John V. Stewart, Registered Patent Agent
1308 Henry Balch Dr., Orlando FL 32810 USA
Phone & Fax 407-629-5240, E-mail: patents@jvsinventions.com
JVS
INVENTIONS
John V. Stewart, Registered Patent Agent
1308 Henry Balch Dr., Orlando FL 32810 USA
Phone & Fax 407-629-5240, E-mail:
patents@jvsinventions.com
WHEN YOU HAVE AN IDEA, or "inventive concept", write a description of it, and draw a sketch. Obtain signatures of two witnesses (unrelated to you) on each page, with the following wording:
"This invention was disclosed to me for the first time on (date) by (inventor name), and I shall not disclose it to others (signature of witness).
Preferably this should be notarized. Keep records of any development work or improvements on the invention, and have the improvements witnessed. The purpose of all this is to establish proof of your inventorship as of a certain date. However, it does not grant ownership of the invention, which is only provided by a patent, and it does not guarantee that you can obtain a patent. Mailing a certified letter to yourself is worthless. Thus, proceed expeditiously to the following steps. The order of these steps depends on your priorities. For example, you may wish to perform a patentability search first, to see if you can obtain a patent before expending any other effort. You may wish to file a provisional patent application next, or even before doing a patentability search, depending on your deadlines.
DETERMINE MARKET POTENTIAL by market analysis, including cost/benefit comparison with competing products, etc.. Consult potential users and sellers of the product, but do not test market it until you have applied for a patent.
OBTAIN NON-DISCLOSURE AGREEMENTS from all parties to whom you disclose the invention.
APPLY FOR INVENTION OWNERSHIP. If it has good potential, you may wish to apply for ownership of the invention via a patent application. You would now benefit from a patentability search.
ORDER A PATENT SEARCH. This is a search for prior publications related to your invention (usually limited to U.S. patents for practical reasons). The results of this search suggest whether you are likely to obtain a patent, depending on the similarities of prior inventions to yours.
YOU CAN OBTAIN A PATENT if you invent or discover any new and useful process, machine, product, or material, or a new and useful improvement to any of these, and your invention is novel and non-obvious (as defined by patent law), compared to prior similar inventions and conventional knowledge.
YOU CANNOT OBTAIN A PATENT if: (simplified)
START MARKETING efforts as soon as your patent application is filed. Some options include:
You can find manufacturers by going to most libraries or on-line and using the "Thomas Register". It lists manufacturers by type of product, with their address, phone, and fax numbers. Do not send a disclosure of your invention to a manufacturer until you have asked them if they will accept it. They usually require you to sign a form stating that they owe you nothing for the invention unless you obtain a patent. This form should also state that they will at least make a reasonable effort not disclose the invention to others without your permission. You can try to have them sign a Non-Disclosure agreement of your own. However, it is best to wait until you file a patent application before disclosing your invention to manufacturers.
FOREIGN PATENTING broadens your market control, but is expensive. You can preserve your right to file foreign patent applications for a period of time if you do not publicly disclose, publish, or sell your invention before filing a U.S. patent. Within 1 year after your U.S. application, you can then apply for international patents if desired. Some countries do not allow the 1-year delay, and you must file in those countries before any public disclosure.
INFORMATION DISCLOSURE STATEMENT (IDS) is a list of prior art (prior technology related to your invention), with copies of each published item (patents, articles, etc.). The IDS meets the legal requirement to disclose all known prior art to the Patent Office which could affect the patentability of your invention.
A PATENT is a document granting ownership to an invention. It must clearly describe and show the invention, and define the boundaries of ownership. It gives you the right to exclude all others from making, using, and selling your invention in a given country for a period of time. In other words, it gives you a legal monopoly. You can assign (sell) or license (rent) this monopoly to others.
A PATENT CLAIM is a legal statement in a patent that concisely and precisely defines the invention and the limits of your ownership. The value of a patent is largely determined by the breadth and clarity of its claims.
PATENT COOPERATION TREATY (PCT) is an agreement among most industrial nations. It provides a procedure that preserves an inventors right to file in the member countries past the 1 year deadline of the Paris Convention. The procedure (a PCT Patent Application) must be made within 1 year after filing in a member country (such as the USA) to obtain the priority of the original filing date.
A PATENTABILITY SEARCH is not required, but is advisable to avoid filing a clearly unallowable patent application. It can also improve your patent application by showing how to contrast it with past inventions in the field. The patent office performs a search in any case. Whether you do a search or not, you are legally required to disclose to the Patent Office any information known to you which may affect the patentability of your invention.
I perform searches using U.S. patent databases, or I hire a search firm. A report is provided to the inventor, along with copies of the items found. Searches are not perfect, no matter what the cost, since pending patents are confidential to the patent office, and because it is impractical to search all publications, past and present, local and foreign. However, a reasonable U.S. patent search is worthwhile. A searcher should send you copies of related patents found in the search. Almost every search finds related patents, although they may not disclose your invention exactly or prevent you from patenting it.
A UTILITY PATENT is generally the strongest type of patent. It covers the mechanics, function, and use of an invention.
A DESIGN PATENT covers only the unique appearance or ornamental design of a product. It can be strong if a particular appearance is unique and important in marketing the invention. Some time periods are shorter for design patents than for utility patents.
A PROVISIONAL PATENT APPLICATION is like a utility patent application without claims. It never becomes a patent, but establishes a priority date of filing, which then allows you to publicly disclose your invention without losing foreign rights (except in non-Paris-Convention Countries). You must file a regular patent application, and any Paris-Convention foreign patents, within a year. It is less expensive than a regular patent application in the short run, and buys time. However, it is never examined by the Patent Office, so it delays your knowledge of whether a patent will be allowed. This is a disadvantage if you plan to file in foreign countries, because you don't know in time if the expense is justified. Ask me for advice in your particular case.
THE PARIS CONVENTION is an agreement signed by most, but not all, industrial countries, which allows up to 1 year after filing a patent in one member country to file in any other member country, despite an intervening public disclosure of the invention.
A PATENT ATTORNEY is competent in patent law, can file patent applications for clients, sue infringers if necessary, and provide other legal services.
A PATENT AGENT is a patent application specialist who has passed an examination for registration with the Patent Office (the same exam taken by patent attorneys), and can file patent applications for clients. Patent attorneys and agents must establish competence in physical science for admission to the examination. Patent agents cannot provide litigation, licensing, copyright, or trademark services.
A PATENT OFFICE ACTION is a letter from the patent office stating their position on the allowability of a patent, and giving evidence and arguments supporting this position.
PATENT PROSECUTION is the negotiation between the patent applicant and the Patent Office to obtain the maximum breadth of claims deserved. During prosecution, the patent is "pending".
A PENDING PATENT is a patent application that has been properly filed with the patent office, but has not yet issued as a patent. "Pending" is an optimistic term, since there is no guarantee that a patent will be allowed. However, many competitors hesitate to copy a product displaying "patent pending", since a patent may issue at any time, and halt their production before recovery of tooling costs.
PRIOR ART is any previous invention or technology which affects the patentability of the invention. It is the duty of the Inventor and Agent to disclose all known prior art to the patent office within 3 months after a patent is filed.
DON'T BOTHER TO MAIL TO YOURSELF a certified letter containing your invention description. This does not establish legal evidence about your invention.
A PATENT MUST NAME only the true inventor(s). One party cannot apply for a patent on an invention learned from another party. The inventor's employer cannot be named as the inventor. However, a non-inventor may own the patent, through purchase or employee agreement. Such owner can be shown on the patent as the assignee if ownership is established before the patent issues.
A PATENT NORMALLY TAKES about 20 months from the filing date to allowance. Enhancements to the invention, or complications in prosecution, may extend this time for months or years. The first office action usually occurs in about 10-20 months, and establishes the starting point for negotiations with the Patent Office on patent allowability and breadth. The process can be accelerated for a fee.
A PROTOTYPE OR MODEL is not essential to obtain a patent. However, I recommend that you build one if possible, in order to test feasibility. You will probably think of improvements in your design as a result of building a prototype. I may be able to assist you in developing a practical design to minimize cost and maximize convenience to the user.
ABOUT JVS INVENTIONS I am a registered patent agent working from my home office. I have been filing patent applications since 1988. I have filed and prosecuted international patent applications, continuations, divisions, and appeals.
My NEW CLIENT/INVENTION INFORMATION FORM includes a non-disclosure agreement.
OBTAINING INVESTORS If you need investors, I recommend that you purchase a book on business plans. This is a good idea in any case if you want to start a business based on a new product.
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(C) Copyright 1996-2006 John V. Stewart. All rights reserved.