Someone with a Great Idea
This page provides basic information for a person who has an idea for an invention but lacks an understanding of the process for obtaining patent protection. Some complexities of Patent Law are not mentioned, so advice should be obtained before making critical decisions. For more about Arnold Cross, click here.
- The AIA.
- United States Patent Law recently underwent sweeping changes as a result of legislation known as the Leahy-Smith America Invents Act (AIA). It was signed into law September 16, 2011, but most of the provisions that are important to you as a new inventor took effect March 16, 2013. This discussion assumes that you did not file a patent application before that date.
- Keeping a Notebook.
- Before the AIA took effect (Pre-AIA) it was wise to keep an inventor's notebook. In the notebook you would jot down your ideas and thoughts regarding your invention, and you would record your efforts to develop the invention. It was important to have witnesses sign and date those notes, so you could later prove your date of conception and show that you diligently worked to make the invention (known as reducing it to practice). That was in case someone else was independently inventing the same thing at the same time, something that happens often in emerging technologies. Pre-AIA, each of you would need to prove your date of conception. Under the AIA, the date of conception no longer matters. Some practitioners still recommend keeping an inventor's notebook to use as evidence if someone steals your invention (something that rarely happens). It is also wise to keep an engineering notebook anytime you are developing a product, but that is for your own use in the development process. The witnessing that goes in an inventor's notebook could actually increase the risk of your invention being inadvertently disclosed. (See the discussion of Secrecy below.)
- Priority Date.
- The date that matters most is what's known as your Priority Date. You can think of that as the date that you get credit for the invention. There are many rules regarding the priority date, but generally it is the earlier of the date that you first publish a description of the invention or the date that you first describe it in a patent application. If you want to get patent protection in countries other than the United States, don't publish it before filing an application. If you only want patent protection in the United States, there are reasons that it may make sense to publish it before you file an application.
- The first thing you want to do is discuss your idea with a patent practitioner. The two types of practitioners are patent agents and patent attorneys. Both are required to have backgrounds in Engineering or Science, and both must pass the same rigorous exam to become registered. The difference is that a patent attorney has a Law degree, and a patent agent does not. Both have the same ability to produce and prosecute your patent application and to represent you before the United States Patent and Trademark Office (PTO). There are mainly two situations in which you would need a patent attorney.
- Once you have a patent, you will want to enforce it by sueing anyone who infringes it. A patent agent cannot do that for you. A patent attorney can.
- Once you start producing your invention, someone might sue you for infringing their patent. You would need an attorney to defend you in court for that. Under certain circumstances a patent agent can help you contest the other person's patent in a derivation proceeding at the PTO, but you would need an attorney for anything that happens in a court.
- I, Arnold Cross, am a patent agent. I have an office in Cincinnati, Ohio and I also work from my home in Southern California. I regularly travel between the two locations and can meet with you anywhere between them.
- First Contact.
- Before you discuss the details of your idea with me, I need to determine that it does not create a conflict of interest with respect to any other patent application that I am involved in. This can be done over the phone. You tell me in broad terms what field of human endevour the idea pertains to. I will ask for more and more detail, until I am able to determine whether a conflict of interest exists. If there is a conflict of interest, I will need to turn down your business.
- Initial Consultation.
- If there is no conflict of interest, then we can discuss your idea in detail. I prefer to do that face to face, but it can be done over Skype if you have a Skype account. This consultation will be free. In fact, I generally don't charge for discussions with non-business clients. I will let you know if that policy changes. My hourly rate applies to tasks such as preparing a patent application and interacting with the Patent Office. You can ask any questions you have about how the patent process works. We will discuss your idea, but I will not give an opinion about its patentability. A patent search needs to be done before patentability can be accurately discussed.
- Patent Search.
- The first thing you will want is a patent search. The PTO does not require a patent search before you apply for a patent, but there are many benefits to a patent search. Even if your idea is not yet fully developed into an actual invention, a patent search can help guide your development effort or tell you whether it is even worth doing. In the patent search I will search the PTO database for patents and patent applications related to your idea or invention. I will provide you with a report describing what I found and giving my opinion on the patentability of your invention. It is rarely clear whether a particular invention can or cannot be patented, but the Patent Search Report will give you some idea of the likelihood that you can get a patent. Also, by showing you what other inventors have already done, it can spark your creativity to develop an even better invention. There are books and web sites that tell you how to do your own patent search, but most practitioners recommend that you have it professionally done. I recommend that you have it professionally done by me. I charge a flat fee, and it works out to a much, much lower rate than my normal hourly rate.
- And Then...
- Armed with the wisdom of a completed patent search, you will be in a position to decide whether to pursue a patent. If you retain me as your patent agent, I can prepare and file your patent application. The steps to take and their cost depend on decisions that you would need to make. The search report will help with those decisions, and I can advise you. The Search Report will also help in the preparation of your patent application.
- One of the most confusing aspects of having a great idea is knowing when and with whom to talk about it. The two things that you are concerned about are: 1) How might you lose your right to a patent? and 2) How can someone use your information against you?
- Losing your right.
- If you publicly disclose your invention, then you have one year to file a patent application, but what constitutes a public disclosure? Just talking about your invention is not considered a disclosure, even if you do it in public and completely describe the invention. You can talk about it with dozens of friends and strangers and still take as long as you like, even decades, to file for a patent. But, if a description of your invention is published, then that is a public disclosure. Publishing does not have to be professionally done in a formal publication. Just printing some copies of your description can be considered a publication, if you give those copies to people who are not bound by an obligation of secrecy. Talking about it can become a disclosure if someone posts your talk on youtube or on their facebook page.
- What others might do.
- I mentioned above that someone else can create a public disclosure by posting your description. That is true even if they are not posting something that you did. For instance, someone can talk about your idea with a friend who then posts the conversation on-line. If the invention is sufficiently described, that starts your one-year clock, even if you don't know about the posting. That can happen with completely honest people, but there is always a possibility that you could speak with a dishonest person. If someone steals your idea by filing their own patent application claiming that he or she is the inventor, you technically do not lose your right to the patent. But, in order to secure your right you will need to convince the PTO that the other person obtained the information from you. That can be difficult, and there are time limits involved.