Obtaining a Patent and Invention Development
Patenting Your Invention
The first patent law was enacted in 1790. The law now in effect is the general revision, which was enacted July 19, 1952 and came into effect January 1, 1953. It is codified in Title 35 of the United States Code. The law provides that an inventor may obtain a patent on any new and useful art, process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, or a distinct and new variety of plants asexually produced. The inventor may obtain a patent provided the invention was not previously known or used in this country and has not been patented or described in any printed publication in this or a foreign country more than a year prior to the application for patent, and has not been abandoned. Another provision in the patent law gives protection to any new, original and ornamental design for an article manufacture.
Definition of a Patent
A patent is issued in the name of the United States under the seal of the Patent and Trademark Office. A patent gives the inventor the right to exclude others from making, using, or selling the invention in the US for the full term of the patent, which is 17 years for the ordinary patent and 14 for the design patent. After the patent has expired, anyone may make, use or sell the invention without permission of the patentee, provided that matter covered by other unexpired patents is not used. If you or an agent representing you describes your invention in a printed publication, or uses the invention publicly or places it on sale, you must apply for a patent within one year or you will lose your chance to obtain a patent.
To help protect an idea before patenting, it helps for the inventor to keep a step-by-step, witnessed record from the birth of the idea until the time the patent is granted. Also, inventors may file a Disclosure Document with the Patent and Trademark Office for a small fee. Disclosure documents should be filed in duplicate, so one copy can be returned to the inventor after date stamping and numbering. These disclosures are kept in a confidential file for two years, subject to the patent application being filed. If no application is filed, the documents are destroyed. A Disclosure Document does not secure a patent right and is not a substitute for a patent application, but may serve as evidence of the conception of the described invention. A brochure describing the Disclosure Document Program may be obtained from the Patent Office (the address is listed at the end of this report).
An investigation known as "Search of Prior Art" or preliminary search should be conducted by or on behalf of the inventor to determine whether an invention is likely to be patented. The US Patent Office has copies of all US patents and has files and bound volumes of most foreign patents, trade and technical publications, etc. dealing with technology. Many large public libraries have copies of US patents. (Inventors may conduct their own patent search. However, the quality and accuracy of the patent search determines its worth. It is usually best to employ a patent attorney or patent agent who is registered to practice before the US Patent Office to conduct such searches.)
The patent application comprises a specification, oath, filing fee and drawing (when the invention can be illustrated). The specification is a written description of the invention, which must conclude with one or more claims specifically defining what the inventor believes to be his/her invention. Drawings must be executed in accordance with the standards specified in the Patent Office rules. Upon request, the Patent Office itself may make drawings at cost when facilities are available. However, it is expected that applicants will furnish their own formal drawings in most instances. Directions of a general nature are available in a pamphlet issued by the Patent Office entitled, "General Information Concerning Patents." If the application is complete, the Patent Office assigns to it a serial number and filing date indicating that it has been accepted for examination. Some skilled inventors prepare their own application, but usually a stronger patent can be obtained by employing a registered patent attorney or agent.
Patent Attorneys and Agents
The Patent Office publishes a directory of "Attorneys and Agents Registered to Practice Before the US Patent Office" arranged by states and countries. Only attorneys and agents who are registered with and recognized by the United States Patent Office are permitted to represent you to file a patent application. Otherwise you can do so on your own. Listings are also available from local patent law associations or may be found in a local classified telephone directory. The fees charged by attorneys and agents for preparing, filing and prosecuting a patent application vary according to the time required, which depends to a large extent on the nature of the invention, and the extent and complexity of the prosecution after examination. The Patent Office does not regulate or set the fees charged by patent attorneys and agents.
There are various filing and maintenance fees for small entities (independent inventors, small businesses or non-profit organizations) and other entities. "Patent Processing Fees" (form PTO-442), a listing of all fees, is available from the Patent and Trademark Office and should be consulted for the current fee structure.
If a patent is challenged, the patent is presumed to be valid and the burden of proof is on the challenger - not the owner of the patent. The scope of its claims and the willingness of third parties to obtain licenses or to avoid infringement of the protected subject matter govern the strength of a patent.
Invention Promotion and Development
Investors should carefully investigate before paying advance fees to individuals or companies that promise to make patent searches, obtain patents, evaluate ideas or inventions, determine marketability, or arrange for the manufacture or sale of patented products. Some individuals or companies prepare an initial evaluation, which may make promising remarks of an invention's ability to be patented, merit and salability in the marketplace. Since some of these persons sell further services for higher fees than the initial services, you should realize that these persons might have an incentive to paint a positive picture to the inventor.
Background Information on those who Develop and Promote Product is Vital Regardless of whom you elect to use to assist in developing or promoting your invention, we suggest that you obtain documentation of their track record, for instance, how many of their clients actually made money on their inventions. Be cautious if the company indicates that it has been successful in placing numerous inventions with manufacturers or that it has special relationships with major corporations, but cannot or will not identify the inventions or manufacturers or substantiate such relationships. You may also wish to check customer references provided by the company. Be wary if the company evaluates your idea without determining if it is truly marketable, technically feasible, or evaluates it without estimating the cost to produce the invention.
Understanding Fees related to Patent Matters
Inventors should assure themselves that the portion of any fees they pay to any persons or companies relating to patent matters will be held in escrow and/or immediately paid to the patent attorney or agent. Patent and other services offered by any patent attorney or invention development firm and all fees or potential fees should be clearly understood. You should carefully read and understand the terms of any written agreement, get all promises and guarantees in writing, and, if possible, have the agreement reviewed by legal counsel. Inventors can lose money and time, and can jeopardize the patent rights of their invention if they choose to promote it without protecting the patent rights of the invention.
It should be understood that the purchase of services relating to the development of a new product is a high-risk expenditure, and there is no guarantee that a profit will result. Very few ideas or inventions are produced and marketed successfully. Few inventors recover the costs of developing their inventions, and even fewer recover the costs of services charged by invention development firms. Inventors should also be aware that not every invention or idea can be patented and even if it can be patented, it might not provide the inventor with much protection against infringement.
Some states have specific laws regulating invention development companies. The laws usually require the company to report on its number and percentage of successful clients - those who have made more money from their idea than what they paid to the invention development firm. In addition, the statutes may require that a bond be posted so that if the company goes out of business or misrepresents its services, refunds could be given to clients entitled to them.
Contact the Better Business Bureau where a specific invention development company is located and your local or state consumer protection offices for information concerning any company with which you are considering doing business. These offices can also advise you of any state regulations concerning the invention promotion industry.
Your local inventor's club or society may be able to provide you with the experiences of its club members.
There are some state, city and county organizations established for the purpose of promoting the growth of business and industry in their areas. Such programs are generally listed under the government sections of the telephone directory or may be listed with the Chamber of Commerce.
Several types of non-profit organizations, such as university evaluation centers, also evaluate ideas free of charge or for a nominal fee.
Useful patent information is available from the US Department of Commerce's booklet, "General Information Concerning Patents" (available from the Consumer Information Center, PO Box 100, Pueblo, CO 81002 for $2.00). Information from the booklet is also available at the U.S. Patent and Trademark Office website at: http://www.uspto.gov/patents/resources/general_info_concerning_patents.jsp.
The Small Business Administration also has a booklet, "Can You Make Money With Your Idea or Invention?" which is available for $.50 from SBA Publications, PO Box 30, Denver, CO 80201.
The American Intellectual Property Law Association Inc., a trade association of patent attorneys (2001 Jefferson Davis Highway, Suite 203, Arlington, VA 22202), publishes a booklet for $9.95 entitled "How to Protect and Benefit From Your Ideas" which may give further assistance.
Other information regarding patents and trademarks may be obtained from the U.S. Patent and Trademark Office in the following ways:
Office of Information Services
Patent and Trademark Office
US Department of Commerce
Washington, DC 20231
800-786-9199 or 703-308-4357
That office advises the Better Business Bureaus that it does not have information on specific companies and does not make recommendations regarding invention promotion firms.
Information on obtaining a patent is also available from the Commissioner of Patents and Trademarks, 2900 Crystal Drive Highway, Arlington, VA 22202.
Commissioner of Patents & Trademarks
U.S. Patent & Trademarks Office
Washington, D.C. 20231