Information for the new inventor
New inventors often ask "I have a great idea, how do I protect it? " or "what do I do to make money from my invention" or "what is my next step?".
If appropriate, hire us to conduct a first patent consulation to help understand if your idea is patentable or protectable. We will provide a written estimate and client engagement agreement that explains how we will work together. In first patent consulation we can review your invention disclosure and any prior art.
Usually a professional novelty search is then performed.
If it makes business sense, we can write and file a patent application or a provisional patent application. We will provide a written estimate and client engagement agreement that explains how we will work together.
You then can commercialize or license your invention for profit
Below we elaborate on the points.
1. Inventor's novelty search and business evaluation
We recommend that the inventor do their own novelty search and business evaluation.
perform a novelty art search to see if your invention is patentable and that a patent does not already cover your invention.
determine the marketability of your invention - create rough business plan
Also, the inventor should consider doing the following before a patent application is filed:
- keep your invention a secret until you file a patent application to minimize your chances of losing US and foreign patent rights
- document your invention and work in an inventor notebook and have witnesses sign
- have anyone you disclose the invention to with sign non-disclosures agreements and agreements to assign any ideas/IP they have back to you.
- build models and test invention, refine idea/invention, document this in your notebook
- read up on patent law, licensing and business so you can make better decisions
Critical information - bar dates
For a US patent, under 35 USC 102(b), you must file a patent application within one year after its disclosure in a printed publication, used in public, sold, or even offered for sale. This is called the US one year grace period. In addition, for most foreign countries, public disclosure before filing a patent application will bar you from getting a foreign patent.
It is advisable to file a patent application before you disclosure your invention to any third parties, publish in print or on a website, publicly use or offer for sale. Please consult your patent agent or attorney if you plan to or have done any act under
35 USC 102(b).
2. Contact us for a free initial phone interview
Initial phone interview
As noted above, I recommend that you keep an inventor's note book, create an invention disclosure, perform a prior art search, and estimate the commercial potential of your invention.
The inventor should call me to discuss their situation. No confidential information will be discussed. In the first phone call I try to determine:
- what type of IP protection is available - patent, trademark, copyright, trade secrets
the general technology of the invention
- whether I am competent in the technology
- whether the idea is protectable or patentable subject matter
- do not discuss any confidential information yet
whether the invention is documented in an inventor notebook and invention disclosure
whether a prior art search has been performed by the inventor and how well the inventor knows the prior art.
3. Patent consultation - evaluate merits of patent protection
If it makes business sense for the inventor to consider my services, a patent consultation (fee based) can be arranged. An engagement agreement is signed. The inventor sends us an detailed invention disclosure. During the patent consultation, we will review the invention and any prior art. We will discuss patent issues.
any issues with co-inventors and any agreements between co-inventorswhat stage of development - has a physical model been made - (reduction to practice) whether the inventor has publicly disclosed the invention or triggered any 35 USC 102(b) acts or plans to
- We provide a written estimate of how much services cost and an engagement agreement. A retainer of 100% of the estimated services for the initial task (such as prior art search) is required. The retainer is held in an attorney trust fund.
The inventor decides what services they want. If the inventor decides to use our services, the inventor will send us a signed engagement agreement letter, and a retainer, so we can begin work.
For more information see consultations
4. Professional novelty (prior art) search and analysis
Although optional, usually a professional novelty search is recommended.
A search and analysis can provide advantages:
Estimate if the invention is patentable or how broad could the claims be -
A novelty search by a professional could find prior art references that could make the invention unpatentable or narrow the scope of the patent. Help avoid patent infringement -
In addition, an issued patent could be found that the invention could infringe. It is better to find this information before investments are made in invention and a patent application is filed. It may be possible to design around the patent. Draft better claims and save prosecution costs- The references can help the attorney write better claims to avoid the references. This can also reduce costs of patent prosecution and obtain a stronger broader patent sooner.
There are different levels of searches. The more thorough the search the more cost and more benefit.
preliminary (knock out) search - short patent search to see if any one reference shows the invention
patentability search - more throughout
Clearance/infringement search
The amount to spend on a search is a business decision. Also, searches can not be guaranteed to file all relevant references. It is thought that patent ablity search only uncover between 30 to 60% of references.
5. Writing and filing the patent application
A typical process is:
Inventor interview -First, We will usually interview the inventor to obtain more details of the invention and ask the inventor things intended to improve the patent application. Preliminary claims are written to capture the key points of the invention.
Final details of invention - The inventor is asked for final drawings and final descriptions. It is important that the invention is final and not changing. Changing the invention after the patent claims/figs/specification is written increases the time/cost of the patent.
Provisional or regular patent application decision- We will determine which patent application is better for your situation.
Drafts and reviews - Next, I will write draft claims, number and name elements on the figs and review with the invention. A draft patent application is written and reviewed by the inventor. Usually a second draft is written and reviewed.
Signoff and file -
Lastly, a final patent application including figure sand filing papers is sent to the inventor for final review and signoff. The patent application is filed.
Other considerations: foriegn patent protection, improvement patents, formation of business entity (e.g., LLC or S-corp)., etc.
After filing the regular patent application, the patent office will issue office actions to which responses must be filed.
Working with an attorney to file a patent application
Below is a overall summary of steps to write and file a patent application:
1. Inventor documents invention and keeps it secret, no public disclosue, no offer for sale, etc..
2. inventor does prior art search
3. inventor estimates commercial potential
4. Initial consultation/call with patent attorney
5. attorney provides initial written cost estimate for services and engagement/service agreement
6. inventor decides on services, sends retainer check and signed agreement
7. attorney review invention disclosure and inventor found references
8. detailed inventor interview - inventor finalizes figs and description
9. key novel features identified by attorney/inventor
10. professional Novelty search performed (optional but recommended)
11. decision whether to pursue patent made
12. 1st draft patent written by attorney and reviewed by inventor
13. 2nd draft patent written by attorney and reviewed by inventor
14. final patent application written by attorney and reviewed and signed by inventor
6. Commercialize or License your invention for profit
The inventor can choose to license the invention to others or can choose to have the invention made and sold themselves.
7. Prosecute the Patent with the patent office
An Information disclosure statement (IDS) is filed within 3 months of filing the patent application.
Typically, an assignment is signed and recorded at the patent office shortly after filing.
The patent office will search and examine the patent application. The patent office will typically issue an office action that will object to or reject the claims. The applicant must file responses to the patent office to overcome the objections or rejections. If the rejections are overcome, a patent will issue.
The patent office will search and examine the patent application. The patent office will typically issue an office action that will object to or reject the claims. The applicant must file responses to the patent office to overcome the objections or rejections. If the rejections are overcome, a patent will issue.