PRIOR TO PREPARING YOUR PATENT APPLICATION

 

A. Invention Disclosures

    The first thing an inventor should do after conceiving an invention is to write it down on paper. There are many reasons for this. For one, the act of describing the idea in words and drawings forces oneself to precisely define the invention and deal with fuzzy areas that must still be worked out.

1. Preparing an Invention Disclosure:

    An invention disclosure is a document that you write on paper. There is no magic form for this purpose (as some invention marketing firms might lead you to believe); you can use blank, ruled or graph paper as you wish. It can be of any number of consecutively numbered sheets. It contains a written description of the invention and usually at least one drawing. What is disclosed are the structure, function and use of the invention. You should sign and date each page, and you should use ink.

    An invention disclosure is only as good as the description you write. Only those things you write and draw, as well as those things which immediately follow from what you described, will receive the benefit of the date of the invention disclosure. For instance, if your invention is a new kind of socket wrench and you forgot to mention how long the handle should be, it will be presumed that the length is a reasonable length consistent with your over-all disclosure. On the other hand, if you wanted the handle to be detachable from the socket head but you didn't mention this in either what you wrote or drew, then this feature will not be "read into" the invention disclosure. What this boils down to is that if you want to tell the world that on January 5, 1999 you invented a compact socket wrench having a detachable handle, then you must be certain to disclose each and every major facet of the invention -- what you don't disclose will be presumed NOT to have been invented by you on that date. So, be careful. As to the sufficiency of the drawings, you must show each major feature of the invention so that someone skilled in the art (in the above example a master mechanic or mechanical engineer can understand the structure and function of the invention. In any event, the drawings do not have to be of "engineering graphic" quality. For that matter, the written part may even be written in a style somewhat less than that demanded of by the "King's English". What is essential, however, is that a person skilled in the art to which the invention is directed can read it, understand it, and in so doing be able to comprehend your invention.

2. Proving Conception:

    While the America Invents Act (AIA) has changed the first to invent to a first to file system, there can be disputes over who is the inventor, issues related to co-inventors, or allegations of misappropriation of the invention. Being able to prove the invention is yours is still important.

    The date of your invention disclosure is going to be the date that you can legally prove it was in existence. A jury might consider your testimony alone to be so self-serving as not to be believable. So, to get around this issue, you must do something more than just sign and date each page in your own hand. One long-standing and very reliable approach is to have at least one person sign and date the invention disclosure with the statement "Read and understood by me." This is a declaration that the witness read it and understood it on the date he signed the disclosure. Should the witness later become incapacitated, this statement will have great weight in court. It is for this reason (incapacity) that more than one (usually two) witnesses are preferred. It is because of the self-serving issue that you need a witness, so don't use a family member or a partner of yours in the invention, as their testimony may be impeached as self-serving, too. Use at least one uninvolved and trusted friend as your witness. A notary public attests only that a paper was brought before him/her on a certain date; a notary does not attest as to the contents of that paper. So, if you want to use a notary, do it in conjunction with a witness, not as a substitute for one.

    Inventors have need for privacy, and as a result, many tend to resist letting someone "read and understand" their invention disclosure document. So, to get around this issue, many inventors mail their invention disclosures to themselves, the post mark serving as a dating device. This may or may not work. The integrity of the envelope is a central question: Was it originally sent unsealed and new disclosure added later? Was it later steamed open to add new disclosure? If you are going to use this approach, you should send the letter to yourself by registered mail and watch to be sure the postal clerk has stamped all the glued flaps of the envelope as an indicator against later tampering. 

 

B. Performing a Patent Search

    In order to find out if anybody has already thought of your invention you need to investigate. First, if applicable to your invention, go to stores that carry similar items and take a good look to see what's on the shelves. Also, take a look in trade publications to see what is on the market. At the same time, you'll be doing a marketing study of which manufacturers may be interested in your idea.

    Next, do a thorough patent search. The best is to have a patent attorney conduct the search for you, because the result will be accompanied by a patentability opinion and other relevant information. You can do a preliminary patent search online at the Patent Office website [see Links], or go to your nearest patent, trademark depository library (PTDL) [see Links] and conduct it there with the help of a librarian. 

    In order to enable searchers to find patents related to specific inventions, the USPTO created a classification system of classes and subclasses which serve to aid locating patents by associating them with designated areas of invention subject matter. Each class relates to a large genre of inventions, such as hand tools, and the sublcasses identify specific types of inventions within the class, such as socket wrenches. Directories help you zero-in on the correct class and most appropriate subclass(es). The PTDL librarians can help you find your class/subclass(es). When you have your class/subclass(es), a librarian will print out all the patent numbers within your selected subclass(es). You take a look at these patents online at USPTO.gov or Google/patents. Some PTDLs have advanced computer searching facilities.

 

C. Patentable Subject Matter

    If you have a new idea that means you're entitled to a patent on it, right? Well, not necessarily. There is a requirement that your idea fall within "statutory subject matter". The patent laws provide: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter or any new and useful improvement thereof, may obtain a patent therefor ..."

    A process is a method of transforming matter from one state into another state. An example of this would be an idea to make gasoline from crude oil in a faster or cheaper way than it is currently made. Processes are applicable to methods which act upon matter in order to change its state in some useful and novel way. Processes not applied to material things have traditionally not been considered to be patentable, as for example a method of doing business.  Computer programs traditionally were not considered to be patentable unless they operated upon and changed matter in some way (such as a robot). However, what is and is not considered patentable for methods (and computer programs) is changing almost on a daily basis; so, if your invention is method or software related, you should consult with a patent attorney to see if it might be patentable.

    A machine is a device having movable parts which accomplish some useful result. The range of examples is limitless, but suffice it to say that as long as the idea is for some mechanism that performs usefully in an operable manner, then the idea falls within the scope of patentable subject matter.

    A manufacture generally applies to a static article of matter. This includes things such as novel beams, hooks, tanks, railings, etc. Basically, a "manufacture" is distinguishable from a "machine" in that it has no moving parts. Things that occur naturally are not patentable. For example, if someone discovered a new gemstone, he couldn't patent it even though it could be said to be a "manufacture". Also, printed matter alone might not be patentable, even though someone might argue that it is a "manufacture".

    A composition of matter applies, for example, to chemicals and drugs. Generally, a "composition of matter" is distinguishable from a "manufacture" in that a composition of matter is directed to the underlying composition that makes up the material, whereas a manufacture is directed to the structural configuration of the material.

    The patent laws also permit patents on improvements on the above classifications of patentable things. When your idea is so totally novel that no one has ever thought of anything like it, it is considered to be "pioneering". Few of us ever get such radical ideas, so most patents are for unobvious improvements on things already in existence.

    Now let's look at what the patent laws say about the necessary quality of the idea, which is in addition to the idea having to fall into one of the enumerated classifications discussed above. Firstly, notice that the inventor may "discover" as well as "invent" the idea; you would probably be surprised to know how many great patents were founded on serendipity rather than inspiration. Secondly, the idea must be new, and for that there is a separate, two-part test to be applied: is the invention novel? and, is the invention unobvious? Thirdly, the idea must be useful, which essentially means that it operates and its operation does not do something against public policy.

    Needless to say, many ideas are not patentable ideas. The first thing that you should do is review your disclosure to evaluate the structure, function and utility of your idea and whether or not it falls within the statutorily allowed subject matter classifications. Only then is a patentability search warranted, where you will investigate the next hurdle to be overcome: novelty and unobviousness with respect to the prior art.

 

D. Novelty and Unobviousness

    Under the patent laws, to receive a patent an invention must be both "novel" and "unobvious".

    The question of novelty is simply stated as follows: "Is the invention subject matter new?" For an invention to be "new" you must be the first and original inventor, and the invention must not have been disclosed by you more than one year from the date of filing of your patent application. When some publication discloses your invention prior to the filing date of your patent application, then the reference is said to "anticipate" your invention.

    The question of unobviousness is a bit more subjective than the question of novelty, and is stated as follows: "Would a person of ordinary skill in the art be enabled to make the invention without an undue amount of experimentation?" "Enablement" means this person of ordinary skill can use his or her own knowledge and the information from cited patents and other publications to modify the teachings of these references to arrive at the invention, using routine efforts. References (ie., patents and publications) and other indicators, such as "Official Notice" of well known information (like water expands when it freezes), are used to ascertain what is the level of ordinary skill in the art. Then, the references are again looked at to see if their teachings may be modified using their suggestions and teachings, as well as by the ordinary skill in the art, such that a person of ordinary skill would be able to arrive at one or more of the features of your invention. Keep in mind here that this modification process can be done even where none of the references exactly discloses a feature of your invention. This is so because even if every feature of your invention is novel, one or more features of your invention might still not be patentable because of obviousness.