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. (more…)

PTO to Effectively Extend Provisional Applications to 24 Months

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

The United States Patent and Trademark Office will soon unveil a pilot program that is aimed at trying to provide inventors with some additional options with respect to moving from a filed provisional patent application to a nonprovisional patent application. USPTO Director David Kappos wrote about this in the November edition of Inventors Eye, see Providing Inventors More Time and Options. In some circles this pilot program has at times been characterized as providing for an extension of a provisional patent application to allow it to remain pending for twenty-four (24) months.  That is not technically an accurate way to articulate what the new pilot program will do, and for those who might want to avail themselves of the soon to be announced pilot program it is worth getting a handle on some of the finer details of the proposal. The effect could look like an extension of a provisional patent application, but there are special steps that must be followed.

The Kappos Administration at the Patent Office has been criticized in some circles for even pursuing this path because it is too complicated, but such criticism smacks of a healthy dose of condescension if you ask me.  It seems far too paternalistic to believe that inventors and small businesses are not savvy enough to figure out what they want and what they need.  After all, the idea of attempting to extend the effective life of a provisional patent application was proposed to Director Kappos by an inventor.   (more…)

There is No Prior Art for My Invention

Written by Gene Quinn (of IPWatchdog and Practice Center Contributor)

I frequently am told by inventors that they have searched the marketplace and cannot find anything like their invention. I am also frequently told that they have done a patent search and cannot find anything that remotely resembles what they have come up with. While there are many reasons for not finding prior art, just because you do not find prior art does not mean that there is no prior art that needs to be considered. In fact, it would be extremely rare (if not completely impossible) for there to be an invention that does not have any relevant prior art.  Said another way, unless you have invented something on the level of an Einstein-type invention there is prior art.  Even the greatest American inventor, Thomas Edison, faced prior art for the vast majority of his inventions.

Prior art is probably best understood as information that can be used by the patent examiner to reject claims in a patent application. This information is most commonly prior publications, such as technical articles, issued patents or published patent applications. It is also possible for prior art to consist of actions, such as a sale within the United States more than 12 months prior to a patent application being filed, or public use in the United States more than 12 months prior to a patent application being file. For more on this see What is Prior Art? (more…)