Questions Related to Patents



Have a new idea or invention you want protected? If you  are like many who have never been involved in the patenting process and  are serious about protecting your ideas, you probably have many  unanswered questions.

"Do I need to conduct a patent search? Can I  disclose or commercialize my invention without losing my right to  obtain a patent? What is a design patent? What is the first thing I  should do to protect my idea?" The list goes on and on.

While many people may have some idea or have received advice about the answer to these questions, they may be mistaken.

First of all, patent laws have changed significantly in  the last few years and these changes may be detrimental to the  protection of your invention. If you are not already aware, the  Leahy-Smith America Invents Act was signed into law on September 16, 2011. Of the various provisions that were included  under this Act, probably the most significant was the change to the U.S.  patent system from a first-to-invent system to a first-to-file system and the change to the one-year grace period that allowed certain  specified activities to occur prior to filing a patent application. 

So what does this mean for you as an inventor?


First, under a first-to-file system, whether you invented something before someone else becomes irrelevant. What matters under the  first-to-file system is that you filed a patent application for your  invention before anyone else. Records or proof of conception, such as an  inventor’s notebook, therefore are immaterial for purposes of  establishing your right to obtain a patent over someone else who has  derived the invention independently from you.

Secondly,  the one-year grace period that allowed certain activities to occur prior to filing a patent application has been modified under the Act.   Now, under the current law, patentability is lost if before the  effective filing date of your invention one of the following events have  occurred:

•  The invention was patented or described in a printed or electronic publication;

•  The invention was in public use;

•  The invention was on sale; or

•  The invention was otherwise made available to the public.


If one of these events has occurred,  however, don't lose heart quite yet.  There is an exception to the above  under the Act.  Patentability is not lost if one of the above events constitutes a disclosure made by you as an inventor that occurs within a  year or less before the effective filing date of a patent application  for your invention.  Therefore, if one of these events was caused by  you, or even caused by someone that may have obtained the disclosed subject matter from you, it may constitute a disclosure that would allow you to still file a patent application for your invention without  losing your patent rights.

While there is an exception for activities that constitute disclosures by the inventor under U.S. law,  many foreign countries require you to have a patent application filed  before any non-confidential disclosure or other activities have occurred if you intend on seeking patent protection outside the U.S.  Therefore,  it is usually good practice to keep your invention confidential or secret until you have filed a patent application.  Confidentiality can be maintained by the use of confidentiality or non-disclosure agreements.  

What should you do?


So what does this all mean?  Well, if you intend on filing a patent application for your invention there are some important things you need to do.  These IMPORTANT THINGS are the following:  

• DO keep your invention confidential and secret;  

• DO NOT put your invention on sale;  

• DO NOT describe your invention in any publication;  

• DO NOT make a public use of your invention or otherwise make your invention publicly available; and 


• DO file a patent application for your invention as soon as possible.  

Finally,  BE WARY.  There are those that may offer products and services for developing or protecting your invention that are either worthless or that ultimately provide very little, if any, value.  In many cases they  may even be scams.  Many of the invention companies you see advertised fall in this category.  They may conduct a search that indicates you have a novel invention but you may receive little if anything of further  value from them.  The U.S. Patent Office has published literature regarding these scams and provides information on how you can report them should you become involved.


Additionally,  be wary of products or services that are offered at such low costs that they sound too good to be true. Often the low cost is an indication of the quality of the product or service you will receive.  An example of this is the patent drafter providing a very short and broad disclosure of your invention that just covers the basic features as you may have  described them to your patent attorney.  It is a misconception by many that providing only a general or broad disclosure in the patent application results in a broad patent.  Patent applications,  particularly for very simple or basic technology, that have such short,  broad or general disclosures that do not provide any in-depth details regarding your invention often have a very difficult time getting approved, if they even are approved.  After the patent  application is filed, it is often too late to go back and add the necessary detail that would have allowed you to overcome a rejection of  your patent application.  A good patent attorney should assist you in fully fleshing out your invention so that specific and detailed  information and alternatives, such as potential future alternatives, are included in your patent application before it is filed so that it has a better chance of being approved and provides adequate coverage for your  invention.

These are just some of the issues and questions related to patents that might indicate that you need to consult an experienced patent attorney or intellectual property law specialist.  Contact us for a free consultation. 

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