US law provides that only a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof is eligible for patent protection. The invention must therefore be at least "new" (i.e., novel) and "useful". To establish that your invention meets these requirements requires skilled argumentation which is best provided by a highly trained patent attorney. Consequently, patent costs are significant and therefore could be a barrier for small inventors and startups seeking to protect their IP rights. These recommendations focus on the US scenario, as US law can be considered to provide some strategic advantages to small inventors (see our article entitled "Da Vinci " Filing Strategies to Postpone Costs and Preserve Trade Secret Protection while Reserving Important Patent Rights").
If you take a certain steps at the outset, you can better assess your invention and minimize the costs associated with patenting by dealing strategically with your patent attorney.
Figure 1 - Summary of ideas to reduce costs of preparing a patent application.
- Research the Market:
First, you should research the market thoroughly! Doing so helps establish that your invention is indeed novel and so may be worth the time and money that you, and perhaps others, will be investing in it. Obviously, if, by doing a Google" search, you can find products or services so similar to your invention that it is not likely that there is anything novel about your idea, then, unless you can come up with an improvement, investing more time and money developing the product or market makes little sense. Here you may find patent numbers which you may use as a starting point for a preliminary patent survey search. You should also find information about potential competitors or licensees.
Interestingly, a visit to a local distributor of similar products to the invention can be a gold mine of information. Although market research bears upon whether or not an invention is patentable, it is not within the scope of a typical patent search. A patent search is just that–a search of patents, and nothing else. Therefore, despite the fact that the results of a patent search may indicate that your invention is patentable, the invention will nonetheless be unpatentable if anyone offered the same invention for sale, published an article about the invention, or disclosed it publicly prior to the filing of your patent application. Unfortunately, just because someone else didn't try to patent a certain invention, this does not guarantee you the right to patent the same invention.
You Should Perform Your Own Patent "Survey" Search:
Unfortunately, you cannot significantly reduce the likelihood that someone else has patented your invention merely by checking online catalogs, researching the market, and browsing through shops at a mall. However, doing this, in conjunction with performing a patent "survey" search, will enable you to more confidently invest your hard-earned money in a formal, professional search.
The primary advantage of your performing your own patent search is saving money so that you can afford to pursue the hobby even of inventing even if your first effort fails. Inventors rarely ever just come up with one invention, and that one invention succeeds. Successful inventors are constantly inventing; they have made a long-term commitment to problem solving. One major problem though–it's an expensive hobby. Patent attorneys are some of the highest paid professionals. Of the inventions for which a patent practitioner (a patent attorney or patent agent) performs a patent search and writes a patentability opinion, about half are not patentable. Assuming that you will pay a patent professional $1500 or more for each "dry-hole", it is clear that if you are a prolific, although not-yet-successful, inventor, you have much to gain by increasing the probability that the search will return favorable results at the least possible costs. You can increase the probability significantly by pre-screening your inventions by performing a patent survey search on it. If you do this, you'll be doing the patent practitioner a favor as well; I do not know any patent attorney who likes being the bearer of bad news, much less when the bad news comes with a $1500 or more price tag!
Once you begin your search, I recommend that you continue searching even after you find a patent very similar to your invention. Then, when you think you've found all relevant patents, pick up the most similar patent and look at its "References Cited" section. The Publications Division of the Patent and Trademark Office places this section on the first page of the granted patent, and lists all patents which the examiner or the applicant cited during the prosecution of the patent application. Now make copies of the most relevant patents, and examine them closely.. If you when performing the search you find most of the patents listed in the "References Cited" section, you probably did a good job with the search. On the other hand, if you find that you failed to uncover several relevant patents, you should probably start your search again.
In rare instances, it may not be worth your time to perform a professional patent search. This may be the case if you are thoroughly familiar with the technological field of the invention, the field is less than two or three years old, and there are no similar products currently on the market. These facts may justify your making a request that your patent practitioner not do a patent search in order to avoid the costs. If you opt to not do a search, realize that you are incurring a clear risk (as always), but the risk may be small enough to justify going forward with the preparation of a provisional patent application. Confer with your patent practitioner and go with his or her advice.
Be Prepared for the First Meeting
Although the first meeting with your patent practitioner may be complementary, it is up to you to make it productive–one that is more than just a personal introduction. To this end, I recommend that, prior to your first meeting, you complete the "Invention Disclosure to Attorney" (the "IDA") found in at the bottom of this article, and give it to the attorney during your first meeting. The IDA asks questions which the patent practitioner typically asks in this first meeting. In addition, provide the practitioner with your patent search results. Doing this should increase the meeting's productivity, and earn the patent practitioner's respect. Better still, mail the IDA and the search results to the practitioner well in advance of the meeting. If you do, attach a cover letter that includes a statement acknowledging your awareness and appreciation that the first meeting is without cost, and that you are supplying the enclosed information for the practitioner's benefit, should he care to review it prior to the first meeting. If the practitioner has not reviewed the information at the time of your first meeting, nothing is lost. If, on the other hand, he has reviewed the information, you will then have a more productive meeting at no additional cost. In addition, his reviewing the information prior to the meeting indicates that the practitioner places a significant value on your time. This is an important indication that the practitioner believes his purpose is to serve you, the inventor, and not vice versa.
You will be well-served to ask your patent practitioner to give you estimates of expected costs, and have him or her agree that any invoices will not exceed these estimates by more than 20%. Because you are a new client of the patent practitioner, it is usual that he or she asks that you pay him for his estimated work in advance. Do also ask that the final bill include a detail of the time and billing rate of the patent practitioner, so that, if less time is spent than estimated, you'll have a clear credit note for future work.
Provide the Patent Practitioner with a Rough Draft of the Patent Application:
If the search results yield patents similar to your invention, you may use one or more example patents to guide you in preparing a draft patent specification. Your example patent should be one which a patent practitioner, and not an inventor, has written. The Patent Office allows inventors to recognize their patent practitioner by listing the practitioner's name on the first page of the granted patent, just above the section with the title "Abstract". Therefore, choose an example patent on which the Patent Office has printed the name of an attorney or agent.
I recommend that you refer to a how-to reference manual, for step-by-step instructions on how to write a draft patent specification. Your draft should contain descriptions of all practical configurations which you envision that your invention may take.
You should prepare the draft of the specification, including the claims, on a word processor, and then copy it onto a data stick to leave with the patent practitioner.
Once you've decided to ask the patent practitioner to draft a formal patent application, be it a provisional or regular application, give the patent practitioner your draft patent application. Note that formal drawings are not required and sketches are sufficient for the first filing so you may consider asking that formal drawings not be prepared at this time, to save the costs of a professional patent illustrator. This having been said, attractive, formal drawings can make your invention look more tangible and therefore help you raise money for your invention.
You May Prepare, File and Prosecute the Application Yourself
In the short term, the least costly way to prepare and file a patent application is for you to do this yourself. However, today's cost savings are likely to become tomorrow's expense. The Patent Office maintains that "while it is possible for a layman to successfully prepare and prosecute a patent application, it has found that the complexity of the laws, regulations and formal application requirements are often misunderstood or misinterpreted by the persons who are untrained and unfamiliar with the patent process. The misunderstandings or misinterpretations often lead to errors which are costly, if not impossible to rectify"(emphasis added). Because of this, the Patent Office "strongly advises prospective applicants to engage the services of a patent attorney or agent" ( see Basic Facts about Patents, Government Printing Office).
If you absolutely cannot afford to hire a patent practitioner, then your only choice may be to prepare and file the application yourself. If this is the case, I strongly recommend that you purchase a recently published reference book written by a patent attorney. However, if you want to do a passable job on your own application, you must use a good reference, and follow its directions carefully. Patent drafting software tools are available which, compared to a patent attorney's time, are very inexpensive.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.