Congratulations! If you are reading this, you have already had your “ah ha”moment – your eureka moment – when your idea for a new invention came to fruition. You are excited. Your idea feels fresh. Infinite possibilities are before you including the fame of getting your name on a patent, seeing your idea embodied in a successful product, and the monetary rewards. If you are lucky, your eureka moment came by a flash of genius, but more likely it came by arduous research and experiment. Either way, you are at a point of considering seeking the help of a patent attorney to get your invention patented. The following are a few steps you can take before seeking out a patent attorney to mitigate the often exorbitant attorney’s fees and to make the whole process run more smoothly. Just remember the acronym “REDACT” in the literal sense of placing your invention into patentable form, and in the sense of the steps you should take before contacting a patent attorney:
R – Research the patenting process;
E – Educate yourself generally about patents;
D – Describe your invention;
A – Anticipate changes to your invention;
C – Consider prior things;
T – Think about hiring a patent agent.
R Research the patenting process. Here, “patenting process” refers to the basic steps in obtaining a patent, the typical timelines involved, and the things that will be required of you as the inventor before, during, and after, getting your patent. One role that a patent attorney plays is that of educator. The patent attorney will be happy to educate clients about the general patenting process for a fee, of course. The truth is, however, that the patenting process itself does not change that much. With the internet, there are many available and easily accessible sources for you to learn about the patenting process. For example, the United States Patent and Trademark Office (USPTO) maintains a webpage for new inventors: http://www.uspto.gov/web/offices/com/iip/. There are also non-profit associations such as the United Inventors Association or the National Society of Inventors that can be good resources. As you look, however, beware of Invention Promotion Firms, which often seek to take advantage of unwary inventors. The Federal Trade Commission (FTC) has a fact sheet discussing these unscrupulous practices and how to protect yourself from them: http://www.ftc.gov/bcp/edu/pubs/consumer/products/pro21.pdf.
E Educate yourself generally about patents. To be sure, the law is always changing and your patent attorney is obligated to discuss the current state of the law with you. However, you can ease and simplify this process by educating yourself on the relevant patent lingo before talking to your patent attorney. At a minimum, learn what inventions are not patentable, and what is meant by “novelty” and “non-obviousness”, the two major hurdles to getting a patent. The resources noted above can also provide you with some short descriptions to get you up to speed on patent lingo. You should also have a look at a few issued patents, preferably patents in your field, to get a feel for the different parts of a patent application. A good starting place is to search for patents related to the topic of your invention using the ever popular Google search engine at http://www.google.com/patents, which provides PDF versions of the patents.
D Describe your invention. Now, it is time to sit down and describe your invention in a way that a person who knows a little bit about the things you know would be able to understand, make, and use your invention. Here, you must play the role of educator. To effectively represent you, your patent attorney must understand your invention. Your description should thus aim to instruct your patent attorney, or other technically knowledgeable person, about your invention. First, sketch up some drawings of different views that show all of the elements of your invention. Label the elements with ledger lines and reference characters. Next, make a list of the important elements and features of your invention. Lastly, write a narrative description of the invention. One easy and clear way to do this is to walk through the different views in the drawings, describing in words what is shown in each drawing, referencing the elements by name and reference number. Start by describing, literally, the connections among the elements. Then, in a separate paragraph, describe how those elements work together in practice by describing the functions of the elements and the funcitonal relationships among elements. It is the drafting of these parts of the patent application that consume the bulk of the patent attorney’s time. The more information you provide, and the clearer that information, the less time the patent attorney will have to spend to get up to speed and the better the representation you will receive.
A – Anticipate changes to your invention. Once you have described your invention in some detail and, in particular, after you make the list of key elements and features of the invention, consider different changes that someone could make to these elements and features. Doing some brainstorming ahead of time will allow you to anticipate some of these changes, and ensure that your patent covers them. Rest assured, the patent attorney will ask you about these types of changes. By anticipating the questions, you will again reduce time and costs.
C – Consider prior things. Here, “prior things” means prior inventions and prior products that are currently on the market. You are entitled to receive a patent on your invention unless someone else has previously done or described something the same as or similar to your invention. Accordingly, you want to have an idea about what else is out there – before you talk to your patent attorney. You should search in at least three areas. First, put on your shopping hat and go shopping for products that are similar to your invention. Visit some local stores, but also search online. You are searching for any products that do something similar to (or the same as) your invention. Print out any websites or literature you discover and keep a list of this information.
Second, conduct a search on the USPTO website to determine whether an invention similar to yours has been already patented or is already the subject of a published patent application. Go to the USPTO website at http://www.uspto.gov, click on “patents” in the left hand sidebar, and click on “search patents”. Then, under the “issued patents” side of the search screen, select “quick search”, enter the two most important elements of your invention, and click “search”. Review the documents that result to see if any of them are close to your invention. If so, note the patent numbers in your list or print out the patent information. Go back and select “quick search” under the “published applications” side of the search screen and repeat, noting any additional documents that appear relevant to your invention.
Lastly, you want to search international patents and applications. One easy way to do this is to visit the European Patent Office (EPO) website at http://ep.espacenet.com. Click on “quick search”. Enter the important elements of your invention and click “search”. Review these documents as above, noting any that are close to your invention.
This process has two benefits for you before talking to your patent attorney. First, if someone has already done the exact same thing as your invention, it is good to know before talking to your attorney. You can save the time and expense of, for example, having the attorney draft and file an application, only to find your application rejected as unpatentable because of the stuff that came before. Second, if your invention is not found in this search, you at least have identified a few key documents to give to your patent attorney to help the attorney revise your patent application to ensure a faster evaluation process. Both of these benefits will save you time and expense in the long run.
T Think about hiring a patent agent. If you have followed the REDACT steps up to this point, you have a grasp of the patenting process and requirements, have described your invention in some detail, and have a list of other close inventions. At this point, you might consider hiring a patent agent instead of a patent attorney. A patent agent has similar technical expertise as a patent attorney, and has the qualifications to draft, revise and discuss your application and to represent you at the USPTO. The only thing the patent agent lacks is the education and qualifications to represent you at court. Accordingly, the patent agent usually charges a lower fee than a patent attorney. Since you do not need representation in court at this stage, if a friend or inventor’s group can recommend a good patent agent, you might consider seeking out that patent agent.
In any event, if you followed the REDACT steps, you are now in a position to 1) judge whether you want to continue the process and 2) to continue the process, while significantly reducing the costs. I wish you the best of luck and much success in patenting your invention!