Fewer than 1% of all patented inventions make money.  Inventors spend thousands of dollars pursuing patents for inventions that can not be patented nor lead to commercially viable products or services.  Why?  We believe one  reason why most patents are rejected is because the inventor (and the patent professional) did not analyze the invention or the marketplace before filing the patent application.  When the invention and marketplace are not analyzed, the invention defined by the claims in the issued patent do not protect the inventive concept.  Often the claims include unnecessary limitations that allow competitors to offer or make  competing products that avoid the patent. 

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Most patents cover a particular product or a method that uses a particular novel structure or step.  The center or key novel features is called the 'point of novelty'.  When the invention has been analyzed, the claims should be written to protect only the 'point of novelty' and not the 'point of novelty' along with ancillary structures or steps.  These ancillary structures or steps open cracks for competitors to sell or use products or services that complete with your invention.

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Before you writing a patent application, first ask the following questions:

•  What is the ‘inventive concept underlining the invention? 

• Once the inventive concept is determined, then identify all of the possible commercial products or services that could be developed that incorporates inventive concept. 

• Next,  determine if there's an existing demand for these products or services, or if the demand must be created.

• Can the product or service be described and claimed in a patent application that protects the 'inventive concept' and nothing more?

• Identify the party (parties) most  likely to infringe the patent if granted and are they subject to U.S. courts jurisdiction? 

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When the above questions are answered, the invention's value proposition should be apparent.  (A value proposition scale (1 to 10) can be used with 1 being low and 10 being high).  If the value proposition is low (3 or lower), then the invention is unlikely to be commercially successful and a patent should not be pursued. If the value proposition is medium (4 to 6), then more research and investigation is needed.  If the value proposition is high (7 or higher), the a provisional, utility or design patent application should be filed as soon as possible.

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What Type of Patent Should I pursued?

You can file a Provisional patent application, a Non-provisional patent application (also called a Utility patent application) or a Design patent application.  Which one you file, depends on the nature of the invention and its value proposition.  If the invention is a physical object and has the same functional features as products in the marketplace, and the value proposition of the product is associated with its appearance, then a design patent should be filed.  We also believe the anticipated life span of the product or service that will be protected should also be taken into consideration.  For example, if the protected products or services anticipated lifespan is relatively short (3 to 5 yrs), then a narrow utility patent or a design patent should be pursued.  

 

When Should you file a Provisional application?

• When it is unclear if the key feature or step used in the invention is novel or non-obvious;

• When  the key inventive feature or step has been identified, but more research and development is needed to make the prototype or proof of concept;

• When the 'value proposition' of the invention is uncertain and more marketplace research is needed; 

• When disclosing the invention publicly; and

• When disclosing the invention privately to investors or potential licensees.

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What is the 'First to File' Rule? 

Image a world with laws that say only one manual script may be printed for a particular non-fiction topic. This describes the patent and trademark worlds. Both the U.S. patent and trademark filing systems follow a 'first to file' rules which mean a party who is first to file a patent or a trademark application has priority rights over others who file an application later for the same invention or mark.  If you are able to secure patent rights to an invention or trademark rights to a mark, you control the  manufacturing and use of the invention and use of the trademark in the territory governed by the patent or the trademark registration.  

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Can any new idea be patented?

NO.   First, an invention must fall within one of five statutory categories.  Generally, if the invention does not pertain to a law of nature, a mathematical equation, or a business method, the invention probably falls into one of the acceptable statutory categories.  The most common ideas we see that are not patentable are ideas for selling or marketing something; ideas that involve human thought or contemplation; ideas that involve collection of data or marketing.  All patent offices also require that inventions must be 'novel' and 'non-obvious' to be patentable. (Note. Some foreign patent offices use different terms for these concepts).  'Novelty' means the invention must be new and not published, not used publicly, not on sale, nor described in a patent application more than 12 months before your filing date. 'Non-obviousness' means the key novel feature(s) used in the invention must not be obvious to a person skilled in the technical field that pertains to the invention.

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What are Statutory Bar rules?

Besides the 'subject matter' limitations and the 'novelty' and 'non-obviousness' requirements, the U.S. patent system also follows an 'inventor's statutory bar' rule (i.e. an inventor has 12 months to file a patent application from the first date of offering to sell, publication or public use of the invention).  Today, it also follows an implied 'third party statutory bar' rule', (if another party uses or describes in a publication a product or service that is identical or similar to your invention more than 12 months before you file a patent application, then you can not file a patent application for your invention).  

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What do you have to identify the inventive concept?

The key to writing a successful patent application is to analyze the problem the invention is solving and then analyzing how invention to identify the key novel feature used in the invention that solves the problem. Patent professions regard inventions as concepts or abstractions, not something physical or tangible.  The concept or abstraction is what we call the 'inventive concept'.  The goal of the patent application is to protect the 'inventive concept'

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Why file a provisional patent application instead of a utility patent application? 

Remember, once you decide to protect the invention, you need to file the patent application as fast as possible.  In most instances, Provisional patent applications and Design patent applications are easier to prepare and can be filed in a few days.  Utility patent applications are more complete and usually take several weeks. Utility patent applications also cannot be amended or corrected. 

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Are design patents a good alternative to utility patents?

Design patents are less expensive and more likely to be likely granted than utility patent applications.  The life span of a design patent is 15 yrs. from the date of issuance (the life span of a utility patent is 20 yrs from the filing date of the utility patent application).  Because the product life of most products sold on online retailing websites typically less than 5 yrs, we believe design patents are a good choice. 

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How do I begin?

First, you need to decide if you want to protect the product or service.  Next, do you need assistance preparing and filing the patent application?  If yes, how much or what kind of assistance to you need?  Talk to our Patent Navigator if you need help. 

Also, check out  our 'Identify the Inventive Concept' handout.  Next identify, the type of patent is best suited to protect the inventive concept.  If a non-provisional patent application is chosen then check out our 'Non-provisional Patent Application' template. (Use the 'Non-provisional Patent Application' template to prepare a provisional application).  If a design patent application is chosen, then check out our 'Determining What to Draw in a Design Patent Application' guide. 

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Our Mission:  File1st is for individuals who are inventive, entrepreneurial, and enjoy technical writing and who want to file their own patent applications or participate in the patenting process. Our staff has written thousands of patents.  They have more than 50 yrs of combined experience advising inventors and small businesses with preparing and filing provisional applications, utility patent applications (also called non-provisional applications), and design patent applications.

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Talk or contact our Patent Navigator at *(877) 227-1565 / 206953-3035 (text) or at info@file1st.com