views of the author as
of the time of publication and should not be attributed to the author’s
employer, clients or the sponsors of IPWatchdog.com. Read more.


JOIN THE DISCUSSION

5 comments so far.

 * BENNY ATTAR
   
   October 8, 2013 01:40 am
   
   Joel,
   Thats not quite accurate. Many of your potential competitors have no idea of
   the size of youe legal budget and will prefer to steer clear of your patent.
   So holding a patent without defending it can definitely reduce the size of
   your competition, which is the next best thing.

 * JOEL GODIN
   
   October 7, 2013 07:42 am
   
   I’ve known several inventors with patents that have gone bankrupt defending
   their patent that someone has knocked off.
   Patents are only as good as the pile of cash needed to defend them.

 * GLEN
   
   October 6, 2013 10:56 am
   
   Great overview Gene!

 * BENNY ATTAR
   
   October 6, 2013 07:24 am
   
   One point that Gene didn’t mention and I thought I might bring up – anything
   you write in the description – and there is really no restriction on how far
   you can go here – can be used as prior art to prevent you OR your competitor
   from obtaining a future patent. So this is a double edged sword, but usually
   works to your advantage. So if you think your widget might in the future be
   powered by zero-point energy beams, write it in the description as a possible
   method, and when someone gets around to actually inventing those beams, they
   won’t put you out of business by selling beam-powered widgets exclusively.

 * BRGY
   
   October 5, 2013 05:38 pm
   
   as an inventor (idea in concept) my main fear is that the invention i created
   will be be “COPY” first before i can patent it in the USA there are rumors
   among pilipino inventors that when we patent our invention in the philippines
   the patent is only protected in the philippines.

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