Step by Step

So you think you have a new idea, and after a preliminary analysis you believe that this idea could be profitable. What should you do next? The safest road to success is to perform a series of steps designed to minimize your risks:

·         Preliminary Commercial Evaluation  

·         Registering Your Invention

·         Preliminary Opinion

·         Patent Search

·         Writing up your Invention and Making Drawings

·         Provisional Patent Application

·         Development and Marketing

·         Non-provisional Patent Application

Preliminary Commercial Evaluation: Before you begin, you should conduct a market analysis and develop a business plan.  If your invention has no potential for profit, then stop right here. The invention may have great possibilities as a hobby but not as a business venture. If you intend to make a profit you should answer the following questions:

·         What is your market? Who will buy your invention? How many will buy it?

·         How will your invention be manufactured? By whom? How much will it cost to manufacture?

·         How will it be advertised?

·         How will it be distributed and sold?

·         What will be its wholesale and retail prices?

·         How much are competing products selling for?

·         How does your product compare to the competition?

·         How much profit will you make?

·         For how long?

Registering Your Invention: The quickest way to proceed and to get online confidentiality is for you to time-stamp your invention using an online service such as ecrive.net - timestamping service.  This time stamp will allow you to prove that you generated the document on a particular date. 

Inventors may also file a provisional application for patent rather than a disclosure document.  A provisional application for patent provides more benefits and protections to inventors than a disclosure document and can be used for the same purposes as a disclosure document.   For more information on provisional application see the paragraph below.

Preliminary Opinion:  At Patent and Ventures we will give you a free consultation and feedback regarding your invention. Our staff is experienced with the patenting process; however, this consultation does not guarantee the success of the invention.

Patent Search: The patent search is the next decision point. You must make sure that no one else has patented the same invention, used it publicly, or described it in a publication. Should you manufacture, sell or use an invention patented by another, you could be sued for royalties. Should you apply to patent an idea that is already in the public domain, your patent may not be awarded; even if it is, it can be found to be invalid. A good search is important; however, no search is perfect because any publication anywhere in the world, in the history of civilization could invalidate a patent. In addition, patent databases are enormous and discovering all relevant prior inventions may not be possible within the time and monetary constraints of the search. Investing effort in the search should be in proportion to investing in the whole invention.

Writing up your Invention and Making Drawings: The first step in protecting and communicating your invention is to describe it in writing. This description must be as thorough as possible. It will be the basis for communicating your invention to others and for protecting it. It should be in your own words without attempt at legalese. It should enumerate each individual part in an organized and sequential manner and should not include any marketing data.  By providing us with a thorough description you will facilitate our task and therefore reduce your cost.

Make sure your writing addresses the following points:

·         Publications and Sales. Submit and describe any technical or marketing documents you have written and publicized about your invention together with the date those documents and were made public. Submit any sales event together with the dates of sales. Publications or sales from more than one year ago could invalidate your patent.

·         Title of invention. Do not use any marketing jargon.

·         Name of Inventor(s). For each inventor provide full legal name, post office address, residence address, telephone number, citizenship and if possible, fax and e-mail address.

·         Technical Field: What is (are) the technical field(s) of the invention?

·         Problems to be Solved. What are the problems that the invention is attempting to solve?

·         Prior Art: What are the solutions proposed by others in the past? How did these solutions failed to solve these problems?

·         Utility of Invention. What is the utility of your invention? How is your invention better than existing solutions? Write objectively without any marketing lingo.

·         Obviousness: Why do you think your invention is not obvious?

·         Abstract/Summary: Write a short summary of your invention in about 25 words.

·         Essential Elements: In its simplest form, what are the essential or key elements of your invention? Make use of drawings. Label each essential part that you may wish to reference in the text of your description by a reference number. How do the different elements of your invention interact?

·         Best Mode: What is the best or preferred way of implementing your invention?

·         Variations: What are all the possible variations derived from the basic theme of the invention?

·         Operation: How does the invention work? How do all the component parts interrelate to each other?

·         Usage: How is the invention used? How does someone utilize the invention?

·         Manufacture: How is the invention manufactured? (optional – describe only if manufacturing is an essential element of the invention)

Provisional Patent Application: Choose a reputable patent attorney or a patent agent to file your invention. Provisional patent applications are less expensive to file than non-provisional applications because they are not challenged by the patent office. Even though they offer patent protection, and allow inventors to claim “Patent Pending,” their utility is limited; they are kept on the shelf during a period of one year at the end of which they are discarded unless a conventional non-provisional patent is filed within the year. The advantage of filing a provisional patent is that it adds up to one year to the life of a patent and allow the inventor to freely talk about and market his invention. The disadvantage is that they are not examined by the patent office and therefore do not provide any actual guarantee that a patent will be issued.

Development and Marketing. This next decision point is reached after filing of the provisional patent. The inventor has at most one year to decide if he wants to increase his involvement in his invention or abandon it. He can attempt to market the invention himself or enter in an agreement with a marketing organization. Having filed a provisional patent, he benefits from full patent protection, and should therefore develop and market his invention in earnest. He can use this time to test the market by selling the invented product or even the patent itself. He should try to secure orders, obtain letters of support, endorsements etc., to attract potential investors. During this phase, the inventor can ask companies and individuals to whom he discloses his invention to sign a Non-disclosure Agreement (NDA). Sometimes, companies involved in the same research area as the invention may be reluctant to sign on NDAs. Before a year elapses from filing the provisional patent, the inventor must decide if he wants to continue and file a non-provisional application or reconsider his idea.

Non-provisional Patent Application: Should you decide to file the non-provisional application, you can include in it new ideas and improvements to your invention that may have occurred to you since the provisional was filed. These additions will not benefit from the early priority date of the provisional application. Filing a non-provisional patent based on a provisional patent is considerably less expensive than filing the non-provisional patent from scratch. Assuming that there is no major change to the original provisional document, the work will include writing or revising the claims, filing the patent and responding to the objections and rejections of the patent office. A non-provisional patent provides a 20 year protection from its filing date during which you are entitled by law to exclude anyone from making, importing, selling or using your invention without your authorization.

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