Our Guest Blogger, Andrew Knight, J.D., is a Registered Patent Agent, graduate of MIT and Georgetown Law, university instructor, and owner and inventor of 13 issued U.S. patents and 15 pending patent applications. He is the instructor of Do-It-Yourself Provisional Patent ™ and Do-It-Yourself Patent Course™ , available at www.PatentDVD.com and Amazon. He had some great advice about patent rights to share with readers of InventorSpot.com.(EDITOR'S NOTE: Do-It-Yourself Provisional Patent ™ and Do-It-Yourself Patent Course™ are currently unavailable. Another good resource for inventors is Pressman's book Patent It Yourself: Your Step-by-Step Guide to Filing at the U.S. Patent Office)
Here's his article:
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Patent rights begin when a patent issues on an invention, and the only way to get a patent is to file a nonprovisional patent application. However, as many of you know, you can file a “placemarker” application that elevates your invention to the status of “patent pending,” and gives you one full year in which to pursue a nonprovisional patent application without losing rights to the invention. Such an application, called a provisional patent application, can be written by an inventor, but only after proper instruction and practice. There are many resources on writing one’s own provisional application, including my free video course, Do-It-Yourself Provisional Patent™ , David Pressman’s Patent It Yourself , PatentEase™ software by InventorPrise, Inc., PatentPro™ software by Kernel Creations, Ltd., PatentWizard™ software by Neustel Software, Inc., and The Patent Writer by Bob DeMatteis, Andy Gibbs, and Michael Neustel.
Do not be fooled by claims that you can get your invention “patent pending” by registering for a copyright, filing with the Writer’s Guild, sending yourself a description of the invention in a “poor man’s patent,” or any other method. The ONLY way to get your invention patent pending is by filing a provisional or nonprovisional patent application with the U.S. Patent and Trademark Office.
If you are in a hurry to get your invention “patent pending,” I recommend that you use one of the aforementioned resources to write and submit a provisional patent application as soon as possible. With diligent effort, your invention can be patent pending tomorrow.
In very rare cases, you cannot wait until tomorrow, such as:
• Your invention was published or publicly used or on sale today, and you want to maintain foreign filing rights (i.e., the right to file a patent application on your invention in countries other than the U.S.).
• Your invention was published or publicly used or on sale exactly 1 year ago today, and you need to file a patent application so that you can maintain the right to patent your invention in the U.S. In some cases, even a limited offering to a small group of potential buyers may be considered “publicly on sale” that will start the clock ticking.
• Alternatively, you may prefer to file a patent application immediately because you want to disclose your invention to others as soon as possible. In the U.S., you are not required to file a patent application when you disclose your invention to others, and you will still have up to one year after a publication or public use or offer to file a patent application without losing rights to the invention. However, many inventors fear disclosing their inventions without being “patent pending.”
If any of the above conditions applies to you, we recommend the following actions to get your invention patent pending today (assuming a U.S. post office is still open, or you are in driving distance of the U.S. Patent and Trademark Office, which accepts applications in person until midnight):
STEP 1. Compile all information about your invention that you are planning to disclose (or already did disclose). This may include an article submission to a magazine or journal, a solicitation to a company or competitor, a brochure created for a trade show, drawings, written descriptions, and so forth. If you have already placed your invention on sale, you should include drawings, photographs, specifications, and descriptions. Make a copy of it all. The written portions should be put together into numbered pages, and these will be called the “specification.” The drawings, figures, and photographs should be put together into numbered pages and these will be called the “drawings.”
STEP 2. Fill out the Provisional Application for Patent Cover Sheet, available at the U.S. Patent and Trademark Office website by clicking here.
• List the full name and residence of ALL inventors.
• Create a title for your invention.
• Write your correspondence address.
• Check “Drawings” (if any) and enter the number of pages.
• Check “Specification” and enter the number of pages.
• Check “Applicant claims small entity status” if the inventors own the invention, or if the invention is owned by a small business concern having not more than 500 employees.
• Check “A check or money order is enclosed.”
• Enter $105 in “Total Fee Amount” (assuming the total application is not more than 100 sheets of paper, otherwise the fees are additional).
• Check “No” if the invention was not made by or under contract with an agency of the U.S. government.
• Sign the form and write your name and telephone number and the date.
• Copy the completed form.
STEP 3. Place the specification and drawings, the Provisional Application for Patent Cover Sheet, and a check for $105 made out to Commissioner for Patents in an envelope. Send it by EXPRESS MAIL (Addressee to Addressee) to:
Commissioner for Patents
Alexandria, VA 22313-1450
Do not send by regular mail, Priority Mail, UPS, DHL, FedEx, etc. To get today’s filing date, you must send the application by the U.S. Post Office’s EXPRESS MAIL.
STEP 4. Immediately contact a highly competent, experienced Registered Patent Agent or Attorney to write and submit a nonprovisional patent application on your invention, claiming priority to your submitted provisional application. If you cannot afford this option, proceed to use one of the aforementioned resources to write and submit your own full nonprovisional patent application within a week, if possible.
Andrew Knight, J.D.(EDITOR'S NOTE:
Do-It-Yourself Provisional Patent ™ and Do-It-Yourself Patent Course™
are currently unavailable. Another good resource for inventors is
Pressman's book Patent It Yourself: Your Step-by-Step Guide to Filing at the U.S. Patent Office)