Patent Process

CAN I PROFIT FROM MY INVENTION?

       You have an idea for an invention. So how do you preserve your options, including the option to obtain a Patent and profit from your invention, while you develop your idea into a marketable product or process?

       Many inexperienced inventors seek to patent their invention too soon.  Those inventors who run to their patent lawyer too soon, before fully testing and developing their inventions, frequently find themselves with an invention that continued to develop and change to the extent that the invention is no longer the product described in, or protected by, the Patent. Those inventors are left with a worthless Patent.  Smart inventors learn how to fully develop their invention while still
protecting their right to patent and profit from the invention at a later date.

       It is important to understand that under the U. S. Patent laws, the first person who invents the product or process is entitled to obtain the Patent thereon.  Conversely, in many other countries, the first person to file a complete and proper Patent Application is entitled to obtain the Patent on the invention.  As a result, inventors in the U.S. do not have to rush to the Patent Office with their untested and ill-conceived
inventions.  In the U.S. inventors may, and should, take their time to research, test and develop their inventions before seeking to obtain a Patent.  It is very important, however, that an inventor in the U. S. be able to date and document his creation process.

First, you should determine whether to treat your idea as an invention that you may wish to Patent or as a trade secret.

       In general, a trade secret is secret information that is useful in commerce.  Trade secret law protects against industrial espionage or the misappropriation of information by an unfaithful employee.  Most trade secrets are information that is used by a particular business and are not a product or process that a business wishes to sell or license to another business.  Frequently, certain ideas are not capable of being patented, such as: client lists, secret formulas and data compilations, and so they are kept as trade secrets.  The U. S. system does not favor keeping inventions secret and trade secrets do not have the same protections as patented inventions.  For example, unlike protections for patented inventions, trade secret law does not prevent the legal use of an invention if it is discovered through reverse engineering or independent discovery.  Moreover, an applicant cannot obtain a Patent for an invention that he has used commercially while it was a trade secret for more than one year.  The right to patent the invention is forfeited.

       In general, an invention that may be patented is an innovative product or process.  A mere idea cannot be patented. The invention must have a physical manifestation.  Also, the invention must be: 1) useful; 2) novel; and 3) not obvious.

       A U. S. Patent has many benefits. It provides the owner with exclusive rights to the invention for up to twenty years. A Patent provides the owner with intellectual property rights that exclude others from using or profiting from the patented invention without the owner’s permission. Patent law also provides many remedies for infringement that are not available to the owner of a trade secret.

Second, you must determine whether seeking a Patent for your invention is worth your time and money?

       The simplest product or process invention will cost at least $6,000.00 to patent. This figure does not include the inventor’s time in creating, developing and testing the
invention. Before considering whether to patent an invention, it is important to determine whether there is a market for your invention and how much you may reasonably expect to earn from the sale or licensing of the rights to your invention.

       Most patented inventions are not manufactured, marketed or sold by the inventor. Most inventors profit from their patented inventions by licensing the rights to their invention to a third party. The inventor still owns the patented invention, but he enters into a license (a contract) that permits a third party to  manufacture, market and sell the invention. It is only through product development and market research that an inventor may determine whether pursuing a Patent for his invention is worth the time and expense.

PRESERVING YOUR PATENT OPTIONS

What is a Patent?

        A Patent is essentially a monopoly on an invention. It grants to the owner an exclusive right to profit from the invention within the nation that granted the Patent.

What may I Patent?

        Most Patents are so called “Utility Patents,” which encompass a product or process.  A patentable invention must be new, useful, and non-obvious. You cannot patent a mere
idea.

What is the duration of a Patent?

        The maximum duration of a U.S. Patent is twenty (20) years from the date the Patent Application is filed with the United states Patent and Trademark Office. We refer to the “maximum” duration of a Patent because Patent rights may be lost forever if, for example, the owner of the Patent fails to pay the periodic maintenance fees. These maintenance fees are due, roughly, every four years and double in amount with each installment. Currently the first maintenance fee for a  Utility Patent is $490.00.

How much time do I have in which to file a Patent Application?

        You must file either a Provisional Patent Application (a “PPA”) or a Patent Application within one year of the date of the first: (1) public use; (2) public sale; or (3) the first publication of a description of the invention.

What other time-constraints affect my ability to patent my invention?

        You should pursue the development of your invention and reduce it to practice with reasonable diligence. Unlike most other countries, the United States awards Patents to the first inventor and not to the first person who files a complete Patent Application.

        Therefore, it may happen that two inventors, working independently of each other, come up with the same invention at close to the same time. The first-to-file scheme in other countries encourages inventors to file their Patent Applications as quickly as possible without extensive testing and development. In the first to file countries, it is usually very easy to resolve who is entitled to a Patent; the first inventor to file prevails.

        In the U. S. the trade-off for encouraging testing and perfection of inventions prior to patenting is the potential obligation to prove who invented the product or process first. In the event there is a conflict, i.e. two or more inventors claim to have created the same invention, then the PTO will award the Patent to the first inventor who: 1) conceived of the invention; 2) reduced the invention to practice; and 3) pursued the development of the invention with reasonable diligence.

         “Reduction to practice” generally means the actual and complete use of the invention for its intended purpose. Usually reduction to practice is shown by: 1) physical construction of the invention; and 2) testing of the physical embodiment of the invention.

         “Reasonable diligence” is much more difficult to define because it depends upon many factors, including the nature of the invention and what is considered to be a reasonable amount of time for creation of such an invention in its industry. Reasonable diligence refers to the length of time it takes to reduce the invention to practice. As a general rule, reasonable diligence is the regular and consistent attempt to reduce the conception of the invention to practice. Also, there must have been no unreasonably long cessation or abandonment of such efforts.

What if I conceived of the invention years ago and only recently began to attempt to reduce it to practice?

         If you conceived of an invention some time ago and have only pursued developing that invention recently or in fits and starts over the years, you should not be discouraged from finalizing your invention and seeking a Patent for it. Many inventions are developed over time, with many failed attempts along the way. The issue of diligence only arises if you have to prove that you invented the product or process first. Such contests are not common and it may very well be, even with your sporadic work, that you are entitled to the Patent.

How can I prove that I was the first person to conceive of the invention and reduce it to practice and that I did so with reasonable diligence?

         In the event of a contest between two or more inventors who claim to have invented the same product or process first, the PTO cannot rely on the inventor’s uncorroborated, albeit sworn, testimony alone. As a result, it is extremely important that the inventor and his agents keep dated logs, with notes describing the invention, to corroborate his sworn testimony. It is important to keep dated photographs of the invention and written records of all tests. Keeping records and making daily notes is also a good habit to have.

With whom may I discuss my invention? Under what circumstances may I reveal my invention to others?

         In order to obtain a Patent for an invention, all construction and testing of the physical embodiment of the invention must be carried out by the inventor or by others who act: 1) at the inventor’s request; and 2) on the inventor’s behalf.

        Inventors should make sure to obtain a written, signed and dated agreement from anyone who will be constructing or testing the invention on the inventor’s behalf. The agreement should generally describe the invention and state that knowledge and testing of the invention by the other person is being done at the inventor’s request and on the inventor’s behalf.

How secret must I keep my invention before I seek to patent it?

        Generally, you must keep your invention secret enough to prevent it from falling into the public knowledge or public use. Although secrecy is a good practice to prevent someone from stealing your ideas, there comes a time when it is helpful to reveal your invention to third parties who can test your invention in real world applications. For example: you invent a certain tool and you want to show your invention to construction workers to determine how the tool performs on the job and how the tool may be improved. This sort of testing and development is encouraged by the patent system because the first requirement for obtaining a Patent is that the invention is “useful.” Real-world testing and improvements help make an invention more useful.

        An inventor should be selective about revealing his invention before filing a Patent Application and should obtain written and signed confidentiality agreements with anyone who will use or have access to the invention. These agreements should also state that any suggested improvements to the invention made by the tester are the property of the inventor, if that is indeed the case.

WHEN IS MY INVENTION READY TO PATENT?

        Generally, you should file a PPA or a Patent Application for your invention when your invention is ready to be sold. You should also file a PPA or a Patent Application for your invention if: 1) you believe that knowledge or use of your invention may have become public; and 2) our invention is sufficiently finalized to be described in an Application.

       Every invention and situation is unique. These are general suggestions and are not intended to constitute legal advice. If you have specific legal questions, consult with an attorney who specializes in patent law.