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 others 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 outside the U.S.
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, or 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 or contract law to protect your invention.
Thus, keep your invention confidential. If you want to disclose your invention to a third party, make sure a confidentiality agreement is in effect before you disclose your invention to the third party.
2. Contact Patent Counsel
You should contact patent counsel as early in the process as you can. The patent application process is complex. There are many pitfalls for those not intimately familiar with U.S. Patent Laws, or the Rules of the United States Patent and Trademark Office (“USPTO”). So the earlier you consult patent counsel in the process, the more likely you’ll receive worthwhile, and valuable patent protection for your invention.
3. File Quickly
The United States is a first to file country. Any delay in filing a patent application to protect your invention potentially gives someone else the chance to publish or file a patent application directed to the same subject matter before you. This may jeopardize your ability to obtain patent protection for your invention in the U.S.
Consequently, the quicker you can file your patent application the better.
A good way to start the process, is to prepare and file a provisional application with the USPTO. Although a provisional application is not examined on its merits, a provisional application establishes an official filing date for your invention. Another benefit of filing a provisional application is that it allows you to mark your product or service as “Patent Pending,” which may aid in marketing, and dissuade copycat competitors — among many other benefits.
Generally, the cost to prepare and file a provisional application is substantially less than a non-provisional patent application, which is examined by the USPTO on its merits.
4. Perform a Patentability Search
Before you apply for a patent, you should perform a patentability search to help determine whether your invention is new. Also, a patent search will help to point out the boundaries of your invention as compared to the prior art. While there is never a guarantee that a patent search will unearth all prior art relevant to your invention, it should provide more certainty whether your invention is new.
An ideal time to perform a patentability search is after you file a provisional application, but before you file your non-provisional patent application.
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.