Sunday, October 21, 2007

I Can't Afford A Patent - Now What?

NOTE: Recently, both Houses of Congress have approved the "Patent Reform Act of 2011" which may alter several aspect of Patent Law since this article was written.   Most notably, we may transition from the "first to invent" system to the "first to file" system.  CONSULT AN ATTORNEY for more details.   The information provided here is for educational, and at this point, historical purposes and  is is quickly becoming outdated.

I Can’t Afford a Patent….Now What?

I get many inquiries from people on the Internet who have an idea for an invention, but just don’t have the funds (or so they believe) to get a Patent on their invention.

Yes, getting a Patent can be expensive. The filing and issue fees alone (charged by the Patent Office) are over $1000 at the time of this writing. Attorney’s fees, even at the barest minimum, will run a few thousand. This can add up to a lot of money. What can one do? Here is a list of steps I would suggest taking to preserve your Patent rights, while delaying or minimizing the costs involved.

1. Document your invention: As discussed in our “Poor Man’s Patent” Article, you can document your Date of Conception by writing up a description of your invention with some sketches or drawings. It need not be fancy! Many folks are intimidated by even this simple task. Your drawings can be as crude as all get out, so long as they illustrate the invention. The disclosure must, however, disclose all of the invention in such a manner that “one of ordinary skill in the art” can make or use the invention.

Once you have created your Invention Disclosure, SIGN AND DATE each page of your disclosure and have each page WITNESSED (signed and dated also) by a third party with the notation "Reviewed and Understood by me". Notarization is nice, but not entirely necessary.

As we will see below, this Invention Disclosure is a multi-use document. It will provide materials for a Prior Art Searcher, the basis for a Provisional Patent Application (as well as a formal Patent Application), and also a document to help explain your invention to others. Plus, it proves your date of conception. Since the U.S. is a “first to invent” country, we award Patent Rights to the first person to invent, not necessarily to the first person to file for a Patent. This Invention Disclosure may prove your “first to invent” status down the road.

2. Make use of the “One Year Grace Period”: Under 35 USC 102(b) you have one year from the date of first public use, sale, offer for sale, or publication of your invention to get at least a Provisional Patent Application on file. This “grace period” as some folks call it, was designed to allow inventors to test-market their inventions for a year before deciding whether or not to file for a Patent.

Since you have documented your Date of Conception with your Invention Disclosure, you should still have rights to your invention even if someone files before you (but invents after you). Thus, you need not worry about someone “stealing your idea”.

There is a catch, however. If you publicly disclose or publish your invention before filing your U.S. Patent Application, you may void your Foreign Patent Rights. As noted in my Foreign Filing Article, however, I think the trade-off is worthwhile. Foreign filing costs thousands, if not tens of thousands of dollars, and if you are having trouble affording a U.S. Patent, foreign filing is out of the question. If you are willing to make this trade-off, you can take advantage of this “one year grace period” (unique to the U.S.) and test-market your invention.

Another catch that people don’t think about is that you have to get at least a Provisional Patent Application on file before that “one year grace period” is out – or give up your Patent rights. It is all too easy to forget when the product was first shown to the public and thus miss the one year anniversary. Also, it is not a good idea to shop for an Attorney 5 days before the end of that one year period! What I would suggest to an inventor wanting to take advantage of this “one year grace period” is to have a “invention disclosure” day where the invention would first be made public, make a note of that date, and make note of when the anniversary of that date ends. This way you won’t forget – and lose all your Patent rights in the process.

4. Perform a Prior Art Search: This item may be a bit out of order. Before committing the time and effort to developing your invention, you may want to perform a Prior Art search. I have instructions on my website on how to perform your own On-line Search. What you lack in expertise in this area you can make up for in the amount of time you spend on the project. If you are not computer savvy, maybe a family member can help out. Many people become addicted to searching what is one of the world’s largest databases of technology information.

If you do not want to perform your own search, or want a more in-depth search performed, many attorneys and professional searchers can do a Prior Art Search for you. We do offer this service at the present time. Our fee for a basic Prior Art search is $500. Consult our Search Page for further information.

The results of the Prior Art Search may be discouraging. It may turn out that someone else has already invented the same thing. Even if so, all is not lost. If their Patent has expired, or has narrow claim coverage, you may still be able to produce the invention – it just might not be possible to Patent it. Note that it is almost always possible to Patent any invention by claiming some narrow feature. However, oftentimes, such Patents are not worth spending the money to obtain.

5. File A Provisional: If you are still serious about obtaining Patent Protection for your invention, file a Provisional Patent Application before your “one year grace period” expires. A Provisional Patent Application will extend this “grace period” by another year – effectively giving you two years to test market your invention.

A Provisional Patent Application contains a Specification and Drawings, but no claims. It is not examined, but serves as a “Priority Document” for a later filed Formal Patent Application. I often use the analogy that it “saves your place in line” at the Patent Office.

Some folks argue you can file your own Provisional Patent Application. I disagree. Yes, you should write your own Provisional Application – based upon your disclosure document. But then take that draft to a good Patent Attorney for review and filing. Chances are, for a few hundred dollars, a competent Patent Attorney or Agent can revise and file your draft Provisional Application for you.

There are various reasons I don’t recommend filing your own Provisional. The main thing is that many solo inventors will fail to disclose all of the invention, or unduly limit the scope of their invention in the Provisional. It is well worthwhile spending $500 or so having a second set of eyes review your work.

If you decide during the pendency of the Provisional that the invention is not going to go anywhere, you can then “pull the plug” on the project and not spend further dough. This way, you have not committed to formal filing without some test marketing first. The use of a Provisional also spreads out the cash-flow of the Patent Process over a period of time, rather than concentrate the expenditures in a single filing.

6. File the Formal Application: If it looks like the invention has some merit after all of this, you may wish to proceed to filing a Formal (Utility) Patent Application within one year of the date of the Provisional. If you’ve had your attorney review and file the Provisional, chances are, they can make that Provisional into a Formal Application by adding some claims and revising the Specification.

Another advantage of the Provisional route is that it offers you an opportunity to update the invention at the time of filing of the Formal Application. While any improvements will not have the effective filing date of the Provisional, it is much less expensive to add these improvements to the Patent at the Formal stage than to write a whole second Patent Application.

A competent Patent Attorney should be able to give you a written price quotation up front, itemizing all the costs associated with filing the Provisional, the Formal Application, how much it will cost to answer Office Actions, as well as an estimate of issue fee costs. We have pioneered the use of the written Price Quotation in this business. Our five-page price quote allows you to “shop around” and also know up-front what this whole process will cost (and it can be a scary amount, when all the fees are added together!).

Some attorneys claim that you cannot quote fixed prices for these services. This is utter nonsense. If you write Patent Applications for major corporations (as I have done) you will quickly learn there are price expectations for various Patent Services (Applications, Amendments, etc.). Attorneys who try to bill over these expectations find themselves without clients. So, in reality, in this business, everyone bills to certain fee expectations. The “billable hour” is really a joke.

If an Attorney tells you he cannot give you a written price quote, but gives a vague verbal quote – watch out! I’ve had a few clients use other attorneys who gave verbal quotes that sounded less than my written quote. But confusion abounds. One attorney quoted “a few thousand” – which the inventor understood was the amount to get the Patent, whereas the Attorney intended was the amount just to get on file. And their views on what constituted “a few” were also far off. Don’t fall into this trap – get it in writing!

7. SAMPLE TIME-LINE: Here is a sample of a time-line illustrating how using these various techniques can stretch out the process while still preserving your rights.

July 22, 2003 Inventor conceives of invention, writes up Invention Disclosure and has it signed and dated. Inventor continues developing invention in secret.

February 21, 2004 Public Disclosure Day – Inventor discloses invention to the public for the first time in a press release, article, public showing, or offer for sale.

February 21, 2005 Provisional Patent Application Filed

February 21, 2006 Formal Patent Application Filed

August 15, 2009 Patent Issues

As you can see, Patent Process can take anywhere from 1-5 years or more. So your relationship with your attorney is a long-term one. Note that the time between conception and public disclosure can vary from days to months to years. HOWEVER, you may be deemed to have “abandoned” your Patent rights if you do not file in a timely manner. Consult your Attorney for more details.

Hopefully, after all this process, you have preserved your “first to invent” date and obtained a Patent, for the minimum amount of money possible. Now what? Well, that’s the subject of a future article!

Please note that this article is provided for educational purposes only, to help inventors understand the Patent Process and its ramifications. It is NOT a substitute for legal advice which is often fact-specific. Please consult your Attorney for fact-specific advice for your situation!