In the understandable excitement and inspirational
fire of creation, many inventors rush into the patent process without doing
their homework. Unfortunately, their zeal to push forward often comes back
to haunt them in the form of longer wait times, higher fees, and more work
that could have been avoided with proper planning. The purpose of this
article is to steer you clear of these pitfalls and help you patent your new
idea as painlessly as possible.
One of the biggest mistakes many inventors make is filing a
non-provisional patent right away. A non-provisional patent is the real
patent. To file for one, you need to fill out a bevy of legal forms, include
sketches and drawings of your invention, and pay hefty fees. If your
application is approved, you are granted a patent by the United States
Patent and Trademark Office.
While many inventors will one day need to do this, few of them need to do
it immediately. Instead, there is another equally safe but less expensive
way to go: the $100 provisional patent application. In a provisional patent
application, you do not file a formal patent claim, oath, or any disclosure
statements about your invention. But what a provisional patent will do is
lock in your application date and give you patent pending status.
If you have ever seen patent pending on product packaging or commercials,
it is because the company in question filed a provisional patent application
with the Patent and Trademark Office. It is actually unlawful to use patent
pending unless you have done this.
What this means in layman's terms is that you can begin to market your
invention and gauge how much interest (if any) there is before deciding to
file for a non-provisional patent. In the meantime, you can market your
invention with the full rights and protections of a non-provisional patent.
If you have ever seen patent pending on product packaging or commercials, it
is because the company in question filed a provisional patent application
with the Patent and Trademark Office. It is actually unlawful to use patent
pending unless you have done this.
However, this grace period does not last forever. If it did, no one would
spend the time or money filing for non-provisional patents. Provisional
patents are only effective for 12 months after you file them. At the end of
those 12 months you must either file for a non-provisional patent (which
costs about $400 more) or forfeit all rights to your invention.
If you are smart and work quickly, you can use that 12 month period to
hustle your idea and generate interest in it. By the end of that time you
should have a very good idea of whether it is worth applying for a
non-provisional patent.
When and if you do decide to file a non-provisional patent application,
you need to ensure that you file everything you wish for the patent examiner
to see. Once your application is filed, there is no way to go back and add
more. What is there and only what is there is what the patent examiner will
evaluate when deciding to grant you a patent.
To ensure that nothing is missing from your patent application, see our
article How to File Patents.
It may take as long as 2 or 3 years to hear back from a patent examiner
once you file. The first time you do hear back is when the examiner issues
what is known as a First Office Action. This is when the examiner has told
you what in your application they think is patentable and explains what
claims of yours are lacking. You (or your attorney) must respond to each and
every issue raised by examiner and file your response no later than six
months after the First Office Action.
Once the examiner evaluates your response, they will issue a Second
Office Action in which they either accept or refute your claims. At this
point the examiner has the authority to make this a final verdict, but this
is not actually the way it usually works. Your lawyer can continue to work
with the examiner on resolving his/her complaints and getting your patent
approved.
In closing, the best advice for 90% of inventors is probably to begin by
filing a provisional patent application. Unless you are sure that your
invention is a slam dunk (and such assurance is rarely justified), it will
save you lots of money and give you 12 months to see what the market for
your idea is.
By Eric Corl is the Founder and CEO of Idea Buyer, a marketplace for new
technology and products that allows inventors to showcase their
intellectual property to consumer product companies, entrepreneurs,
retailers, and manufacturers at
www.IdeaBuyer.com. You can email him at EricCorl@IdeaBuyer.com
