You have invented a wonderful new gadget that can advance human civilization and in the process make you rich. You want to go ahead with its development while at the same time minimize your financial risk. What do you do next? The best strategy involves following a series of steps, each step including a test: proceed if your invention passes the test, or stop and re-evaluate. These are the suggested steps:
Preliminary Commercial Evaluation: Before you spend any money you should conduct a preliminary analysis that includes the following:
- A search on Google and on the US Patent Office database to make sure that your invention is new.
- A manufacturing analysis to determine if it can be made cheaply and reliably enough to sell.
- A market analysis to confirm or deny that your invention has the potential for making money.
If you find that your idea already exists or cannot be made or sold, stop right here. Otherwise go to the next step.
Professional Patent Search: the preliminary search has indicated that no one else thought of the invention before. However be careful: if you make, sell or use someone else’s invention, you could be sued for royalties. If you try to patent an already patented idea, your application will be rejected. As an insurance policy against future waste of time and money, a professional patent search should be conducted that may uncover prior art that you have missed. This search will help define how broadly your invention can be claimed. If the claims are too broad your application will be rejected. If they are too narrow you will be denied potential royalties. If the professional finds invalidating prior art, stop right here. Otherwise go to the next step.
Provisional Patent Application: The search by a professional has found no invalidating prior art. The next step is to protect your idea as quickly as possible by filing a provisional application. You should write a description in your own words without marketing data or legalese, with each individual part enumerated in an organized and sequential manner. Providing your patent practitioner with such a description will facilitate his task and possibly reduce his fee.
Provisional patent applications are less expensive to file than non-provisional applications because they are not examined by the Patent Office. They are kept on the shelf during a period of one year at the end of which they are discarded unless a conventional non-provisional patent is filed within the year. Advantages of provisional patent include:
- Less expensive upfront
- Increase the patent’s life from 20 to up to 21 years
- Modifications and improvements can be rolled into the non-provisional application when it is filed.
- Allows the inventor to claim “patent pending” and to secure a priority filing date.
- Slightly more expensive to file a provisional followed by a non-provisional than to file a single non-provisional application.
- Increases the prosecution time by up to a year
- Not examined by the patent office and therefore offers no guarantee that a patent will be issued.
Your invention is protected as of the filing date of your provisional application. You can now manufacture it, and market it. Before a year elapses from the filing date of the provisional patent, you must decide if you want to continue.
Non-provisional Patent Application: Should you decide to file the non-provisional application, you can include in it new ideas and improvements to your invention. These additions, of course, will not benefit from the early priority date of the provisional application. A non-provisional patent provides a 20 year protection from its filing date during which you are entitled by law to exclude anyone from making, importing, selling or using your invention without your authorization.
For more information and a free consultation please contact George Levy
Patents and Ventures
3980 Del Mar Meadows San Diego, CA 92130
Telephone: 858-259-2226, FAX: 858-259-2233
This newsletter should not be construed as being legal advice. ©2011 by George Levy