8 Tips For Inventors Planning To File A Patent Application

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.
fdouglas@cox.net
(949) 293-0442
http://DouglasPatents.wordpress.com
http://www.linkedin.com/pub/frederic-douglas/17/37b/7a1

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2 Responses to 8 Tips For Inventors Planning To File A Patent Application

  1. Dave Korpi says:

    Cool! See the video here: http://fileprovisionalpatents.com/ that shows 10 reasons as well as your 8 tips. In the end folks want to know how to use the crazy USPTO online filing system. The videos in the link above show you how to do it. Super easy!

    Personally, the reason I feel the USPTO provided the Provisional Patent application was EXACTLY for the self inventor AND those who need to get their idea filed RIGHT NOW!

    Thanks,

    Dave

    • Dave,
      I note that you responded to my blog post with a plug for your website selling a course on obtaining a “provisional patent” for the do-it-yourself inventor.

      As I stated in my post,

      “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.”

      I checked your website yesterday. An audio file begins playing making statements about “getting a provisional patent.” Your website makes several references to getting a “provisional patent.”

      Such a misstatement is not just a matter of being loose with jargon. You run the risk of the inventor believing that the “application” turns into a “patent” which is what many unscrupulous invention submission orgs do.

      One big error in your audio and posted on your website is this statement:
      “You will then have one full year to get your non Provisional Patent that will protect your invention for 17 years.”
      You advise people that the “provisional patent” lasts for a year and the non-provisional patent lasts for 17 years. This is untrue (since 1995). The fact that you make this statement calls into question your knowledge about the basics of the U.S. patent system, perhaps affecting one’s likelihood to trust in the advice/instruction that you provide in this course.

      Your website touts your qualifications to include, “My name is Dave Korpi and I have been issued over 12 patents.”

      I searched for your patents and only found eight issued patents, none of them relying on a provisional patent application. I found four published patent applications, with at least one of them relying on a provisional patent application. You should not make misleading statements.

      Your website also states:
      “10) A Provisional Patent offers you Federal Protection of your idea. It is a very serious award by the USPTO and is not taken lightly. With it you have extraordinary protection for the 1 year that you have to convert your provisional patent to a non-provisional patent.”

      The Patent Office does not award any rights in a “provisional patent.” There is no “extraordinary protection” for the one-year period. In fact, during that one-year period, someone else that files a non-provisional patent application for the same invention may still prevail in an interference with the person that files only a provisional patent application before the competitor.

      Along with other wrong statements made in your audio and on your website, it is rather unfortunate that you state:

      “When you get my Video Course you will understand exactly how the ‘system works’.”

      Perhaps some people believe that paying any amount for this course, with fundamental errors in patent law, is preferable to paying a reasonable amount for the services of a competent, knowledgeable patent attorney registered with the U.S. Patent Office.

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