Invention to Patent: The Pitfalls, Perils and Process


The following was written by Gene Quinn, of IPWatchdog and Practice Center Contributor.

So you have an idea and want to get a patent? There are a number of things that you need to know about the invention and patent process that can help you focus your efforts and know what obstacles lay in front of you.

The first thing to know is that you cannot patent an idea. Many people will have great ideas, but will not be able to put that idea into a package appropriate for a patent because there is no invention, only a concept. To be sure, the idea is the all critical first step in the invention process. After you come up with the idea or concept you now need to put together a game plan on how to carry that idea through. The idea and game plan together form what the law calls conception. Conception is an important concept in patent law because in the United States it is the first person to invent that CAN ultimately receive the exclusive rights on an invention.

I capitalize, bold, italicize and underline the word “can” for a specific reason.  There is a tremendous misconception among some inventors that merely being the first to invent guarantees that they will be able to receive the patent ahead of all others.  This is terribly incorrect and almost certain to lead inventors to make decisions that will compromise their ability to receive any patent.  First, you absolutely will need legally admissible proof of what you invented and when you conceived, which many if not most inventors will not have.  Second, even if you are the first to invent you could be statutorily barred from receiving a patent if anyone (including you) used the invention publicly for more than 12 months before a patent application was filed, or anyone (including you) published information about the invention more than 12 months before a patent application was filed.  In a nutshell, inventors who lie and wait believing they were the first to invent and can swoop in later will find that their lack of understanding of the patent laws has almost certainly worked to prevent them from receiving a patent.

Once you conceive (idea + game plan) you will need to be diligent and not let any grass grow under your feet as you move forward toward defining and experimenting with your invention. Generally speaking, conception without diligence can cause the first person who invents to lose the right to the invention assuming someone else invents after you but files their patent application first. So, the moral of the story is once you have your idea and the game plan move swiftly. The law realizes that so-called “garage inventors” cannot quit their day job, but the law will also require proof that you are consistently moving forward and not shelving the invention for periods of time in favor of other endeavors.

This leads to another important consideration, which is documentation and proof. In some cases it is necessary to for an inventor to be able to prove they were working on their invention in a diligent fashion. It is important for you to understand that the law will not accept the word of the inventor alone. An inventor’s testimony is considered inherently unreliable. If, however, you have corroborating evidence to support your testimony, the picture painted will be strong and courts will listen. So what you want to do is document your work on your invention. This is critical for many reasons, not only to demonstrate diligence if necessary. It is important to know, however, that simply saying that you took days off from your job to work on the invention is not enough, as the inventor of the laser — Gordon Gould — found out.  You could have just as easily gone to the movies. If you purchase things from Radio Shack or Home Depot, keep your receipts. Also try and keep a regular schedule. If everyone you know can testify that you worked in your workshop for an hour or two every night after dinner, that could be helpful.

Perhaps the most important thing you can do is to keep an invention notebook! The invention notebook should be like a diary of what you did and tried and when and how it went and what you are thinking about doing and trying and why. Be as complete and specific as you can be. One thing that we know and the law accepts is that inventors will usually document everything they do and try. This is because there is no way to reliably remember everything you did, so most who are inventors will write things down so they can keep things straight in their head and can know what they tried and what happened, etc. This invention notebook is very important, and can be the proof you need, as well as be tremendously useful to keep your thoughts in order.

Read Gene Quinn’s full article here.

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One Response to “Invention to Patent: The Pitfalls, Perils and Process”

  1. Hello, I was wondering how patent law applies to digital products. Since code can be manipulated and changed so easily, how does it apply to software?

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