What is a patent?
Patents are one form of intellectual property. Simply stated, patents protect innovative solutions to technical problems. Once approved by the United States Patent & Trademark Office (USPTO), a patent gives its owner the right to prevent others from making, using, offering for sale, or selling the patented invention throughout the United States – including the right to prevent importation of infringing products. There are three types of patents: Utility patents (most common); Design patents; and Plant patents. Utility patents are granted to a person(s) that invents a new and useful process, machine, article of manufacture, or composition of matter. Design patents are granted to a person(s) that invents a new, original, and ornamental design for a manufactured product. Plant patents are granted to a person(s) that invents and asexually reproduces any distinct and new variety of plant.
Once I have a patent, am I free to market my invention?
It comes as a surprise to many inventors that getting a patent on their invention does not give them the right to make or use or sell the invention. The USPTO routinely grants patents for inventions that are “improvements” on prior inventions. If a prior invention is still covered by an active patent, it is quite possible that the “improvement” patent cannot be commercialized without permission from the person that holds the still active patent for the prior invention.
I have a great idea for an invention. What should I do?
If you think you may have invented something patentable, here are a few general recommendations that we often suggest to our clients:
- Keep your idea secret until you have a chance to consult with a qualified patent attorney. Until then, use a Non-Disclosure Agreement (NDA) if you must share details of your invention with others.
- Carefully document your discovery. Keep good detailed records that describe “who, what, where, when and how.” If others have collaborated with you to make this invention, consider now having all likely “inventors” (i.e., problem solvers/creators) assign their rights to a single entity (often a business formed for this very purpose).
- Think about your business plan. Determine how you want to make money with the invention. Common options include: go into business selling the invention; and sell or license the patent rights to someone else.
- Build a working prototype whenever possible/practical (and without violating Recommendation #1). Although the legal significance of this step has diminished under the America Invents Act, nevertheless the exercise of prototyping a concept has many practical benefits.
- Make a Preliminary Patent Search yourself using on-line resources. Satisfy yourself the concept appears to be unique before investing too much of your time and resources. The patent archives are full of examples of past inventive endeavors that have never been marketed. The USPTO will measure the invention in each patent application against all known prior human achievements – whether or not those achievements were commercialized. Best practice is to know whether or not you have created something novel or merely “re-inventing the wheel” as soon as possible.
- Consider filing a Provisional patent application as soon as possible (after consulting a qualified patent attorney). A provisional patent application is an optional, often ideal, starting point along the path to obtaining full Utility patent protection. (A provisional patent application is not effective for Design or Plant patents.) When properly prepared, a provisional patent application establishes an internationally honored priority date from which to eventually obtain Utility patent rights in most major countries. Once a provisional patent application is filed, the invention is “patent pending,” giving its owner a golden one-year window to safely commercialize the invention, license the patent rights, attract financing, etc.
How long can I wait before filing for a patent?
Be advised that there are some very serious, unforgiving patent deadlines for US inventors. These hard deadlines include:
- If you think you might want to protect your invention with patents in other countries, you must first file a patent application in the USA before there is any kind of public disclosure or public use of the invention. So, to preserve your right to seek foreign patents, you must file a US patent application (Utility or Provisional) before you post anything to the open internet or make any sort of public presentation or commercialize the invention.
- The USA is a bit more forgiving that other countries, in that the USA provides each inventor with a 1-year grace period to test market and/or publicize their invention before filing for a patent application. So, to preserve patent rights in the USA, a patent application must be filed within one (1) year after the first public disclosure or the first offer to sell a product or service incorporating the invention (whichever comes first).
Getting a patent seems expensive. What can I do to save costs?
We are happy to work with inventors that are bootstrapping their venture – to the extent it makes good sense. The two most cost-effective things an entrepreneur can do to save legal costs in the patent process are to conduct preliminary on-line patent research, and assist in the preparation of a provisional patent application. (Most other steps in the patent process are best left to the professional.) Please explore our Resources page where we have posted several useful materials to assist our clients including in the following patent subjects:
- Patent Searching Guide
- Provisional Patent Application Guide
- Average Patent Costs and Timetables
- Word (docx) template for Provisional Patent Application
- Examples of actual Provisional patent applications that matured into granted Utility patents
Endurance Law Group PLC specializes in patent-legal services. We would be pleased to answer any questions that you might have about the patent process and your particular circumstances.