So you have a great idea, and believe it may be patentable. What next?
1. Keep your invention confidential
First do no harm — keep your idea or concept confidential. Discussing your invention with anyone, other than your patent attorney, before filing for patent protection may negatively impact your ability to obtain patent protection in the U.S. In addition, any disclosure of your invention may bar patent protection abroad.
Even after you file for patent protection, you should only disclose your invention to those that have signed a confidentiality agreement. Remember anyone is generally free to use your idea or concept without consequence absent a confidentiality agreement and until a patent is actually issued. Simply applying for patent protection does not provide any enforcement rights in the U.S. So until your patent application issues as a U.S. patent, you will have to rely on trade secret and contract law to protect your invention.
Thus, it is recommended t to keep your invention confidential. However, if you desire to share your idea with a third party, it is recommended that a confidentiality agreement is signed before you disclose your idea to the third party.
2. File Quickly
The United States is a first to file country. Any delay in filing your invention potentially gives someone else the chance to publish or file a patent application directed to same subject matter before you. In either scenario, your delay will likely result in the loss of patent rights for your invention. So file your patent application with the United States Patent and Trademark Office (“USPTO”) as quickly as possible.
A good way to start the process, is to prepare and file a Provisional-Patent Application. A Provisional-Patent Application establishes a priority date of your invention. A Provisional-Patent Application is not examined by the USPTO, and is maintained in secrecy. Thereafter, additional Provisional-Patent Applications may be filed to sure up a robust disclosure, before eventually filing a non-provisional application, which will be examined by the USPTO for patentability.
Generally, the cost to for legal counsel to prepare and file a Provisional-Patent Application is significantly less than a non-provisional patent application. Another benefit of filing a Provisional-Patent Application is that it allows you to mark your innovative product, material or service as “Patent Pending,” which may aid in marketing, seeking licensees or investors, and any may scare off a copycat competitor.
3. Perform a Patentability Search and Obtain a Patentability Opinion
A patent search and patentability opinion from patent counsel is critical to find out whether you can obtain patent protection for your invention. Although it is not required to obtain a patentability opinion before filing a patent application, a patentability opinion will often help you decide whether to make the financial investment to apply for patent protection.
If you decide to proceed with applying for a patent, a patentability opinion will also increase the likelihood of success in the patent office by focusing on those elements of your invention most likely to have patentable weight, while avoiding the prior art. That is, a patent search and opinion also serves as a way to hone in on what you will try to protect in the non-provisional application.
While there is never a guarantee that a patent search will unearth all prior art relevant to your invention, it should provide about 70% certainty whether your invention is patentable or not based on an examination of prior-art publications.
An ideal time to perform a patentability search and obtain a patentability opinion is after a first Provisional-Patent Application is filed, but before the time and expense of preparing and filing for a non-provisional patent application.
4. Contact Patent Counsel
The patent application process is complex. If you are interested in protecting your invention, please contact Axenfeld Law Group, LLC as early in the process as possible. For more information on how we can assist you with the patent process, please click here.
About the Author:
Robert R. Axenfeld is the founder of Axenfeld Law Group, LLC, and is a patent attorney. He has over 25 years’ experience in the patent and trademark profession, including as a patent and licensing attorney for Lucent Technologies, Inc. and Unisys Corp. He is also an inventor with two issued patents. When not practicing law, or lecturing, Robert trains in mixed-martial arts, and is a brown belt in Brazilian Jiu Jitsu. He is also a youth soccer coach.