13. WHEN TO GET A PATENT|
Many inventors think they should apply for a patent soon after they think up a good idea for a new product. This is often a mistake. The most ideal time to get a patent, if one only considers getting the most perfect patent, is generally after a lot of research and development has been done on the idea. Patents have very specific claims describing the invention. Most ideas change considerably during the process of development.
In actual practice there are other considerations. If there are a lot of competitors working on the same idea, an early filing may be better. Often money needs to be raised and it is better to get an early patent application so the potential shareholders can study the patent details. At other times it is unclear whether a patent will be granted. Companies want to have a valid patent in their possession before plunging into financial arrangements. In the US an inventor can logically hold off longer before patenting than in other countries because of the first to invent vs first to patent rulings.
14. FIRST TO PATENT OR INVENT
In the United States, the first person to invent an idea has the rights to the patent. This applies to anyone in the world that eventually plans to obtain a US patent. In most other countries including Canada, it is the first person to patent the idea that has the rights to the invention.
While in some ways the US system seems fairer to the inventor, it creates a documentation nightmare for the inventor and can result in costly court battles to prove who the real inventor is. Many experts suggest that the US system results in too many complications and should be changed. The US system also results in complications simply because it is different than what most countries in world use.
Ideally any inventor that plans to eventually obtain a US patent should keep accurate notes while working on the invention. Experts suggest keeping careful records in bound notebooks or separate pieces of paper. Each major entry in such a notebook must be dated and signed by a witness. Computer files should be printed out and dated and signed as well. Preferably these notebooks should be dated and signed every day by a witness.
While accurate recording of ideas sounds good in theory, it is hard for most inventors to maintain such a detailed record of the inventions and to find someone to witness the notebook every day. I have never seen such a detailed recording of ideas in any of the companies I have worked for. In a company where several people are working on the same project, a compromise might be for each inventor to at least document and date the ideas themselves. Periodically all the notes could be combined into a single report and each piece of paper dated and signed at this time. While this is inferior to the daily signing, it is better than doing nothing at all.
The US Patent office also had a disclosure program. Inventors could periodically mail sketches and descriptions of their inventions to the patent office, where they are dated and filed as evidence. The Disclosure Document Program was eliminated effective February 1, 2007. Many inventors have heard they should document their invention and then mail it back to themselves, then leave the envelope unopened. It is believed that the postmark date will verify the date of the invention. It appears that the law regards such a post office method as practically worthless and definitely inferior to having your documents dated and signed by a witness.
It is important that the true inventors are named on a patent. Sometimes companies who apply for patents on behalf of their employees conveniently forget some of the true inventors. This is especially true if these inventors were consultants that are no longer working on the project. It appears that these unnamed inventors could legally have the patent invalidated.
15. PROVISIONAL PATENTS
A provisional patent application is a short version of a US patent application which can be used to establish a year early filing date for a regular patent application. The fee for this provisional patent is quite low. Patent attorneys do not favor applying for the provisional patent in most cases. They have valid reasons for this objection, however there are benefits in using the provisional patent for the more educated inventor.
Patent attorneys feel that it is often wiser to proceed with the regular patent application instead of using the provisional patent. I can imagine what is going through a patent attorney's mind when they hear the word provisional. They probably start making a mental checklist of all the things that are often missed in such an application--the patent search--comparing claims--opinion of patentability--no examination. A quick and dirty provisional patent application can give many people a false hope. For a patent attorney to properly check into an invention and prepare the provisional patent application costs quite a bit of money. In the end it is often better to apply for the regular patent. Changes can also be made to a regular patent application in the first year after filing. So the purpose of the provisional patent is basically to save money.
Provisional patents are more of an advantage for well educated inventors. Such inventors would have done several patent searches, compared claims, and checked the competition carefully before writing up their own provisional patent. The educated inventor would also know how to properly describe and draw up the application. Such educated inventors often don't have the skills to write up the regular patent application, but have enough knowledge to write up the provisional patent. In these cases the provisional patent can be a cheap way of getting early patent protection. It allows a manufacturer one year of protection to assess the invention's commercial potential. Patent pending can be used. It enables immediate commercial promotion.
According to "Patent it Yourself", there is one large downside to the provisional patent. One can wait up to a year after filing a regular US patent application before filing for foreign patents. Usually it is known within a year whether the US patent will be granted. This is good, because who wants to incur the expense of filing for an expensive group of foreign patents if the US patent application will not be granted. When a provisional patent is used, there is no one year grace period to file for the foreign patents. The decision to file for foreign patents must be made one year after filing for the provisional patent.
16. SHOULD YOU GET A US OR OTHER PATENT?
The US patent is a very sought after patent. This is because getting a US patent often gives companies the biggest bang for the buck especially if the US is one of their target countries. Some companies that sell internationally only apply for the US patent. They hope that if other competitors are prevented from selling an identical product in the US, they might decide not to manufacture the product at all.
In Canada, few Canadians apply for a Canadian patent before the US Patent. This is partly because it takes many years to obtain a Canadian patent after filing an application whereas it usually takes less than a year to get a US patent. Getting a patent approved in less than a year is desirable if foreign patents are going to be applied for. Application for other foreign patents must be made within a year after a US patent application is filed. Even so there may be some advantages in Canadians filing for a Canadian patent first.
Often foreign patents are applied for in a package deal that covers most major industrialized countries. The cost to obtain such a package and the maintenance fees are extremely expensive.
17. INVENTION AND PATENTING PROCESS
I would suggest 11 typical steps in the total process of inventing and then obtaining a patent. (1) think up basic idea (2) do an Internet patent search (3) research the idea through library, Internet and businesses involved in the subject area (4) use services of a development consultant if this is not your main profession (5) do more complex computer patent search (6) develop the rough idea (7) do a formal patentability and infringement patent search through patent attorney or agent (8) review patentability and infringement issues with the patent attorney and development consultant (9) use development consultant to suggest new twists to invention to weave through claims (10) proceed with final development based on patent issues (11) write up the patent yourself or use a patent attorney together with development consultant to write up entire patent application or check claims.
18. COST TO GET A PATENT
It is legal to write up and apply for your own patent in certain cases. For example Canadian's or American's can write up and apply for a US patent. The cost of the patent will be as little as the fees in the country that is being applied in which are far less that the total fees if making an application through a patent attorney.
When a patent attorney is used, the fees are considerably higher. Count on paying a minimum of US$8000 plus about US$1500 for the patent search. The fees paid to the attorney often include the drawings that need to be done.
19. WRITING YOUR OWN PATENT
It is often hard for novices to understand what is being claimed in an existing patent. It is even harder to understand what needs to be claimed when writing a patent. I only recommended that you write your own patent if you are thoroughly familiar with the process.
Use the steps in Chapter 17 to work through the invention and patenting process. When you get to writing the patent, the most complicated part will be crafting the claims. The difficult thing in a patent is to reduce an idea into tangible words. The claims at the end of a patent form a logical legal definition of the idea. These claims are almost like a sexless family tree where there is a type of grandperson claim who had children claims who in turn had other children claims. These claims can also be related to each other like relatives such as uncles, aunts and cousins.
For many inventors, doing the patent drawings poses a formidable challenge. There are certain drawing standards that the patent office has which can be obtained from their website. Though it not required, most patents have many isometric drawings. This is type of 3 dimensional projection drawings that makes it easier to visualize the parts real shape. Unfortunately this type of drawing is hard for many inventors to do. Modern solid modeling computer programs can easily create these type of drawings. Development consultants in mechanical fields often have this type of computer program. Patent attorneys use services of draftsmen that are familiar with doing patent drawings.
20. USING A PATENT ATTORNEY
There is no legal reason for patents to be hard to understand. Plain language can be used. Many Patent attorneys are however used to a tradition of legalese. Often the more familiar a patent attorney is with the subject of the patent, the clearer will be the patent.
Patent attorneys often find it difficult to fully understand a complex invention. It may not be exactly their field of expertise. They feel compelled to keep their fees reasonable, and so only have about 40 hours at most to complete an entire patent application.
It is up to the inventor to properly disclose the invention to the patent attorney as well as check whether the patent wording sounds reasonable. On one patent, I made suggestions for five rewrites and in the last rewrite spent a whole afternoon with the patent attorney, going over paragraph after paragraph of wording and making major changes. Patent attorneys are not usually very happy when this happens. If they quote on the patent application, their fee structure simply doesn't cover major changes such as this. There is however no point in filing an imperfect patent. If you need to make changes, try and limit the corrections to essentials and not just what sounds best to you. Be professional and use your time with them in an efficient manner. Otherwise you could have a pretty cranky patent attorney on your hands.
21. PATENT SEARCHING
Twenty years ago, patent searches were almost always done through patent attorneys. This made them expensive and so were generally put off till the time of the patent application. This type of search could be classed as the manual patent search. In this type of patent search, the patent attorney hires the services of a company that has agents, patent attorneys, or lay searchers working in the central patent office such as the US Patent Office. For this price, the searchers will spend at most a half day looking through patents and other related literature. They generally only provide the five patents closest to the new invention. The patent attorney looks through these patents, compares them to the new invention and writes up an opinion of whether the new invention is patentable. This type of patent search costs a minimum of about US$1500. Such a search is generally only done for the purpose of determining patentability. They are not often done for finding information, determining whether the invention will infringe on a current patent, or how to improve the coverage of the invention. The patent attorneys usually feel it is only their job to determine if they could write up a valid patent for their client.
The manual patent search is expensive but it is the most reliable method of checking whether an invention has been patented or disclosed to the public before somewhere in the world. Presently there is a lot of patent information on computer databases, but none of them go back to the very first patent. Only the physical patent records in the central patent offices do.
Even though this search is expensive, it is not as thorough a search as is done in the regular patent application. It is true that searchers try and check previous domestic and foreign patents as well as product literature in the search, but they have a limited time to search all the records. But even the regular patent application does not involve a total search of all foreign patents and all technical literature sources.
Even twenty years ago there were some alternatives to doing the manual patent search through the patent attorney. It was possible for people to travel to the central patent office themselves and do the search. Especially in the US, there are many patent depositories that receive all patents that the patent office issues. They are however only filed by patent number and not by category and so searching is difficult. There is an advantage of using such a depository as opposed to just sending for the patent copies through the mail. Patents have previous related patents cited. In the library one can find a first patent, then check 5 new references which in turn yields 5 new references each. This can all be done in one day as opposed to repeatedly sending for patents through the mail.
Twenty years ago a preliminary search was often conducted by looking through abstracts in books and on microfilm. By looking through these, one could find similar patents and send to the patent office for copies of the full patent. It could take weeks of looking through such abstracts to come up with a useful list.
In the last two decades, patent abstracts have been put into computer databases. More recently the full text and images of the more recent patents have been put into computer databases as well. At first these databases were expensive commercial ones with stiff fees for accessing them. A person could pay to have a search done on the database for about 20% of a manual patent search. Such a search is still superior to many searches on the Internet because these commercial databases have more extensive information about patents than the Internet type.
Just a few years ago, recent patents have been put on the Internet. Many major patent offices now have many years of full-text and images of patents available for free on the Internet.
In spite of being able to download many years of patents for free on the Internet, many patent attorneys and other professionals still order paper copies from the patent offices. It takes a long time to download each file and print it out. Copies of older patents still need to be ordered.
It is usually best to use all three searching methods at different times when developing a new product. For example it is often necessary to obtain copies of about 50 to 200 patents during the course of finding information, checking patentability, infringement, and coverage. Most of these patents should have been obtained long before seeing the patent attorney for the first time. The search through the patent attorney should really be the final check to determine patentability.
22. EUROPE'S NETWORK OF PATENT DATABASES
The espacenet is Europe's network of patent databases. It has free US full-text and images of patents available in high quality Adobe Acrobat format. Of course there are also European and World patents available.
23. US PATENT TRADEMARK OFFICE
The US Patent Office website has free full-text and image patents from 1976 to present. The full-text of the entire patent is searchable. Patents are available in TIFF format which requires that you install a special compressed TIFF viewer on your Internet browser.
24. CANADIAN PATENT OFFICE
The Canadian patent office has free Canadian full-text and images of patents in high quality Adobe Acrobat format.
25. SERVICES SUCH AS PATSCAN
Patscan is a fee-based patent and trademark search service of Patex in the Vancouver BC Canada area. Before the days of free Internet patent databases, services such as Patscan were the only way the general public had to receive information from online patent databases. Even a few years ago, the commercial patent databases that Patscan used such as DIALOG, ORBIT, and STN referenced patents fifty years back, while the Internet databases only went back 20 years.
There are still reasons for Patscan or similar services to exist. Inventors may not be computer literate, and those that are, may not be very familiar with the various aspects of searching. Patscan does not use just one, but many patent databases. In this business, knowing where to look is worth quite a lot. The total bill for an average patent search at Patex is less than a manual patent search. If doing such a search prevents one unnecessary manual patent search, it is worth the money. Busy professionals should use the Patscan type of service to do the first patent search before the start of development. Inventors who are knowledgeable with Internet patent searching should use the Patscan type of service to double check their search. Only one day of wasted effort can already justify paying for such a search.
The Patex site has lots of links to other patent information. Though it is located in the Vancouver area, Patex has clients worldwide.