Copyright 2010 Frederic M. Douglas. All Rights Reserved.
1. When you get your stroke of genius and come up with an idea, WRITE IT DOWN! You need to create a record of invention before going any further.
You should list:
(a) A full and complete description of your idea;
(b) The date (very important);
(c) Your signature; and
(d) Dates and signatures of at least two people to witness and understand your having invented your invention.
2. Don’t blab about your invention to anyone without a written confidentiality agreement.
3. Keep written records of your progress in developing the invention:
(a) Write down all modifications, experiments, alternatives, and other details.
(b) Keep copies of any emails, notes, letters, text messages or anything documenting discussions with others.
(c) Keep receipts for anything that you buy for your invention, including parts, software, consultant costs, marketing costs, advertisements, or anything having to do with your invention.
(d) Yes, these records must be in writing and dated.
4. Assess the marketability of your invention.
Rule of thumb – total sales should be twenty times or more of the cost of inventing and patenting your invention. A suggested rule of thumb to determine whether your invention will sell well is that the total sales will be at least twenty times the cost of inventing and patenting it.
5. Do a patent search:
(a) Is your invention novel?
(b) What is the prior art?
(c) If you are improving on something that has already been patented, is your invention a new physical feature, a combination of prior separate features, or a new use of a prior feature?
(d) If you are improving something that has already been patented, is your invention not obvious?
(e) Does your invention produce a new and unexpected result?
6. Plan on filing your patent application sooner rather than later.
(a) Only one year grace period after public disclosure in U.S.
(b) Only 6 months in Japan.
(c) No grace period in Europe.
7. Consider the pros and cons of filing a provisional patent application:
(a) First things first – it is not a “provisional patent.” It is a “provisional patent application.” Do not trust anyone that does not bring up the fact that the provisional patent application never automatically becomes a regular patent application without doing something extra. There is no such thing as a provisional patent. Remember this; the patent office doesn’t even read your provisional application. They just take your money and stamp it with a date.
(b) Pro: Save money and time. Saves your place in line before competitors, while you can work on marketing, developing technology, and deciding whether to expend additional funds. Big companies often file provisional patent applications.
(c) Con: Why wait? If a competitor files a regular patent application while you have only filed a provisional patent application, then the competitor will probably beat you in getting a patent first. If your place is save in line, but the other person is ready to buy their ticket, you’re out of luck. To prepare a quality patent application, you have to spend a great deal of time stressing over many details. If you spend the time to do it right for a provisional, you lose nothing by filing a real application now.
8. Work with an experienced lawyer who is registered with the Patent and Trademark Office and does patent work for a living.
Frederic M. Douglas is an IP litigator, dedicated to pursuing practical resolution of problems concerning patents, trademarks, copyrights, trade secrets, and other areas of law.