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…)

12.30.10 | inventions, Patent Applications, posts | Stefanie Levine

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…)

10.26.10 | Patent Issues, prior art | Stefanie Levine

What is Prior Art?

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

Unfortunately there is no easy answer to the question of prior art, particularly for those who are new to the patent field. We can start off with the understanding that a particular reference or piece of knowledge will be considered to be prior art that must be overcome by a patent applicant if the patent examiner is legally allowed to use it against the applicant to reject one or more claims in a pending application. Likewise, a reference or piece of knowledge will be prior art if it can legally be used to invalidate one or more claims of an issued patent during litigation.

The trouble with explaining what prior art is stems from the fact that everyone already thinks they know what it is. Conceptually we do not want to issue patents for inventions that are not considered new, which seems fair enough. The trouble is defining what is “new.” For now, let’s just say that prior art must be a reference of some type (i.e., a patent or a printed publication) or some type of knowledge or event (i.e., public knowledge, public use or a sale of a product) that demonstrates that the invention in question is not new. (more…)

10.4.10 | Patent Issues, prior art | Stefanie Levine