Thomas Edison Club

Advice for New Inventors

Tom, a new inventor, engages Patentagentman (acronym PAM) in a dialogue

TOM: I have thought of an invention, Patenagentman, and I wish to become rich. What steps must I take?

PAM: May I assume you have looked about stores, questioned salespeople, perused catalogues, surfed the Internet, and so forth to see if there is likelihood that your invention is new?

TOM: Yes, I have taken these steps, and I found nothing similar.

PAM: Excellent! The next or concurrent step is to establish your date of conception. In the U.S. in the case of conflicting patent applications a patent will issue to the inventor who can prove the earliest date of conception, provided the inventor is reasonably diligent in reducing the invention to practice.

TOM: How do I establish my date of conception, Patentagentman?

PAM: I'll describe two good methods for you.

  1. When your invention is well-established in your mind, make up a complete description, including drawings, and have a couple of good witnesses who can understand the invention read and sign the papers. Your notarized signature on the papers adds even more credibility.
  2. Make use of the PTO's Disclosure Document Program. For $10 the Patent and Trademark Office will keep your conception papers for two years.

TOM: What does "reasonably diligent in reducing to practice" mean?

PAM: Basically it means the inventor should be working toward filing an application or demonstrating the invention works, for example through successful testing of a prototype, in at least a plodding fashion short of giving up and abandoning the invention. One shouldn't hope to be considered diligent if one conceives of an invention and then waits ten years to file an application or make a working model, for example, unless unusual circumstances warrant the delay. Diligence is a matter of judgement and circumstance. Keep plugging away and you'll be OK. Save all records! Other countries of the world use a "first to apply" system in contrast to the "first to invent" system used in the U.S., but it is likely in the future that the U.S. will switch to a "first to apply" system, the trend being toward harmonization of worldwide patent systems. Less than 1% of applications end up in an "interference" to determine priority of invention anyway, but good records are good insurance. Check out also Section 1.131 of the Code of Federal Regulation, Title 37 when you have a chance.

TOM: What about a patent search? Don't I need one?

PAM: Mmmm, it's not a requirement. You can do an online search at the United States Patent and Trademark Office. (How to.),  or use a search engine or phone book to find a professional searcher. Expect to pay at least a couple of hundred bucks on up. If you're a manufacturer rushing into production, a good patent search is often advisable to avoid infringement or to determine a patent strategy if you aren't completely familiar with the art. On the other hand, if you're an independent inventor who is just trying to sell his invention, you can let the Patent Office do the searching later if it comes to filing a regular patent application and you have the time to wait. If you are an expert in the art to which the invention pertains and up on the latest developments, a patent search may be superfluous; but if one could incur large costs by not knowing the prior art, a search can be good insurance. Even the best search can overlook relevant prior art of course.

TOM: I am keen to sell my invention to a manufacturer. How do I protect it?

PAM: Establishing your date of conception as described above will afford you a fair degree of protection. If you want a greater degree of protection, a provisional application  is just the ticket for most inventors of limited means. This in an informal, inexpensive instrument through which you can get an application filing date, although you must file a regular patent application  within a year to maintain your filing date. A patent is the best protection, but obtaining one can be quite expensive. PTO application and issue fees alone add up to about a grand, double that for a larger business that doesn't qualify for "small entity" status, and add to this patent agent or patent lawyer fees, draftsman fees, and miscellaneous fees. And once you obtain a patent, there are maintenance fees required to keep it in effect.

TOM: Wow! Why so much?

PAM: Our taxes go for waste and corruption, so you have to pay users' fees to get government services nowadays. The USPTO is supported by users' fees.

TOM: Do you think my invention is patentable?

PAM: If it is new, useful, and unobvious, and fits into one of the classes of patentable subject matter set by law, then it should be patentable. These classes of patentable subject matter include: new and useful processes, machines, manufactures, or compositions of matter, or any new and useful improvements thereof. A new use of a known process, machine, manufacture, composition, or material is also patentable. And of course I would be remiss if I didn't mention patents for asexually reproduced plants and ornamental designs for articles of manufacture.

TOM: What do you mean by "new, useful, and unobvious"?

PAM: Oh, sorry. One gets accustomed to patent jargon and forgets that others may not understand words that have special meaning in the Patentese language derived from statute and precedent. "Useful" means the invention works for its intended purpose. "Unobvious" means unobvious at the time the invention was made to a person having ordinary skill in the art. For example, if a machinist invents a machine tool, to be patentable it should be unobvious to others who toil in the same field of technology, other machinists, engineers, etc. A more mundane, operative explanation of "unobvious" might be that your patent application won't be allowed unless the examiner thinks it is unobvious, or can be persuaded to this conclusion. What "new" means, in a legal sense, is set out in the patent laws. I have included a hyperlink to some of the more useful sections of the most important patent laws. For specifics on "newness." Refer to No. 102.

TOM: Who might be interested in my invention, Patentagentman?

PAM: A good place to start looking might be the Thomas Register. They list manufacturers by product.

TOM: What exactly is a patent agent? Is it a, a.uh, lawyer?

PAM: A patent agent, Tom, is a patent practitioner who is not a lawyer, but rather a technical nerd person such as an engineer, scientist, or former patent examiner who has been admitted to practice before the U.S. Patent and Trademark Office (PTO or USPTO).

TOM: Oh. Thank you so much for the edumacation.

PAM: You're very welcome.

For further study:

2-12-01

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