The small inventor faces many challenges in protecting and monetizing his invention. Getting a patent is not an easy process and can be very costly. As a small inventor, you may be eligible for reduced fees if you apply for micro or entity status with the United States and Patent and Trademark Office. For a small entity, such as a small business, the filing, issue and maintenance fees are reduced by half. To qualify for micro entity status your maximum gross income must not exceed $169,548.00 per year for the preceding calendar year.

 

Beginning the Patent Process

After the many laborious hours you’ve put into creating your invention, what can you do to ensure it’s protected?  After all, you are anticipating this invention to be a source of income. First things first, you need to put all the details of your invention to paper. Start with the conception of the idea, followed by its advances, changes, and composition. What does it do? How was it built? What purpose does it serve?

In order to receive a patent, you must explain in written form exactly what it is your invention does. This, strangely enough, is not so easy for technically minded people. When applying for your patent, you may want to consider utilizing an intellectual property attorney to assist with document drafting. The second most important step is to keep your idea to yourself. To receive a patent your invention must be “novel” and “useful”. If you casually tell someone what your patent is about, or publish your invention in some way, you run the risk of destroying the novelty of your invention by making it public knowledge. If you must disclose your invention to someone for any reason, ensure the person you are disclosing the information to can guarantee confidentiality. You may want to consider having an NDA (non-disclosure agreement) signed by any party that is made aware of your invention.

Patent Search

As mentioned before, your invention is required to be a new and useful idea in order to be eligible for patent protection. Essentially, your invention cannot be already widely used by the public (it would not be considered new) and must have a function or serve a purpose. Before applying for your patent, you must search for any potential products that may conflict with your invention causing it to be ineligible for protection. This is referred to as researching “prior art.” To do this, you can start with a basic Google search. Think of words or phrases you would use to describe or name your invention. If no immediate results populate that may conflict with your invention, the next step is to perform a comprehensive search on a patent database. The largest free data base available is Espacenet1.

To narrow down your search, you would need to search the applicable classes your invention would apply to. Narrowing down your search by classes helps eliminate superfluous inventions that would not pose any threat to your inventions patentability. Another database you can utilize for your searches is Google Patents, as well as the specific database used in each country for their patents. For the United States, you would want to utilize the United States Patent and Trademark Office (USPTO) search engine. Searching for conflicting patents is also a great educational tool for learning about the field and market your invention pertains to.

It is generally advised to retain an attorney proficient in patent applications to ensure your searches are done thoroughly and correctly. Patent searches are very complex, and USPTO standards for patent edibility are extremely persnickety. It is quite easy to overlook something by mistake when applying. Even the smallest error in your application can result in expensive extraneous fees from the USPTO when requesting corrections. A small investment now could potentially save you more money in the long run by helping you to avoid these costly mistakes.

 

Obviousness

A further requirement for your invention is that it must not be considered an obvious idea. What this takes into account is other “prior art”, as mentioned above. Your invention must not be considered an obvious idea to someone who is skilled in that particular field. In simpler terms, your idea must have some creative inventive merit to it.

 

Patent Options

The most important thing, as far as inventions are concerned, is getting a “priority date”. The priority date is the date the novelty or obviousness of your invention is going to be judged. A priority date is established when you submit you’re your patent application. There are generally two options available: a provisional patent application and a non-provisional patent application. A provisional application does not result in a final patent, but it does give you a priority date. It is a cheap and relatively simple way to get your application filed.

Once the provisional application is submitted, you have twelve months to decide if you wish to proceed with your invention by filing a non-provisional application. If you do not file the non-provisional application after twelve months, your provisional application is considered abandoned, and your invention is susceptible to copyists once again. A provisional patent’s filing fees is less than that of a non-provisional application. A provisional application is never viewed by an examiner. It simply acts as a bookmark by holding your filing date so your application is prioritized if someone else attempts to file a similar invention during that twelve month period. Once you file the non-provisional application, your invention will be harshly scrutinized by USPTO examiners. Only then is your product on its way to potentially receiving patent protection.

 

If you need assistance with your patent application, contact one of our qualified and professional patent attorneys at Dunlap Bennett & Ludwig by calling 866.755.8745 or email us at clientservices@dbllawyers.com.

Posted in: Intellectual Property - Patents