The objective of this article is to provide a list of inquiries that one may want to consider if patent protection is desired for a new invention. Further, many of said inquiries will likely be echoed by a patent attorney during the invention intake process.
It must be stressed that in view of the complexity that accompanies the patent process, it is important that a patent attorney be contacted early in the process to ensure that valuable legal rights are not foreclosed due to various Applicant actions or delay in filing a patent application.
Applicable and Overlapping Intellectual Property Protection | Geography
- What business purpose would a patent grant serve (e.g., obtain a technological advantage in the marketplace, procure capital for expansion, etc.)?
- What type of patent application is applicable (design patent, utility patent, or plant patent)? Please note that multiple forms of patent protection may be available.
- Does another form of intellectual property protection (e.g., trademark, copyright, etc.) overlap with the appropriate type(s) of patent protection?
- Is international patent protection desired?
- If foreign protection is desired but additional time is required to determine which foreign markets will yield demand/profits or if the Applicant would like to delay major costs, has a Patent Cooperation Treaty (PCT) patent application been considered?
Patent Procurement Costs
- The patent process requires a substantial monetary commitment as there are a variety of costs associated with patent preparation and prosecution, including: government/uspto fees, attorney fees, foreign associate/translation fees (if foreign protection is desired), patent maintenance fees, etc. Has an adequate budget been allocated to cover these costs?
- If an organization is experiencing budgetary constraints, has a provisional patent application been considered to delay major costs?
Invention Development
- Have drawings been drafted which capture the various embodiments of the invention?
- Has a prototype been constructed?
- Does the invention presently solve the Inventor’s intended problem?
- Can the invention be changed/improved in some way to solve a similar problem?
- Can the invention be changed/improved in some way to solve a different problem?
- Are there any desired future improvements for the invention?
- What technology areas may the invention be utilized within?
- Can one envision any other uses for the invention beyond the current intended use(s)?
- Have alternate materials for each of the various components/items been considered?
- Can the inventions intended solution still be achieved with fewer components?
- Which components are absolutely required for the invention to achieve the intended solution?
- Have all commercial embodiments of the technology been considered? To provide worthwhile legal rights, the patent application should include at a minimum all commercial embodiments of the invention for which legal protection is desired. Failing to include all embodiments in the initial patent application may foreclose an Applicant from obtaining protection later for certain features in certain instances.
Informal Applicant Initiated Product and Patent Search
- Has an informal search of existing products and patents been conducted? If so, one should become aware of the USPTO’s disclosure requirements.
- For a product search, have the following resources been reviewed: internet, catalogs, businesses which would likely sell the product, trade shows, etc.?
- For a patent search, have the following resources been reviewed: Google Patent Search, USPTO Patent Full-Text Database, EPO Patent Search (esp@cenet), etc.? It should be noted that even if a “product” (the subject invention) does not appear to be commercially available, a patent/patent application publication may exist which covers the invention.
Marketplace/Competitor Analysis
- Who are the Applicant’s competitors for the subject invention?
- Is the market saturated with similar items or does the invention enjoy a first-mover advantage?
- Is the Applicant aware of any products which are similar to the subject invention?
- How is the invention an improvement upon existing technologies?
- What are the specific novel features of the subject invention?
- May conventional/known technologies be combined to arrive at the subject invention?
- Can the Applicant anticipate a competitor employing a work-around to the subject invention? As it is possible for a competitor to obtain an “improvement patent” upon an invention owned by another, it is critical for an inventor to fully develop their invention to thereby anticipate any work-arounds that a competitor may employ to avoid infringement of the patent. Although various statutory requirements require an inventor to fully describe and set forth the “best mode” of their invention (e.g., see 35 USC 112 (enablement/written description/best mode).), it is critical for an inventor to look beyond actual commercial embodiments and view their invention more expansively to obtain a patent grant which will satisfy their business objectives and provide the greatest legal protection.
Document Inventive Activities
- Have inventive activities been documented (e.g., maintaining an inventor notebook)? Throughout the whole invention process, the Inventor will want to document all of their inventive activities.
It must be stressed that valuable legal rights may be lost upon various actions (or inaction) in the context of the patent process as there are deadlines for filing a patent application. For example, the United States provides a one-year “grace period” for filing a patent application after a public disclosure (public use/sale/offer for sale/etc. which includes marketing the invention/conversations with others/public experimentation unless additional steps are taken/etc.). Conversely, nearly all other countries require that a patent application be filed to prior to any public disclosure otherwise the Applicant is foreclosed from obtaining patent protection. Further, it should be noted that the USPTO provides a comprehensive resource for filing a patent application: A Guide to Filing a Non-Provisional (Utility) Patent Application.
As mentioned previously, it is critical that a patent attorney be contacted expediently if patent protection is desired to ensure potential valuable rights are not lost.