Grady K. Bergen
Scientist in Lab

Have a new idea or invention you want protected? If you are like many who have never been involved in the patenting process and are serious about protecting your ideas, you probably have many unanswered questions.

"Do I need to conduct a patent search? Can I disclose or commercialize my invention without losing my right to obtain a patent? What is a design patent and how does it differ from a utility patent? What is the first thing I should do to protect my idea?" The list goes on and on.

While many people may have some idea or have received advice about the answer to these questions, they may be mistaken.

First of all, patent laws have recently changed significantly and these changes may be detrimental to the protection of your invention. If you are not already aware, the Leahy-Smith America Invents Act was signed into law by President Obama on September 16, 2011. Of the various provisions that were included under this Act, probably the most significant was the change to the U.S. patent system from a first-to-invent system to a first-to-file system and a change to the one-year grace period that allowed certain activities to occur prior to filing a patent application.  This applies to all patent applications filed in the U.S. on or after March 16, 2013.

So what does this mean for you as an inventor?

First, under a first-to-file system, whether you invented something before someone else becomes irrelevant. What matters under the first-to-file system is that you filed a patent application for your invention before anyone else. Records or proof of conception, such as an inventor’s notebook, therefore are immaterial for purposes of establishing your right to obtain a patent over someone else who has derived the invention independently from you.

Secondly, the one-year grace period that allowed certain activities to occur prior to filing a patent application has been modified under the Act.  Now, under the current law, patentability is lost if before the effective filing date of your invention one of the following events have occurred:

•  The invention was patented or described in a printed or electronic publication;

•  The invention was in public use;

•  The invention was on sale; or

•  The invention was otherwise made available to the public.

Inventor Product 

If one of these events has occurred, however, don't lose heart quite yet.  There is an exception to the above under the Act.  Patentability is not lost if one of the above events constitutes a disclosure made by you as an inventor that occurs within a year or less before the effective filing date of a patent application for your invention.  Therefore, if one of these events was caused by you, or even caused by someone that may have obtained the disclosed subject matter from you, it may constitute a disclosure that would allow you to still file a patent application for your invention without losing your patent rights.

While there is an exception for activities that constitute disclosures by the inventor under U.S. law, many foreign countries require you to have a patent application filed before any non-confidential disclosure or other activities have occurred if you intend on seeking patent protection outside the U.S.  Therefore, it is usually good practice to keep your invention confidential or secret until you have filed a patent application.

So what does this all mean?  Well, if you intend on filing a patent application for your invention there are some important things you need to do.  These IMPORTANT THINGS are the following:

• DO keep your invention confidential and secret;

• DO NOT put your invention on sale;

• DO NOT describe your invention in any publication;

• DO NOT make a public use of your invention or otherwise make your invention publically available; and

• DO file a patent application for your invention as soon as possible.

Finally, BE WARY.  There are those that may offer products and services for developing or protecting your invention that are either worthless or that ultimately provide very little, if any, value.  In many cases they may even be scams.  Many of the invention companies you see advertised fall in this category.  They may conduct a search that indicates you have a novel invention but you may receive little if anything of further value from them.  The U.S. Patent Office has published literature regarding these scams and provides information on how you can report them should you become involved.  

Additionally, be wary of products or services that are offered at such low costs that they sound too good to be true. Often the low cost is an indication of the quality of the product or service you will receive.  An example of this is the patent drafter providing a very short and broad disclosure of your invention that just covers the basic features as you may have described them to your patent attorney.  It is a misconception by many that providing only a general or broad disclosure in the patent application results in a broad patent.  Patent applications, particularly for very simple or basic technology, that have such short, broad or general disclosures that do not provide any in-depth details regarding your invention often have a very difficult time getting approved, if they even are approved.  After the patent application is filed, it is usually too late to go back and add the necessary detail that would have allowed you to overcome a rejection of your patent application.  A good patent attorney should assist you in fully fleshing out your invention so that specific and detailed information and alternatives, such as potential future alternatives, are included in your patent application before it is filed so that it has a better chance of being approved and provides adequate coverage for your invention.

These are just some of the issues and questions related to patents that might indicate that you need to consult an experienced patent attorney or intellectual property law specialist.