Ten Rules Every Inventor Should Know

6. S = Search Before Filing:


Since a regular patent application (RPA) is a long document which is relatively difficult to prepare, and the filing fee (and attorney's fee, if you use one) is high, you should not file an RPA unless you can have some assurance that you will have a good chance of getting a patent. There's no way to be certain of your chances since pending applications, which may bar your right to a patent, are kept secret by the PTO, but you should always make a search to determine if there are any apparent patents or other publications out there which may bar you from getting a patent. The techniques for searching are too involved to go into here, but Chs. 5 and 6 of PIY will tell you how to go about it.

6. A = Prepare Application After Commercial and Patentability Evaluations:

You should not prepare and file a regular patent application until you have followed steps R, E, and S, and determined that the invention is commercially valuable and patentable. A patent application is a document, usually about 10 pages long for a simple invention, that describes and shows the invention and how to make and use it, and gives some information about the inventor. Again, the techniques for preparing a regular patent application are too involved to go into here, but Chs. 8 to 10 of PIY will tell you how to do it. The on-line filing fee is $425. If you can't write a detailed description of your invention in conjunction with drawings, and follow detailed instructions, you'll have to hire a patent agent or attorney to prepare and file an application for you. The fee will usually range from $3000 to $7000 for a simple invention, not including the filing fee.

7. M= Market It After Filing:

Once you file a patent application, it's time to try to license or sell it to a company, unless you want to manufacture and market it yourself (rare). Once you file the application, you can show it more freely since it would be hard for anyone to steal it from you after you've filed. That's why it's best to file an application first, before trying to market the invention. The procedures for finding and marketing it to suitable companies are also too involved (see Ch 11 of PIY), but it's best to try medium or smaller companies that are geographically close to you so that they will be willing to accept ideas from outsiders and you can reach them easily.

8. Be Thorough And Persevere:

I have found that it's important in this business to be thorough and persevere in whatever you do. E.g., when you make a patentability search, it's important to search thoroughly to as to uncover the closest prior art, which will show what you really invented and enable you to tailor your application around prior developments. When you prepare a patent application, it's essential to describe the invention in full detail, to include all ramifications that you can think of, and discuss all the advantages of your invention. When you market or try to license the invention, it's vital to persevere, even if you get rejections, since it's difficult to implement a new system and not everyone will be willing to invest their time and money in a new venture.

9. Make Sure Your Patent Application Clearly Teaches How To Make And Use Invention:

A statute requires that a patent must disclose how to make and use the invention in "full, clear, concise, and exact terms". In order to comply with this statute, it is essential that the patent application describe and provide drawings of the invention that clearly show how to make it and use it, including the required materials, sizes of parts, method of fabrication, and method of use. If the application fails to do this, it can't be amended to fix the deficiency since another statute prohibits the addition of any "new matter" to a patent application. Thus you must get it right the first time.

10. Understand Claims And Make Them As Broad As Possible:

Every utility patent application must contain "claims". These are sentence fragments that describe the invention is legalistic terms and are used to determine whether or not the patent is infringed. Despite this formidable description, almost everyone will be able to understand and write claims after some brief familiarization and exposure. See Ch. 9 of PIY to learn all about claims. If you use a patent attorney to prepare your patent application, you should understand claims to be sure the claims of our application are as broad as possible and describe your invention properly. If you prepare your own application, you not only have to understand claims, but you must write them as well, but you'll be able to do this using a three-step process, once you learn the rules and techniques.

David Pressman
Guest Blogger