Inventing for Money - Step 2
Protect: Patent your idea
After months or years of development and testing, you’ve perfected your gizmo, your new process that will make manufacturing faster and cheaper, or a new medical device that will help save lives.
There it is, waiting in your garage or kitchen or workroom, ready to be introduced to the world!
But you don’t want to simply give away your invention, like open-source software is given away. You’re entitled to be rewarded for your hard work. You want to monetize your idea and make a profit.
To do this you need to get legal protection. You need to be able to prove that the invention is yours and yours alone.
The first thing you should do is go to the website of the United States Patent and Trademark Office at uspto.gov.
It is not the purpose of this guide to reprint the information that you will find on the USPTO website or in its many publications. The USPTO Patents Process page will lead you step-by-step through the patent application procedure. What this guide will do is reveal the key parts of the process and provide a layman’s interpretation of what can seem like a dense and lawyerly process.
Conduct a Patent Search
To summarize, patent novelty searches can help determine whether your invention is indeed novel or whether someone has previously patented your idea. Although patent searches are expensive, they are much less expensive than the cost of actually filing a patent application, and they can help you prepare a more effective application. Additionally, the patent search can be used as the basis for seeking expedited examination in the Patent Office. Keep in mind, though, that patent searches are not perfect, and it is not uncommon for patents to turn up later that were not discovered in the initial patent novelty search.
There are many reasons to search the patent archives for prior patents. For example, before filing a patent application on a new invention, it is often a good idea to search to determine whether someone else has already patented the invention. A search to determine whether an invention is new is called a novelty search. Performing an invention novelty search prior to filing a patent application can significantly reduce the likelihood of having your patent application rejected due to prior similar inventions. Obviously, there is no point in filing a patent application if someone else has already patented the exact same idea. Also, performing a patent search will help provide a clearer picture of what aspects of your invention are new and which ones have already been protected or claimed by others.
As helpful as patent searches can be in certain circumstances, there are a couple of limitations which need to be considered before searching. First of all, patent searches are not completely reliable, since searching does not provide access to pending patent applications which have not yet been published. Historically, only issued patents and not pending patent applications have been available to the public. As of November 29, 2000, patent applicants can elect to have their applications published and available for public searching. This publication of pending patent applications occurs approximately 18 months after the priority filing date of the application. Since about 350,000 patent applications are filed each year, you can expect that about half a million of the most recent United States inventions are not even accessible for searching. If your invention relates to a recent or quickly developing area of technology, there is a reasonable likelihood that some of the patents you would like to search are inaccessible, buried in the large stack of unpublished applications.
The other reliability problem associated with searching is that the available search tools are not perfect. Until very recently, patent searches were performed largely by professional searchers in tennis shoes who would race through the millions of shelved patents in the Patent Office, searching through stacks of documents for specific related art. Trained searchers could proficiently scan quickly through boxes of patents, rapidly checking titles, abstracts and figures for hints of a specific invention. These traditional searches, although time consuming, produced surprisingly good results. The problem with these manual searches, however, was that if specific patents were missing from the shelves being searched, significant searching errors could occur. Keeping the patent stacks in pristine condition for searching has always been a losing battle for the Patent Office.
Over the past two decades or so the Patent Office has become computerized, providing much greater accessibility and improved availability of patent documents. With documents available electronically, past limitations such as having patents physically missing from the shelves, or Patent Office restricted operating hours, no longer apply. Unfortunately, searching patents by computer is in many ways different and in some ways less effective than searching by flipping through related stacks of documents. Current patent searching by computer is generally performed by searching specific terms or key words. Early inventions in a specific technology, however, by their very nature may lack a common language with which to describe the technology. An example of this can be seen in describing certain electronic circuits. Although the function of a circuit might be easily identified, the structure might be such that five different engineers might characterize the invention in five different ways. Over time a common vocabulary will evolve around the circuit, making document searching possible, but those earlier patents relating to the technology may or may not use any of the later adopted terms or vocabulary. Without well-defined words to characterize an invention, searching by key words can be difficult or impossible.
A second difficulty with computer searching is that some inventions, especially those that are mechanical in nature, are most effectively searched by looking at figures or schematics of the invention. For example, a conventional paper clip is easily recognized by its appearance, but using a keyword search to describe the structure of a standard metal paper clip, or to find a patent of a device of similar shape but having some other function, would be extremely challenging.
The point is that patent searching is not an exact science, and whether searching manually or by computer, expect that pretty decent searches are possible but exhaustive searches are not.
Provisional Application for a Patent
Filing for a patent can be expensive. You may not be sure if the gizmo you have invented is commercially viable. Before you make a big investment, you may want to have provisional legal protection without going through the full patent process.
You can. Since June 8, 1995, the USPTO has offered inventors the option of filing a provisional application for a utility or plant patent. This is designed to provide a lower-cost first patent filing in the United States.
Then, should you choose to proceed with your plans to monetize your invention, you are entitled to claim the benefit of a provisional application in a corresponding nonprovisional application filed no later than 12 months after the provisional application filing date.
But first things first: the provisional application.
A provisional patent application can be thought of as a placeholder application. It has many of the advantages of a regularly filed, nonprovisional patent application, but it differs in several important ways.
- Provisional applications have reduced formality requirements. Unlike nonprovisional applications, provisional patent applications are not subject to specific formatting or organization requirements, text and figures can be handwritten, there is no spelling requirement, no need to discuss prior art, no requirement for a summary or an abstract, and significantly, no requirement for patent claims, which are essential in order to receive a filing date for a nonprovisional application. (The “claim” is the exact protection you seek. “An apparatus for feeding birds, such apparatus comprising a cylinder with holes…” is your claim.)
- The provisional application, once filed, is never actually examined by the USPTO examiner. This lowers the cost compared to a nonprovisional application.
- Filing a provisional application allows you to use the “patent pending” notice in connection with the invention, and enables immediate commercial promotion of the invention. The use of the “patent pending” label provides an aura of legitimacy and novelty to a product, and it may create a chill in the marketplace for other developers of similar products who see the product and recognize that a patent is pending. (It is against the law in the United States and in many foreign countries to affix a “patent pending” notice to a product or an invention in which there is no patent pending. In the United States, a penalty or fine of $500 per offense accompanies the improper labeling of a product in this way; half of this fine is paid to the person identifying the mislabeled goods.)
- The provisional patent application is a relatively efficient and cost-effective way of protecting an invention during the early development process. Multiple provisional applications can be referenced by a later-filed nonprovisional application, combining their ideas into a single document. This can be particularly useful when an invention is undergoing development.
Filing a Provisional Application
The provisional application involves filing a simplified invention disclosure to secure a fixed date for purposes of both United States and foreign priority. Provisional applications can provide a lower cost, expeditious, and informal mechanism for getting legal protection for an invention.
A provisional application must be made in the name of all of the inventors of a given invention. It can be filed up to twelve months following the date of first sale, offer for sale, public use, or publication of the invention.
A filing date will be assigned to a provisional application only when it contains:
USPTO Services for Independent Inventors
To encourage individual entrepreneurship, the Patent Office offers programs and discounts to independent inventors. Inventors who qualify as a small entity (e.g., independent inventor, a small business, or a nonprofit organization) are eligible for a fifty-percent reduction in the USPTO’s filing, issue and maintenance fees. That can translate into a savings of thousands of dollars when compared to what large corporations pay.
The USPTO Inventors Assistance Program is specifically geared to small inventors and entrepreneurs, and offers a wide variety of incentives and benefits.
Patent Timeline
Here are the basic steps you can expect when you file your patent.
- Perform a search to ensure your device has not already been patented.
- Choose the type of patent you need (probably a utility patent).
- Choose to file provisional or nonprovisional patent. If you have invented a device, you will almost always file a provisional patent first.
- Choose to file yourself (pro se) or use an attorney or agent.
- These days, filing can be done online. If pro se, then you should become a registered user of USPTO’s Electronic Filing System (EFS-Web) and Patent Application Information Retrieval (PAIR) system.
- File your patent application and documents using EFS-Web, the USPTO’s Web-based patent application and document submission solution. Paper applications received by the USPTO are numbered in sequential order and the applicants are informed within eight weeks of the application number and official filing date. However, if you file electronically, your application number is available within minutes.
- If you are filing a nonprovisional utility patent application, the USPTO examiner will review your application. The examiner may contact you with questions or for clarification. If rejected, you may appeal.
- Here’s the question everyone wants to know: How long does it take before my application is approved? The USPTO says that the average patent application takes 24.6 months to be approved.
Beware the Patent Marketing Company
Inventors should be wary of for-profit Invention Development Organizations (IDOs) that profess to help inventors with the patent and marketing process. While many of these companies are legitimate, some are not.
A legitimate IDO should make a detailed inquiry into the merits of your idea and give you a full range of options, which may or may not include the pursuit of patent protection. Some unscrupulous IDOs will steer you toward paying for patent protection for your idea with little regard for the value of any patent that may ultimately issue.
An IDO may recommend that you add ornamentation to your product in order to render it eligible for a design patent, but not explain to you the purpose or effect of such a change. Because design patents protect only the appearance of an article of manufacture, it is possible that minimal differences between similar designs can render each patentable. Therefore, even though you may ultimately receive a design patent for your product, the protection afforded by such a patent may be somewhat limited.
You should also be aware of the broad distinction between utility and design patents, and realize that a design patent may not give you the protection desired.