Now that you’ve conducted your preliminary patent search (Be Like Sherlock In Your Patent Search), I want to make sure you remember why you did that... To avoid a patent infringement lawsuit!
So review the relevant patents you downloaded, with special attention to the claims. If your invention is a simple, mechanical one, you should be able to determine if another inventor already has a claim to your idea(s). Sometimes it’s pretty obvious, even to a lay reader, but if it’s not clear, or if you are developing an idea in a highly technical field, such as engineering or computer science, I strongly recommend that you continue your search through a patent attorney with a specialty in your area of invention.
But, don’t rush out quite yet. There may be other factors to weigh in on your quest for a more expert reading of the patent claims. For example, you should first consider if you will eventually want a patentability search and opinion. If you ultimately intend to pursue a patent, a patentability search will more than cover the tracks of a preliminary search, so there is no need to pay for two separate searches.
Before I get into the specifics of where you may be going next with your invention, I’d like to lay out your general options.
Draw An Options Chart (No, not stock options!)
I’m very visual, so I make a chart for myself at the top of a legal pad or, better yet, a big flip chart! The diagram shows four general approaches to getting your invention to the market.
Ultimately you will choose one or a combination of these directions, but you will have to do some more research (your favorite word!) about these approaches before you list the pros and cons of each one. Listing pros and cons helps so much in decision making, especially if your information is factual. Within each option, you will have even more options, but right now, let’s deal with the “biggies” regarding your own personal direction.
1. Go Directly to the Market: In this category are various means of getting to market without patent protection. Maybe, for example, you don’t think your creation is patentable. One of my own direct to market items was a product I developed for dog walkers several years ago, manufactured under two labels, Ruff & Ready® and HoundBag®. At that time, I found nothing on the market for dog walkers that catered to the needs of both the dog and the walker. But my research told me there is nothing patentable about pockets on a bag containing certain containers and fastened around the waist – even though the product itself was new to the market. Ruff & Ready
Another reason you might choose to go directly to market might be that a patent application, is not worth your time or money. When I created a flying disc, widely referred to (although not by me, of course) as a Frisbee®, for a line of dog products, I had to devise a way to manufacture the disc so that it would not infringe on one of the many flying disc patents out there. I devised a different method of manufacture, but frankly, I could not make a case for my method being any more efficient than those that were patented… I simply created a different method so no one would sue me for infringement.
2. Provisional Patent Application (PPA): This approach is becoming more and more popular, especially among inventors of consumer items. The PPA requires a lay description (i.e., not patent-jargon) of your invention -- how it’s made, what it does -- and drawings. Hmm, I think we already have that information in our invention notebook….Hurrah! (Great Product Idea? What To Do Next)
A provisional patent application on file with the patent office entitles you to use Patent Pending on your invention and drawings, and it establishes the date of your idea at the time of your submission, in case there is a challenge from another inventor with the same idea. (Provisional Application for Patent)
3. Patentability Search and Opinion: An in depth search of the invention, covering all the missing elements in your preliminary search plus a professional opinion on whether or not an invention is patentable, based on the criteria of the Patent Office. Remember the criteria? 1) Not in use; 2) Not already patented; 3) Not made obvious by “prior art;” and 4) Must be useful. (What Can Be Patented and Novelty And Non-Obviousness, Conditions For Obtaining a Patent). Design and plant patents do not have to be useful; they can be decorative. Utility patents, as their designation implies, must be used for something.
The term prior art refers to both patented and non-patented inventions or products disclosed in some form (e.g., patent or journal article) to the public. When I was developing the Nukkles/Nuzzles product, a moderately flexible tool for massage, the related prior artNukkles In Use showed massage tools that were fixed, unable to conform to a person’s body. Additionally, prior art did not disclose any consideration of the comfort of the person holding and using the massage tool.
The patentability search and opinion should be conducted by a patent attorney with expertise in your area of invention, otherwise you are not getting a professional opinion!