Exploring the Patent Process

May 1, 2001
If you've thought of a new device or process that achieves some useful result and you've been able to make your idea work in any way you may have an invention

If you've thought of a new device or process that achieves some useful result — and you've been able to make your idea work in any way — you may have an invention worth protecting. A patent is one form of protection for a newly invented device or product. Typically, only the inventor or inventors may patent an invention. The inventor must contribute an essential idea to the process. Although there can be many outside influences in the development process, such as constructing prototypes and accurately recording data, an essential idea must be the focal point of the process.

It's sometimes difficult to be sure your invention is unique. If an idea for an invention or the actual invention already has a patent, was previously described in a publication, or was already sold somewhere internationally, the patent can't be duplicated. To protect against recreating a previously filed patent, you can conduct a search to gauge the potential of your invention. You can perform a search using the U.S. Patent Web site (www.uspto.gov) or employ a patent attorney or agent. The U.S. Patents Web site holds patents issued since 1836 and offers a range of patent and trademark information. When searching for a patent, note the “class” cited on pertinent patents. The classes will include references for similar patents. These references can assist you in recognizing and describing your invention, including many key ideas crucial to its function.

If your search indicates that your invention is not unique, remember that an expired patent is public domain allowing you or your company to use the invention. It's important to consult with an attorney if a patent on an invention is still in force. There are sometimes limitations allowing circumvention. Another possibility is to improve a patented invention. An improvement doesn't allow your company rights, but you may be able to patent the improvement. In some circumstances a company filing the patented improvement may trade for rights of the first patent. An attorney is helpful in determining the correct course of action.

When a search determines an invention is unique, it's common for the inventor to deem their invention as obvious, discounting the possibility of a patent after working intimately with an invention for months, possibly years. In this case, it's best to seek the assistance of your company's patent committee or a patent attorney.

When the invention development proceeds, it's helpful to construct a matrix containing your invention, related inventions of others and other possible implementations of your idea. It's possible to use the equations from the invention in various forms to suggest other possible forms of the invention. The matrix is useful in clarifying the relationship of the invention to the prior art.

Prior art occurs when the U.S. Patent Trademark Office (PTO) examines the patent application, ensuring the uniqueness of the invention to prior technology. Art is the word used in the past referring to technology. Prior art can also result from an event occurring prior to the patent application date. Other evidence of the invention is irrelevant to the issue of the patent application filing date. Patent agents encourage inventors to ensure their patents contain all information available to them at the time. In the event of further developing a patent, they advise inventors to publicly refrain from disclosing the filing of a formal patent application.

After establishing the matrix of the invention process, exploring possible implementation methods, and eliminating the presence of prior art, it's time to meet with a qualified attorney to draw up your patent application. Your application is an oath establishing your claim as the inventor. It's a good idea to establish a trustworthy relationship with your attorney.

If you don't fully understand the language used in the application, it's important to ask for an explanation regarding the precise use of language and reasoning. One example is the casual and interchangeable use of the words “comprising” and “consisting of.” Properly used, consisting of describes a complete list of elements, whereas comprising means the listed elements are included. The use of the word comprising could be less limiting to your design application. It's important that your application encompass the full range of the design's intellectual territory.

Once you and your attorney have completed the application, you're ready to file with the PTO. This process requires you to swear on oath you are the inventor believing in the uniqueness of your invention. The filing process is occasionally long and arduous, and the rejection of a patent isn't uncommon. Failure to consider prior art is a common challenge to the validity of an issued patent. Occasionally, the intention of the examiner's rejection is to record the inventor's defense in light of prior art, thus strengthening the patent against challenges. You can work with your attorney to defend or narrow the claims if the PTO rejects your application.

The PTO will issue you a patent after ensuring the uniqueness of the invention and after receiving payment for claims and fees. Subsequent patent litigation is possible; however, a well-written patent is the best defense for your new invention.

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