Patents are a wonderful way to protect your Intellectual Property (IP). For the new inventor, filing one can be daunting. The most common reason is the complex patent authoring process and the perceived high cost of creation. Couple this with an eager inventor and you get someone ripe to spend way too much on filing a patent. The key to patents on a budget is to adhere to a patent creation process that inherently reduces costs.
What’s A Patent and Why Do I Care?
A patent for an invention is the grant of a property right to the inventor. This right is granted by the USPTO in exchange for disclosing the invention to the public. This right includes the right to exclude others from making, using, offering for sale, or selling the invention in the United States and its territories [Ref]. The term of a patent is twenty (20) years from when it was filed. After the patent expires, the invention goes into the public domain, which means anyone can make it. A patent provides a mechanism to exclusively sell or license your invention during the patent term. They are also tangible property for the company. Ego wise, it’s great to see your name on one.
If you read thus far, then you are probably wondering how can I patent my newfangled widget without spending a ton of money. It’s important to set the expectations that authoring patents takes time and practice. You will not be able to whip out your first or even third patent in a weekend. Just like anything, the more you practice, the better you get. The Patents On A Budget Process is meant to get you in the habit of capturing your inventions in a patent friendly way as you create it. You will most likely need a patent attorney for the polish and the filing. A lot of the patent cost you can minimize by having the idea information captured appropriately.
Step 1: Keep a Patent Notebook
Vital to this process is keeping a patent notebook. This notebook should have sequentially numbered pages and be perfect bound (no spiral, tear outs). All of your ideas should be written in this notebook, signed, witnessed and dated. This allows you to determine when your invention was conceived.
Step 2: Create Disclosures
Disclosures are a more formal capturing of your invention. In a disclosure, you distill your notebook pages into a more readable document. Each disclosure should be a “how to” guild for the invention. Disclosures should be typed up and signed by each inventor. A incrementing number should also be assigned to each one as well. Items to include in a disclosure are:
- Invention Title: Create a descriptive title that explains your invention. Think patent title. Something like: A Method to Create A Peanut Butter Sandwich Without Using A Knife or An Apparatus to combine multiple viscous materials on a fragile structures. You get the idea.
- Describe The Invention: This is where you document how the invention works in as much detail as you can. Don’t write it in terms of claims (which we will talk about later) but in terms of a narrative. Be as specific as you can. Include pictures and diagrams as appropriate.
- Give Some Background About The Invention: Mention things like the objectives, what problems it might solve and how it’s different from the present state of the art.
- Invention Date: Give some context as to when you invented your gizmo.
- Disclosures: Anyone whom you disclosed the idea to. Includes dates you disclosed your idea to others (verbal or in writing).
- Records, etc.: List notebook page numbers and any relevant reports or references.
- Inventors: List the names and addresses of everyone who invented the gizmo. Have each one sign the form under their name. Make sure to date it and keep it in a binder or scan it.
Step 3: Collect Disclosures
Chances are, you have a lot of great ideas you might want to file a patent on. It is best to try and collect as many like disclosures are you can and file a broader patent. This saves both time and money. It also stimulates additional patent ideas since sorting through your disclosures periodically keeps them fresh in your mind.
For example, lets say you have a A method to spread jelly without a knife, A method to spread peanut butter without a knife and An apparatus to combine different sandwiches spreads. You may want to think about combining these three into one application that splits out the different functions into Independent Claims and Dependent Claims (more on that later).
Step 4: Research, Research, Research
You will need to do a little research for your disclosures but you should also dig a little deeper into the state of the art. That’s just a fancy way of figuring out what everyone else is up. The USPTO has a patent search (which is called PatFT) site. It’s cumbersome to deal with but offers up to the day issued patents. They have a whole other system for applications (which is called AppFT). I know, real intuitive names.
Other research avenues are trade magazines, Internet searches and technical conferences. These are all dependent on what industry you are in. So results may vary. Doing a quick Internet search on your topic plus “patents” will probably give you some good leads. A couple of other free searches are: Google Patent Search and Free Patent Search. Research is an iterative thing that never ends so making it part of your process will save a ton on lawyer search fees.
Step 5: Provisional or Full Patent?
At some point, you need to figure out if you want to file a provisional patent or a full patent. A provisional patent allows you to get a priority date for your patent without having to file the whole thing. You have up to a year to file the full application. The advantage of a provisional filing is that the format is a lot looser and it’s cheaper to file. The downside is that you have to make sure that you include everything you think will be in the full filing and hit the year deadline. Otherwise, you loose your priority date.
Step 6: Find a Patent Lawyer (or do it Yourself)
Your best bet for finding a good patent lawyer is to get a recommendation. Make sure you let them know your intention to do a lot of the leg work yourself. Once that is established, you can then work out a deal on how to handle certain aspects of the process. It is vital to establish a long term relationship since that will benefit both of you. Reiterate that you have lots of patent ideas and that this is just the start. The real prospect for continuous business will make negotiating a good deal a lot easier.
Something to keep in mind is that you can file your own patents as long as you are the inventor. In some cases, this might make sense if you lack funds. It is always better to hire a professional but there are plenty of filed patents where the inventor did it all themselves.
Step 7: Authoring Claims
Once you have a bunch of disclosures categorized, it is now time to start writing claims. Claims describe how your gizmo works and come in roughly two categories: Independent and Dependent. An Independent claim stands on its own. It should describe the invention in a way that, after reading the patent specification, some one “skilled in the art” could build it. Dependent claims depend on Independent claims and do not stand alone. This means that when you review a patent, the independent claims are the important ones. If you don’t do what the independent claim says, then you are not infringing.
Independent claims start out like
- A method for ….
- An apparatus to …
- A chemical that …
Dependent claims start out like:
- The method of claim X where …
- The apparatus of claim X where …
- The chemical of claim X where …
Claims are the most important part of a patent, so spend time understanding what you want to invent and review examples of similar patents.
Using our spreader idea, the claims might look like:
- A method to apply a viscous material to a delicate substrates that reduces the induced stress on said substrate without the use of an external application substrate.
- The method of claim 1 whereas the viscous material is jelly.
- The method of claim 1 whereas the viscous material is peanut butter and jelly.
- The method of claim 1 whereas the substrate is white bread
You sort of get the idea. What we want to do is describe the invention with independent claims and then use the dependent claims to make it more specific.
Step 8: Authoring The Specification
Once you have a good start on the claims, its time to describe your invention in more detail. That is what the specification is for. Here is the USPTOs definition and here is another one with some more detail. For our purposes, we will just focus on describing how to implement the invention and not worry about the specific sections (this is where the patent attorney comes in).
The good news about specification authoring is that you should already have a pretty good start because of the disclosure step. This is how you save money and time on these things. The specification should also include drawings, which look great on the first page of a patent.
Step 9: Meet With The Lawyer
So now you have all of your materials: Disclosures, some claims, research and a draft specification. It’s now time to get on the clock. You might have to meet with your patent lawyer a couple of times but if you are prepared, you can minimize the time and cost on this. The biggest thing time sync is getting them up to speed on what you cooked up. Doing your homework will make it go more smoothly.
The lawyer will clean up your materials and format it for submission. There will be several iterations before it get perfect. Usually, the process of reviewing and polishing creates more claims.
If you choose to do the filing yourself, it might make sense to have someone else, even a lawyer, review your submission. This review may find inconsistencies or word usage that might be awkward.
Step 10: Repeat As Needed
Once you have done a couple of patents, they get a lot easier. Get in the habit of writing down your invention ideas when you get them and follow up with a disclosure when appropriate. When you do most of the leg work yourself, you can really save money.