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1. What is the first step that an inventor should take to protect their idea?

Documentation should be done as soon as possible following conception of the invention as the US is now a “first-to-file” jurisdiction, meaning that the first inventor to file a patent application is entitled to the available patent protection regardless of the actual date of conception.  Documentation should be done by describing (in writing) the structure and function of the individual components of the invention as well as the overall system (if applicable).  The description should include optional features and any alternate embodiments of the invention.  Documentation should include sketches and drawings that show the components of the invention in detail, and in various stages of use.  Flowcharts and data can also be useful depending on the nature of the invention.  Documentation should then be signed and dated by the inventor and co-inventor(s).

Richard Wesorick

2. So the inventor has the invention documented, now what?

The next step depends on whether the inventor has an obligation to disclose the invention.  Such an obligation is typical in an employer-employee or work-for-hire relationship.  In such a relationship, documentation of the invention should be promptly submitted to the proper person/office in accordance with the intellectual property policies and procedures of the company or under the terms of the contract.  If no such obligation exists for the inventor, the inventor can proceed to (a) search for prior art relating to the invention and (b) file the documentation of the invention as a provisional patent application in the US Patent and Trademark Office.  While these steps can be handled by the inventor on their own, this is also a good time to consult with a registered patent attorney.  

3. What are the basics of a US patent and what do patents protect?

A US patent provides a 20-year limited monopoly, calculated from the earliest filing date of a patent application. This limited monopoly gives the patent holder a “negative right.” That is, a right to exclude others from making, using, selling, or importing the invention as claimed in the patent.  The US patent law states that a patent can be sought for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”  In order for a patent to be granted, the invention must have utility and be novel and non-obvious over the prior art.  A patent attorney can provide a detailed explanation of these criteria for patentability.

4. What are the typical costs and timing for obtaining a US patent, and how does the process work?

The short answer to this question is $25,000 to $30,000 and 3 to 4 years; but it depends on many variables. The patent process often starts with the filing of a provisional patent application, which is really just a “placeholder” to secure the earliest filing date possible.  The provisional patent application does not have to adhere to strict standards in terms of what can be submitted and is never examined or published.  Within one year of the filing the provisional patent application, a nonprovisional (or utility) patent application must be filed. This utility patent application goes into the queue at the US Patent and Trademark Office, whereafter examination typically starts 14 to 20 months after filing.  Once examination is initiated, expect a 1- to 2-year process of written and oral negotiation between your patent attorney and the patent examiner before a patent is issued.

5. What are some mistakes that inventors need to avoid?

Let’s try a “Top 5” list to answer this question.

  1. Don’t delay in disclosing the invention. Under the new “first-to-file” law, it is important to file sooner rather than later.
  2. Don’t publish before disclosing the invention. While there is a one-year grace period for filing a US patent application, your patent rights in foreign countries are likely lost if you publish before filing a patent application.
  3. Carefully read and edit the draft patent application before filing. The application must be technically accurate.
  4. Be sure to send your patent attorney all prior art that you are aware of relating to your invention. If this prior art surfaces later (such as in litigation), the patent may be declared invalid.
  5. Address the question of who are the inventors. The patent can be invalidated if the patent incorrectly lists too many or too few inventors, so work with your patent attorney to figure out which inventor(s) contributed to the subject matter recited in the claims of the patent.
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