SOLO INVENTOR BACKGROUND INFORMATION

The following is some basic background information regarding patenting and the patent process. Please review all of this material carefully before contacting me. Many questions that solo inventors have can be answered here. Thank you.

I. Prior Art Search

In order to avoid spending a lot of money attempting to patent an invention which has already been invented by another, it makes good sense to perform a prior art search. In addition, the results of a prior art search are very useful in drafting broad claims which are still distinguishable from the prior art references.

Most professional searchers charge from $300 to $1,000 to perform a patentability (prior art) search at the PTO. My hourly rate is generally too high to make Patent searching economical for an individual inventor. However, I can perform a preliminary "on-line" search for approximately $300. I can retain a professional searcher to perform a more detailed search if you require.

Due to recent increases in search prices, many inventors are either forgoing Prior Art searches altogether, or performing their own Prior Art search or on-line Prior Art search. Click here for tips on searching "on-line".

If you are strapped for cash, you may wish to start your own prior art search. What you may lack in expertise in this field, you may make up in the amount of time you have available to give to the task. In addition to the Patent & Trademark Office in Arlington, Virginia, there are a number of regional libraries throughout the U.S.

Generally, it is best to start with the Index of Classification, an alphabetical index of the numbered classification system used by the Patent Office to classify patents. Next, look in the Manual of Classification and see if the definitions of those classes/subclasses appear to be related. A particular subclass may be more related to your invention than another. The library staff should be of some help to you.

After finding a few promising classes and subclasses, search the patents in those subclasses, looking for anything remotely similar to your invention. Each patent has on its cover its own classification, field of search, and references cited during prosecution. Thus, each patent can branch out your search further. You can spend an indefinite amount of time at this task, however, generally the best references are found within the first couple of hours of searching, and subsequent finds are merely cumulative.

At the Patent Office, we have the additional resource of the Examining Corps which is made up of Examiners who are generally very helpful to searchers and inventors. Some Examiners maintain their own art collections, and the Examiner's search rooms also contain a collection of foreign art. The Examiners can refer you to specific classes or subclasses, or refer you to someone who would know further information.

II. Utility Patent Application Costs

In order to give you a more concrete idea of the cost of preparing and prosecuting the application for your invention, I need detailed information regarding your invention. From such detailed information, I can prepare a price quotation for filing a provisional and/or formal application as well as a good faith estimate of prosecution costs. This five-page price quotation provides you with an idea of overall costs, as well as the cost of getting an application "on file".

This written cost quotation covers the cost of preparing a provisional and formal patent application and filing them with the Unites States Patent and Trademark Office. Patent prosecution is an open-ended process and thus I cannot guarantee a fixed price for the entire process. In order to help you better manage the costs, however, I will agree to prepare up to two responses to Office Actions for a fixed fee. Note that the relationship with your Patent Attorney can extend for 3-5 years or more, depending upon the nature of the invention and the course prosecution takes. Thus, when consulting any attorney, be sure to get a written quote "up front" for most of these services. Verbal price quotations of "a few thousand dollars" have resulted in many hard feelings between inventors and attorneys.

Our "standard" minimum fee for preparing and filing a formal patent application is $4,500.00. In many circumstances, I will prepare cases for less than this amount, provided the inventor provides a very detailed description of the invention, drawings, and the like. Preparing a detailed description of your invention is probably the best way you can save money when shopping for an attorney. The more work you do, the less your attorney will charge you. As a courtesy to solo inventors and small clients, we try to divide the overall costs between a provisional and a formal application. Thus, you can file a provisional application for roughly half the overall costs and within a year file the formal application for the other half. We generally require 50% advance on fees and services, with the balance being due upon filing of the patent application. In some limited circumstances, I will agree to accept the balance in a limited number of monthly installments under a written agreement.

III. Statutory Bar

Under 35 USC §102(b), an applicant has one year from the date his invention is first offered for sale or publicly disclosed to file a patent application. This rule, unique to the U.S., is the most generous in the world. Foreign countries require that no public disclosure take place before filing. It is possible to file a foreign application from a U.S. application. However to do so, the U.S. application must be filed before any public disclosure or sale. Our Patent Process Flowchart attempts to illustrate this concept.

Patent prosecution is a very forgiving process in all aspects except for the "statutory bar." Thus, if you have any questions or comments concerning this aspect of patent law, please feel free to contact me. I do not charge for telephone consultations with inventors. I would prefer that an inventor call me if he or she has a question rather than remain silent for fear of incurring legal charges.

Please also note that your U.S. patent application must be on file within twelve months of the filing date of any provisional patent application. If you have already filed a provisional patent application, your U.S. patent application must be on file within twelve months of the filing date of your provisional patent application, or you lose your priority to the materials in the provisional patent application.

Although our U.S. patent laws protect the rights of the "first to invent," it is still a good idea to get your patent application on file as soon as possible. Over 90% of all patent interference proceedings are won by the party with the earliest filing date. Moreover, if you delay too long, you may be deemed to have "abandoned" your invention.

IV. Foreign Filing

Foreign countries require that no public disclosure take place before filing. It is possible to file a foreign application from a U.S. application. However to do so, the U.S. application must be filed before any public disclosure or sale.

You may file foreign patent applications in countries which are signatories to the Berne convention by claiming priority of your U.S. application within one year of the filing or domestic priority date of your earliest U.S. application. As an alternative, you may elect to foreign file through the Patent Cooperation Treaty (PCT). Within twelve months of the domestic priority date of your earliest U.S. application, you may elect to file PCT. The application is then filed through the PCT organization and searched and examined in either the U.S. or European Patent Office, at your election. The PCT examination is non-binding. After another eighteen months, you may then elect to prosecute "national phase" applications in designated PCT countries (including the European Community).

The advantage of PCT prosecution is that you delay the expensive process of national phase prosecution for up to 36 months. After that time period, you may have a better idea of which foreign countries you may wish to file in. Prosecution in foreign countries is very expensive and may provide only limited patent protection, and thus I do not recommend it for solo inventors or start-up companies unless special circumstances warrant such expense.

Please note that in order to preserve your foreign filing rights, you must get your foreign or PCT application on file within one year of the domestic priority date of your earliest U.S. application. What this means is that the deadline for filing foreign or PCT cases is within twelve months of the filing date of your earliest U.S. application, including provisional applications. If you have already filed a provisional application, you have twelve months from the date of filing that provisional application to get your foreign application on file.

V. Licensing and Selling Your Idea

I hope that your expectations of the patent system are realistic. Some inventors believe that a patent is a license to print money, which of course is not true. While it is true that it is difficult to license or sell your ideas to a large company, it can be done. I have interviewed a number of successful inventors and they have given me the following hints:

A. Build a Working Model. It is difficult, if not impossible, to market an idea which exists only on paper. It is much easier to excite the imagination of a potential licensee with a working prototype. In addition, a prototype proves the concept will work.

B. Protect Your Idea. Many companies I have dealt with will not even consider an outside idea unless it is patented or a patent applied for. As one corporate attorney told me, patenting an idea shows that the inventor is serious enough to invest in his own idea.

C. Be willing to License or Sell your Idea. This may sound obvious, but some inventors become reluctant to part with their inventions, which they see almost as their children. In addition, some inventors become so enamored of the process of negotiation, that they are reluctant to let go. In addition, play it straight with potential licensees. Don't try to leverage your results by threatening to license your invention to the competition.

D. Be Willing to Help the Licensee Make Money From Your Invention. Expecting a lot of cash up front for an idea is generally unrealistic. A licensing agreement based upon a percentage royalty is a win-win situation for both inventor and manufacturer. A manufacturer is interested not only in licensing patents, but also the "know-how" and "show-how" of your idea. A good licensing agreement may also include a consulting contract. Be prepared to help your licensee make money from your idea - that is why they are interested in licensing it.

E. Keep Expectations Reasonable. Every inventor thinks his or her idea is a "million dollar idea." Unfortunately, the worth of an idea is what the market (e.g., manufacturers) are willing to pay to license it. A common mistake is to assume that the worth of an idea is equal to the amount of money and time you have invested in it. Pick a reasonable price and be willing to negotiate.

F. Be Prepared to Market the Invention Yourself Most licensees are not willing to buy into an invention unless it has a proven track record. Unfortunately, this means in many circumstances, inventors must make and sell product themselves. In addition, there may be companies willing to sell your product (e.g., retailers) but are not interested in manufacturing it. Making and selling product is the hardest part of the invention process. Very rarely, however, do companies buy a “raw” idea from an inventor.

F. Keep on Inventing! The most successful inventors rarely made all of their money from one idea, but rather had a panoply of ideas and inventions. Some make money, some do not. Inventors who put all of their efforts into one invention or idea are seldom successful and typically end up in protracted, bitter, patent litigation.

VI. Documenting Your Invention

To preserve your rights as the "first-to-invent", it is a good idea to keep track of all documentation created when developing your invention. A signed, dated, and witnessed laboratory notebook with sequentially numbered pages is ideal. However, as a former lab technician, I realize that such notebooks are very time consuming and difficult to keep. Get in the habit of initialing and dating all of your sketches, notes, and the like. If you should get into a situation where someone else claims to have invented before you, such notes may prove your initial conception date.

Prepare an Invention Disclosure Document, including a description of the invention and drawings, sign and date it, and have a 3^rd party witness sign and date it with the notation “reviewed and understood by me”. If possible, have these signatures notarized as well. This is the greatest protection you can have. Mailing invention disclosures to yourself through the mail proves nothing – the Post Office will deliver empty unsealed envelopes.

VII. Provisional Applications

If the prospect of filing a formal U.S. patent application seems a bit too expensive at the present time, a provisional application may be helpful. A provisional application may be filed for a $80.00 filing fee. The application contains a description of the invention and drawings but no claims. It is not examined, but rather filed away. Within a year, you may then file a formal U.S. patent application, claiming priority under 35 U.S.C. §120 from the provisional application. The formal U.S. patent application will then have an effective filing date of the provisional application.

The provisional application should support all of the materials to be claimed in any subsequent formal U.S. patent application, and thus must be enabling and disclose best mode. For this reason, I do not suggest that a client file a provisional application pro se. However, for a nominal fee, we can review, revise, and file a draft prepared by yourself. In doing so, we can insure that best mode and enablement requirements are met and remove any possible file wrapper estoppel problems. The cost of preparing such a provisional application depends upon the extent and nature of the materials prepared by yourself.

In view of the recent Pfaff v. Wells case, provisional applications can also be used as a powerful tool to secure the earliest filing date possible for your invention. Although we are technically a "first-to-invent" country (as opposed to the "first-to-file" standard used by the rest of the world), nine out of ten interference proceedings are won by the senior party (the one with the earliest filing date).

In addition, an earlier filing date will help your application pre-date a greater body of "prior art". Most law firms (such as ours) are busy with a number of cases, and it make take several weeks or even a month or two for use to prepare and file a formal application. An early filed provisional will afford you an earlier filing date and also allow us to prepare the "formal" application with you at a more relaxed, contemplative, pace.

VIII. Developing Your Invention

As a patent attorney, I can prepare and prosecute a patent application for you before the United States Patent and Trademark Office. However, I do not specialize in developing or promoting inventions nor licensing and marketing inventions. The patent process is so complex that I believe it is very difficult for one person to be an expert in both patent prosecution and invention marketing.

Thus, while I can get a patent for you, I cannot provide much assistance in the area of marketing and promoting inventions. You should be very careful when approaching invention marketing companies. Most are fraudulent and will take large amounts of your money and provide very little in return.

One good resource for inventors is Inventors' Digest. I highly recommend subscribing to this publication as they do not take advertising from fraudulent invention brokers. Their telephone number is area code 1-800-838-8808. They do take Master Card and VISA over the phone. I highly recommend this publication, as it appears to be a good resource for inventor information.

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