Individual Intellectual Property

IP Issues   |   Low-risk Sequence   |   Inventor Websites

 

Low-risk Sequence

There is a typical sequence of events that you should consider to minimize chance of adverse consequences discussed in "IP Issues". Deviations from the sequence can increase risks that you usually do not want as you proceed on the tasks of finding your market and convincing them that they want to buy your invention. That sequence is as follows:

  1. Conception
  2. Reduction to Practice
  3. Own Search
  4. Professional Search & Analysis
  5. Provisional Patent Application
  6. Original Patent Application
  7. International Considerations

Commercializing your invention can be exciting, painstaking and possibly rewarding. Don't take unnecessary risks.

 

Conception

You have an idea. Don't tell anyone outside the family without a minimum of a non-disclosure agreement; see Premature Disclosure. The question of whether you have invented anything is whether you have envisioned the invention in enough detail where it will work as intended. If it is envisioned in such detail, you are ready for the next step. If not, you may have to make one or more prototypes before you know it will work. Sometimes an invention can be how it is made or how it is used.

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Reduction to Practice

If you do not know that an idea will work as intended, you should run a successful demonstration or make a working prototype. While this is not necessary to file a patent application, a resulting patent is weaker. If some unrecognized element is necessary to make your invention actually work, a second inventor who recognizes all the necessary elements could receive a patent on the working invention. The second inventor would have enforceable patent rights and not you. As above, when you have reduced the invention to practice, don't tell anyone outside the family without a minimum of a non-disclosure agreement; see Premature Disclosure.

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Own Search

Performing your own search is useful for several reasons. First, it is free. You can find various Inventor Websites online. Second, you can learn information not found elsewhere that may be combined in a unique way to form an invention or make an invention more commercially attractive. Eighty percent of technical information is only found in patents. Third, you identify patent classifications that are useful to include in professional searches. Identifying nomenclature used by an industry can also assist professional searches.

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Professional Search & Analysis

Professional searches reduce the risk that a patent examiner will find a reference that is closer to your invention than those found in the search. Analysis of the references will allow a subsequent patent application to be written to obtain a greater scope of coverage while not overlapping existing patents that are now considered public information. A non-disclosure agreement may not be necessary as many professional searchers are patent law professionals or their agents.

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Provisional Patent Application

Provisional Applications are useful if money is short but be aware of the increased risks. A provisional application can be a one page description or drawing of your invention. The provisional application protects you from references dated after you filed your provisional application. But the provisional application only exists for one year and must be replaced within that time with an original patent application to keep the priority of that protection. During that one year, you are free to discuss your invention with others without suffering the disadvantages of premature disclosure. You may find others that may see enough value of your invention for themselves to fund an original patent application. However, the protection is only as good as the breath of your disclosure. If you must file a provisional because of costs or because of imminent disclosure that would bar patents outside the US, be sure to disclose as much information as you are able about the invention. Disclosure should cover such items as, for example, alternate structures and materials of construction, and variations in methods of making or using the invention.

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Original Patent Application

Filing an original patent application activates several protections. You are free to talk with others about your invention without concern that you will suffer disadvantages of premature disclosure. You are protected against not receiving a patent because of references dated after you filed that describe your invention. You can also place "patent pending" on your invention, thus giving notice to others that patent rights to prevent others from making using or selling your invention without your permission will be in effect when your patent issues. The penalties for willful patent can be substantial.

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International Considerations

Before you become immersed in activities to commercialize your invention, consider whether you want to file patent applications in other countries. There is no world patent; patent rights are national. You must file international patent applications within one year from your original U.S. filing date to receive the same protection from late dated references that you enjoyed with your U.S. patent application - including your own U.S. patent application if it issues before you files international applications. Companies that you plan to sell your invention may have markets in other countries. Patent rights in those countries may increase your negotiating leverage.

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