Patenting Your Invention
Patent Law
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.
Patent Protection
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).
Patent Search
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.)
Patent Application
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.
Fees
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.
Challenged Patents
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
Investigations
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.
Risks
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.
Further Information
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:
www.uspto.gov/web/offices/pac/doc/general/index.html.
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
www.uspto.gov
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.
Mailing Address: Commissioner of Patents & Trademarks
U.S. Patent & Trademarks Office
Washington, D.C. 20231
