When an inventor has a great idea that they believe is worthy of patent protection, they will naturally wonder when the appropriate time is to file a patent application. The process will vary a bit between different inventions, but the basics remain the same.
The sooner a patent search is conducted and a patent application is filed, the better the inventor’s chances are of obtaining a patent.
By examining the patent process in the U.S., it is possible for inventors to understand why this is so and gauge whether or not it is the right time to seek the advice of a qualified patent attorney.
All issued patents begin with an idea. It progresses from a mere spark to something written on paper. The inventor may do some research, build an early prototype and learn a few things through trial and error.
It makes sense to make notes throughout this process. Although the U.S. ceased to be a “first to invent” country and became a “first to file” country in 2013, notes made and dated during the experimentation and development stage may prove valuable should the inventor ever need to substantiate the fact that they didn’t copy someone else’s idea.
Throughout this time, it is wise to treat the invention as confidential. Anyone to whom it is disclosed should be asked to sign a confidentiality agreement. This lessens the likelihood that they will be able to steal the idea to use it for themselves. Also, it is necessary to not make public the details of your invention because it may preclude you from obtaining any patent protection.
The Patent Search
How confident are you that your invention is new, novel and not obvious? You may know the industry well, but that doesn’t necessarily mean that you’re aware of all of the prior art that may exist.
A patent search performed by an intellectual property attorney may help to determine the patentability of your invention.
The Patent Application
Once the patent application is filed, you can tell people that your invention is “patent pending.” Of course, going from idea to application can be a long journey.
Typically, a patent application is filed after the results of the patent search indicate that the invention may be patentable. The inventor then fully describes the invention to the attorney or patent agent who will be drafting the patent application.
The attorney or agent begins writing a descriptive specification and claims that more specifically point out the subject matter that is intended to be protected by the patent. Frequently, these filings are accompanied by a set of drawings that provide another description of the parts and use of the invention.
Once submitted to the U.S. Patent and Trademark Office, the patent application eventually will be examined by another attorney who is known as an Examiner. The Examiner may reject the patent application if he believes that the invention isn’t patentable. Intellectual property attorneys who work for the inventor are able to argue against this rejection, and they may make amendments to the application.
Requiring two or more years, the application process can be time consuming.
Continuing Development and Finding Investors
While the patent application is being examined, the inventor may build better prototypes and seek partners or investors to help get their venture moving. This is also the right time to create a marketing plan and find distributors who may be willing to bring the new product to the market.
Because the invention is patent-pending, it is perfectly acceptable to start marketing and selling the product before the patent issues. That pending patent application protects the inventor’s idea. They may seek legal redress from any infringers upon the issuance of the patent.
Consider Licensing or Selling the Rights
While some inventors decide to produce and market their invention mainly on their own, others don’t want the responsibility of manufacturing, distribution and related functions. In this scenario, the inventor may be able to license or sell their rights to one or more parties who are willing to take on these tasks. This leaves the inventor free to enjoy the profits of their hard work while also developing their next big idea.
The Invention Process Infograph
Author: Jeff Williams
Jeff Williams is an experienced mechanical engineer and lawyer that consults closely with clients in a strait forward and clear manner. He brings a particular set of strengths and unique perspectives to the firm.
Jeff received a B.S. in Mechanical Engineering from Arizona State University in 2005. He was an engineer for a number of years at a number of large corporations before pursuing his law degree. He graduated from Texas A&M University School of Law (formerly Texas Wesleyan University School of Law) with a J.D. in 2010. By combining his education and prior work experience into the field of intellectual property law, Jeff has developed key skills to fully assist clients.