Colorado Patent Attorney Mark Trenner Answers Questions For Inventors during Radio Show Interview:
Does the US Patent Office have any resources for searching the prior art?
If you can’t find anything like your idea, either online or in stores, you can try heading over to the US Patent Office website. The US Patent Office has a free online database of all patents ever issued (yes, all the way back to 1790), and all patent applications published since 2001.
How do I develop a good search strategy?
That can be tricky. Don’t spend too much time here. Instead, hire a patent attorney to do a patentability search and analysis for you. Often when I provide the search results to a client, the inventor says “I didn’t realize there were already so many products so similar to mine.”
That’s why we do the prior art search. It’s better to find out that your idea already exists before you spend too much money filing a patent application for your invention with the US Patent Office, only to have your patent application rejected because someone else already had your idea.
Alright, if the prior art search didn’t turn up anything relevant to my invention, what’s next?
There are two basic requirements any invention must meet in order to file a patent application. Of course there are other requirements too, but let’s focus on what is arguably the most basic patentability requirements.
Okay, what’s first?
The US Patent Laws requires that your invention be unique or “novel”. If you haven’t figured it out already, you can’t patent someone else’s idea or an idea that is already on the market – it isn’t any invention.
Okay, if my invention is new and not obvious, what then?
You have a couple of options. You can file a provisional patent application, or you can file a regular patent application for your invention.
What is a provisional patent application?
A provisional patent application is a patent application that describes your invention in words and optionally with drawings or pictures, and when filed with the United States Patent Office, receives a serial number and a filing date. On the same day that you file your provisional patent application with the United States Patent Office, you can mark your invention (brochures describing your invention, etc.) with the words “Patent Pending” (or “Pat. Pend.” for short).
Then what’s the difference between a provisional patent application and a regular patent application?
A provisional patent application is never examined by the U.S. Patent Office and automatically goes abandoned after one year from the filing date.
If a provisional patent application goes abandoned after only one year, why would I file one
Your budget (or lack of a budget) is probably the number one reason to opt for filing a provisional patent application. In general, provisional patent applications cost significantly less than filing a regular patent application. There are no formal requirements for a provisional patent application, like there are for a regular patent application. So in general, it takes a patent attorney more time to prepare a regular patent application than it takes to prepare a basic provisional patent application. It’s the old adage that “Time Is Money.”
If you can’t afford to file a regular patent application just yet, but you don’t want to lose rights to your invention, consider filing a less expensive provisional patent application. Then when you have money from sales of your invention, or investors lined up, you can better afford to file a regular patent application.
What if I am still developing my invention?
Even if you are still developing your invention, you can file a provisional patent application. Then if you come up with more developments during the one year before the provisional patent application expires, you can add those new features to the regular patent application. This way, nothing gets left out.
What if my product is fully developed?
Even if you think your invention is fully developed, it’s always good to get a second opinion (and a third opinion, and a fourth opinion . . . ). Showing your invention to friends and family, having a prototype built, and testing your invention may all lead to improvements, fixing things that don’t work, or coming up with different ways of implementing your invention.
Can I show my invention to others without losing rights to my invention?
Getting those second opinions means showing your invention to others, which can be risky business if you haven’t already filed at least a provisional patent application. In addition to reducing the risk that someone sees your invention and claims it as their own, a provisional patent application can also be important evidence that your invention belongs to you.
What if I want to test the market for my invention?
Maybe you think your invention is the greatest idea since the light bulb. You’ve told your spouse and a few close friends, and they all agree. But what really counts is how your invention is what the customers think. There are many patents issued every year, and many more patent applications filed, that never make it in the marketplace. Wouldn’t it be good to get some customer feedback to find out whether your invention is really all you think it is? Wouldn’t it be good to know whether your invention will be an instant success, whether it needs some more work, or whether it’s a total flop before you invest too much time, effort, and money in this idea?
It sounds like a provisional patent application is the way to go.
Ultimately, you will need to make the decision, weighing a number of factors, including budget, timeline for taking your invention to market, and various other business considerations and goals you have for your invention. And in some instances, it may make more sense to file a provisional patent application initially, instead of a regular patent application. Be sure to discuss the pros and cons with your patent attorney so that you can make an informed decision.
So what happens after I file a patent application?
You applied for your patent application 1-2 years ago. You thought you were done, right? Wrong. Now it’s starting to come back to you. When you filed your patent application, you remember your patent attorney mentioning something about the claims having to be examined by the Examiner at the US Patent Office, and that it would take 1-2 years, maybe even longer. It seemed so far in the future that maybe you didn’t really think about what this meant.
What is an Office Action?
An Office Action is the Examiner’s assessment of your invention. an Office Action may include objections or rejections, with reasons why the Examiner doesn’t believe your patent application should be allowed to issue as a patent.
What if my patent application is rejected?
When you read the rejections, none of it makes any sense. Certainly your invention is different than these other references the Examiner is citing. The Examiner just doesn’t understand your invention, right? Maybe. More likely, the Examiner has some basis for the rejections. But don’t give up. You can file a Response to the Office Action.
