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2009-08

The Inventor's Mentor

August 2009

Registering your Invention


As explained in last month’s newsletter, the US is the only country in the world which recognizes the first person to conceive of an invention as the inventor. This is known as the “first to conceive approach.” Other countries recognize the one who first files a patent application as the inventor. While the first to file approach is the simplest, it is the least favorable to the small inventor who typically does not benefit from a large team of patent practitioners, either in-house or on permanent retainer, as usually found in large companies. Nevertheless, the first to conceive approach also has its problems: proving that one is the first to conceive can be tricky and can lead to endless lawsuits, a situation also detrimental to the small inventor. What can he do to authenticate the date of conception of his invention? This newsletter shall discuss possible approaches.

The first step in protecting the date of conception of an invention is to describe the invention in writing. Any document proving conception must include the following:

1)       Description of the Invention
This description should be written in enough detail to enable someone versed in the technology of the invention to construct the invention without undue trials and errors.

2)       Best Mode
The best mode refers to the description of at least one illustration of the invention that exemplifies the best version of the invention as understood by the inventor at the time the invention was made.

Word of Caution: It is important to note that the quality of the description is important. If this description is ever needed to prove inventorship by a given date, it may be compared to well written patent applications composed by experienced patent professionals.

Once the invention is described in writing, the next step is to file it with a trusted authentication service. Below are a few options that an inventor may consider.

1)       Self Addressed Envelope
This approach simply does not work and is not recognized by the courts because the mailed document can easily be falsified. For example, someone could mail to himself an empty unsealed envelop, insert the document after the date of mailing and then seal the envelope making it appear that the document was generated before the mailing. In the same vein, it is easy to open a sealed envelope using the steam of a tea kettle.


2)       Electronic Postmark by the US Post Office
The USPS Electronic Postmark® (EPM)* is an auditable time-and-date stamp service offered by AuthentiDate, a service provider under license by the United States Postal Service. The EPM can be used to verify the authenticity of a document or file sent electronically, and provides trusted proof of content as of a specific point in time. This service can be found at http://www.usps.com/electronicpostmark and at http://epm.authentidate.com. This service will cost you $20 for a block of 25 documents. No unit pricing is available.

3)       Intellectual Property Registration Services
Services such as the one provided by IP.com allow you to upload your document for safekeeping. This service also provides you with the proof that you are the inventor as of a particular date. To access this service go to https://priorart.ip.com/lsa/cr/upload.jsp and follow the instructions. This service will cost you $18 per file.

Word of Caution: Registering an invention with the US Postal Service or IP.com is not the same as filing for patent and does not offer any patent protection. Furthermore if the inventor registers his invention as explained above but then does not assiduously pursue its development and does not file for a patent application then he may be considered by the courts to have abandoned it. Therefore, unless he can prove due diligence in reducing his invention to practice, he may lose all rights to it.

Provisional Patent
A provisional patent application provides the inventor with the most reliable method of protecting an invention short of a full (non-provisional) patent. A provisional patent has a life of one year and must be followed within that year with a non-provisional application which refers back to the provisional to benefit from its early filing date.

For archived newsletters and a lot of information for the small inventor go to: www.patentsandventures.com. If you have any question you can contact me at (858)259-2226 or email me at glevy@patentsandventures.com. This newsletter should not be construed as legal advice. ©2010 by George Levy.

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