So you came up with an invention, and now it’s time to file a patent application. It seems like a natural progression. But jumping right into a patent filing without taking some other initial steps can lead to some unexpected problems.
Lets go over a few steps that should happen before you get going on a patent filing:
Describe Your Invention
It may seem that the development of an invention would necessarily involve describing it. But the step of describing an invention so that others can understand it is not always part of the process.
This step is surprisingly easy to skip, especially for inventions that involve a software component.
After all, the code is part of the invention, so doesn’t that mean that the invention is adequately described if the code works? Not really. Patent offices around the world want more than just code to understand how an invention works. They want understandable drawings and clear text that explains the invention.
What happens if you don’t describe your invention carefully during the development process? If you engage a patent attorney to file the application, the first step of working with the attorney will probably be a deep dive into the invention and its underlying technology. This process will be a lot easier and faster if you have some documentation already prepared.
Take a few hours to map out your invention. Use flowcharts and drawings to an extent you never thought you needed. Keep in mind that patent is a lot closer to being a comic book than it is to being a novel. Words are not enough, and it’s the combination of words and pictures that will make your patent something to be proud of.
Also, remember the ultimate audience for a patent may be a judge or a jury with no understanding of the technology you’re an expert in. Start with the very basics and build from a solid foundation.
After going through this process, you may learn your invention contains concepts you never considered. You might even figure out other applications for the invention. But at the very least, any other step in protecting the invention will be infinitely easier if you take the time to draw and write things out as clearly as you can.
Have a Disclosure Plan
Who are you going to tell about your invention? Why are you telling them? When do you plan on making it public? Are you going to make people sign NDAs to learn about your invention?
Are you going to engage others to help improve or market your invention? Will you have agreements with them? What will those agreements say about confidentiality or invention ownership?
Plenty of inventors—maybe most inventors—never ask themselves these questions. They may start by telling close friends about their inventions. Maybe they tell business partners. Maybe they get some input and incorporate that into the invention. And maybe they’ll make a public disclosure without thinking about the impact it might have on patentability.
Each of these disclosures has impacts and risks that can be hard for the average inventor to assess and understand. Unfortunately, the law of disclosure is not super simple and resists quick summary. But, high-level, it’s usually best to consider whether to file a patent application before moving forward with disclosures.
Think about who you want to disclose the invention to and why. Also plan out what conditions you want to put on those disclosures, and you’ll be a big step ahead of the average inventor.
Understand the Patent and Prior Landscapes
Filing a patent application is a relatively expensive decision. There are initial attorney fees and filing fees, and then there are decisions to be made on international filing and potentially also on filings for related inventions. Within the first two years after filing an application, there may be a dozen decisions that should be made about your filing. Those decisions can involve thousands to tens of thousands of dollars in fees.
Because of this time and expense, you want to avoid filing a patent application on something that already exists. Thus, you want to know what is already out there so that you can determine whether your invention is sufficiently new to be worth filing on.
If you like a DIY approach, doing basic searching on publicly accessible patent databases is a good idea. Web searches for similar ideas or products are also a good idea, because patents aren’t the only source of prior art that could invalidate your application.
Engaging a lawyer or other patent search professional might be a good idea if you don’t want to do this work yourself or if you don’t really know what you’re looking for (or what it means).
Before you file a patent application, take a few minutes to think about: (a) the quality of your invention summary; (b) your plans for disclosing the invention; and (c) your understanding of existing technology. If you’re not happy about where things stand on any of those factors, take a few hours to address them or talk with a professional who can help you navigate these issues.
Doing this doesn’t assure that you will get the best possible patent filing prepared, but it’s a lot better than going in blind.