While provisional patent applications (PPAs) can be filed with minimal expense, PPAs need to be converted to a utility patent application within a year for the invention to be protected as an issued patent.
You can file the utility application without a prior PPA filing. Alternatively, if you filed a PPA earlier, you can convert the PPA into a utility application by filing the utility application within one year of the PPA filing and claiming the priority date of the PPA. If properly claimed and the PPA has sufficient details as in the utility application, the effective date of the utility will be the filing date of the PPA even though the utility is filed months after the PPA.
Table of Contents
1.1.2 Search for prior art.
22.214.171.124 DIY patent research
1.3.1 Consultant’s Agreement
|1. Evaluate the Commercial Potential of Your Invention.|
2. Document your invention in detail.
3. Search for prior art to help you assess novelty and draft the application appropriately
4. Perform a Thorough Patent Search.
5. Identify inventorship.
6. If joint invention, get a formal agreement on how ownership/control of the patent is exercised
While you can use electronic records as inventor’s notebooks, the golden standard is still a bound notebook with consecutively numbered pages. You use this inventor’s notebook to detail when you envisioned your invention and when you started constructing it.
This is important because inventor’s notebooks, along with corroborating evidence, have been central in proving who was first to invent. Even with the first-to-file system, inventor notebooks are still important to show derivation.
A typical lab notebook will include such items as:
After each entry, you make in the notebook, be sure to insert the date you made the entry and sign it. Entries should be chronological and made as soon as you complete each step of the invention process.
Separate print-outs, photos, and other documents should be permanently pasted into the notebook. You should also write a caption describing what the document is, along with dating and signing it.
Additionally, be sure to have a trusted witness sign each entry you make in the notebook. Again, this is helpful if someone brings a suit. Though you only need one witness, it’s preferable to have at least two just in case one is unavailable to testify later at trial if that’s necessary. The witness should be knowledgeable about the invention’s field because he/she must testify that he/she understands what’s written in the notebook.
It is recommended that witnesses also sign a confidentiality agreement prior to reading your notebook. This may help protect the trade secrets in your notebook as long as you meet the statutory requirements, which were discussed previously, to prove the notebook contains trade secrets.
In the Congressional Record dated March 3, 2011, Congress said inventors can file a provisional patent application to bypass some of the issues associated with the inventor’s notebook. This application has the same function as the inventor’s notebook because it requires an invention’s description, including what the invention is and how it works. It is also a dated government document, so one cannot easily tamper with it. Furthermore, this does away with expensive discovery if a claim is later challenged.
A patent search can be beneficial at various stages of the inventing process. An initial patent search at the time of conception and formulation of an idea helps you assess the depth and extent others took in solving similar problems. Moreover, for brainstorming, the patent search can help refine your idea and stimulate further inventive thinking. Furthermore, a comprehensive awareness of the prior art can aid you when you draft claims. You’ll learn how to write claims with the appropriate scope so you can obtain patents that are as broad as possible, yet defensible.
To search for prior art, sometimes known as a patentability search, you can go directly to the USPTO office in Alexandria, the USPTO’s patent and trademark depository libraries nationwide, or visit online databases.
If you don’t want to research yourself, you can hire professional patent researchers, such as a patent attorney or agent. One advantage of hiring a professional is that he/she understands the concept of novelty and obvious, so he/she may do more thorough research than a non-professional.
Before performing a patentability search, a researcher needs to know about your invention so if he/she is not a patent attorney or agent, have him/her sign a confidentiality agreement. If you’re working with a patent attorney or agent, this is not necessary because your conversations with him/her are already considered confidential under the law.
Next, provide your researcher with a description of the invention, including what makes it novel, drawings, an idea of what classes to search, and applicable deadlines. If you provide your researcher with your inventor’s notebook, be sure to protect yourself by only providing a copy and redacting any dates in this copy of the notebook.
After the researcher is finished, he/she will usually tell you what they found, including what classes and subclasses he/she searched, and the patents and references he/she discovered. If you are working with a patent attorney or agent, he/she will also provide his/her opinion about the patentability of your invention.
It’s best to visit a USPTO research facility. The one in Alexandria, Virginia, is preferred because its computers have the Exam Assisted Searching Tool (EAST), and you can talk directly with examiners and other staffers who are there to assist researchers. EAST is a free tool, though you have to pay for printing. With EAST, you can search via class or subclass, Boolean or keyword terms, or a combination of both.
You can visit a Patent and Trademark Depository Library as well. These are located in major cities. The USPTO’s website lists where they are and their hours of operation. These do not have EAST but have the Web-based Examiner Search Tool (WEST). The libraries also do not have information related to foreign patents or non-patent materials, such as journals.
If those aren’t options, you can also start with an online or patent database search. The USPTO, European Patent Office, and Google, for example, offer this service for free, and there are other fee-based search tools. Though the records here may not go as far back as EAST, the databases are oftentimes easier to navigate.
Become familiar enough with your patent application, including the abstract, specification, and claims, so you can come up with Boolean search terms and the classification that best describes the nature of your invention. These search terms need to be thorough and exact in order for you to find patents already in the USPTO’s system, so coming up with synonyms may be helpful. The USPTO website can also help you navigate the myriad of classifications. It can take some trial and error to figure out exactly what you’re searching for and how to find it.
Though you may believe your search to be good, whether you do it yourself or hire a professional, it is probably not as in-depth as what a patent examiner will do. For example, that’s because:
Inventors include people who contribute to the conception and reduction to practice of the invention. Conception is the formation, in the mind of the inventor, of a definite and permanent idea of a complete and operative invention, while reduction to practice requires that the claimed invention work for its intended purpose. To qualify as co-inventor, each inventor must have contributed to an idea that became a part of at least one of the invention’s claims. To be considered an inventor, one must contribute to conception (i.e., the mental aspect of inventing). Those who only contribute to reduction to practice are not considered inventors, no matter how much time and energy they put into the project.
Many inventions arise through collaborations between two or more persons whose contributions arise to co-inventorship level. However, merely implementing the inventor’s instructions is insufficient contribution. For example, if a person were hired to implement an invention at the inventor’s direction, that person is simply viewed as hired hands for the inventor and would not qualify as a co-inventor.
If after filing, you discover that you accidentally left out a co-inventor, or perhaps that you have listed a person who should not be a co-inventor, you can petition the PTO to correct the inventorship with supporting declarations from the other co-inventors as to how the inadvertent mistake had been made. The assignee also needs to agree to the proposed change. You will also need to pay a petition fee to correct inventorship, according to 37 CFR 1.324. The request includes:
35 U.S.C. 256 Controls the Correction of named inventor.
When you have co-inventors or joint inventors, all inventors share patent ownership. Each co-inventor “may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.” Thus, like joint tenants of a house, any co-inventors can use, make, or sell the invention without permission from the others or paying them. Thus, the best way to control future conflicts is to have one voice in controlling the patent
If someone is just assisting the inventor, he/she should sign a Consultant’s Agreement. This agreement means the person assigns all of his/her rights to the invention to the inventor.
A JOA can prevent problems resulting from shared finances, such as who owns which financial shares to the invention. One common approach is to have all the co-inventors assign to a company. If there is no company to receive the assignment from all inventors, a JOA can be used. A JOA typically:
• Prevents one inventor from exploiting the patent without the others’ consent. Though a majority of the inventors can act if all of them cannot reach a unanimous agreement;
• Includes a method for resolving disputes;
• Includes details about how to divide any revenue, which is usually proportional to expenses incurred by each inventor; and
• Guides the course of action when one inventor wants to manufacture and sell the invention, including how to divide royalties.
If you are hired to invent or to develop new products for your employer, you may be obligated to transfer your invention rights to your employer. We recommend you consult a lawyer when you are in this situation. Situations where this may occur may include the following:
If you have informed your employer about your invention and the company is not interested in it, you can ask for a release. A release is a document that has the employer return the invention back to you.