In this article, I discuss 5 mistakes I commonly see less patent savvy inventors make. Some mistakes are easy to correct. Other mistakes destroy any possibility to obtain a patent and, even worse, gives the entire world the right to use the invention for free without compensating the inventor.
Patent Mistake #1: Publicly Disclosing The Invention Too Early
The most common mistake I see inventors making is to publicly disclose their invention too early. In the U.S., within one year of publicly disclosing an invention, the inventor must have a patent application filed with the U.S. Patent and Trademark Office (USPTO) in order to be eligible to obtain a patent on the invention that the inventor publicly disclosed. This one year grace period gives the inventor time to look for investors and partners for monetizing the invention. If the inventor fails to file a patent application for their invention within one year of publicly disclosing the invention, the inventor can lose the right to claim the disclosed matter in a patent application and the public is given the right to use the invention without compensating the inventor. Also, sales, attempted sales, and sale of the rights to the invention can be considered a public disclosure.
While the actual patent laws are a little more nuanced than the previous description, I still advise inventors to be careful with public disclosures. For example, if an inventor were the sole person in a public forest and the inventor told a bird how the invention worked, this would not be a public disclosure.
Some other countries do not have the same one-year grace period between publicly disclosing the invention and filing a patent application that the U.S. has. Other countries have an absolute novelty requirement when filing a patent application, which means the invention cannot be publicly disclosed before filing the patent application. I’ve been told by a European Patent Office (EPO) patent attorney that there is no grace period disclosure in the EPO, which means if the inventor publicly discloses the invention before filing the patent application, the public disclosure would bar the inventor from getting a patent in Europe. As the EPO is outside the area I can practice patent law as a U.S. registered patent agent, the official recommendation is to talk to someone who is legally competent in each country the inventor desires to file in.
Patent Mistake #2: The Invention Is Not Ready For Patenting
A patent application needs to teach others how to make and use the invention. Specifically, a legal requirement for obtaining a patent is to teach a person of ordinary skill in the art how to make and use the invention without undue experimentation. The word “art” is an old legal word for technology. “Undue experimentation” tends to apply to less predictable arts, e.g., chemical and pharmaceutical inventions. “Undue experimentation” tends not to apply to the predictable arts, e.g., mechanical, software, and electrical inventions. “Ordinary skill in the art” means a person that has the basic skill set to create inventions in the same field as the invention.
This skill set is dependent on the technology the invention is in. Creating a space rocket ship versus creating a new pharmaceutical drug versus creating a new child’s toy requires different skill sets. A patent application needs to teach a person of skill in the art using their existing skill set to make and use the invention. The rocket scientist does not have to teach how propulsion works; they just need to teach how their invention works to someone who understands propulsion. The chemist does not have to teach chemistry; they just have to teach how to make and use the new drug to someone who understands chemistry. The toy designer does not have to teach mechanical engineering; they just have to teach how to make their invention (also, since how to use a toy is well known, the patent does not have to teach how to use a toy).
I often see inventors that have not figured out all the details of their invention. The inventor will have the high level idea formulated but they are still working on the details of how to implement their invention. A key giveaway is when I ask questions along the lines of ‘how does that part of the invention work’ and the inventor has to think about the response. Going from a high level idea to a practical invention is called “reduction to practice”. In general, best practice is to wait until reduction of practice to file a patent application.
Not being ready for patenting is one of the easiest problems for me to handle. First, I warn the inventor about disclosing the invention and trying to sell the invention (remember #1 from above). Then I bring the inventor up to speed about what is required to teach a person of ordinary skill in the art how to make and use the invention. Next, I show the inventor how to do a quick patent search in Google Patents and help the inventor get started by finding patents that are close to their invention. This helps the inventor search for their invention and get a feel for how inventions are described in a patent application. Finally, I teach the inventor how to speed read a patent application. Patent applications are typically written in a standard format and once the reader understands this format, they can quickly grasp a patent.
Patent Mistake #3: No Plan To Monetize The Invention
Typically, the inventor’s goal is to make money off their invention. If there is a business goal behind the patent application, treat the patent application as a business asset. The patent should protect the revenue stream. I encourage an inventor to think about how they plan on making money with the patent, and how they plan on using the patent against their competitors.
Some inventors have goals other than monetary. One inventor told me he just wanted to put “patent pending” on the product he is bringing to market. If a “patent pending” label is all an inventor wants, then the inventor can write a provisional patent application themselves (or use a do-it-yourself (DIY) system), and then file the provisional patent application with the USPTO themselves or with the help of the USPTO Pro Se Department. This saves the inventor the cost of hiring a patent practitioner (i.e., patent attorney or patent agent). The downside of this approach is that if the inventor later changes their mind (e.g., the product is a huge success, another company jumps into their market space, another company wants to acquire the inventor’s company, etc.), then the inventor may have limited their options in the future. To protect for possible changes in the future, an inventor may consider hiring a patent practitioner to review the provisional patent application before filing.
In another situation, an inventor may just want to have a patent for personal reasons (e.g., putting on their resume to brag that they have X number of patents, etc.). I have found most inventions are patentable and the bigger question is if the patent can be broad enough to cover the revenue stream. Most inventions can be described in such a narrow manner that the invention is typically easy to patent. If the inventor just wants a patent number to their name, I can save the inventor money by writing a very narrow patent application.
To recap this section, the inventor should consider their goals for a patent and how the patent will help them achieve these goals. Though the inventor will not be able to predict the future with certainty, I encourage inventors to focus on their goals for a patent and factor the future in when creating a patenting strategy.
Patent Mistake #4: Limiting The Invention
Inventors will at times unknowingly limit their inventions. For example, if an inventor said “my invention is an app that runs on a smartphone that helps people organize their day”, I would respond by asking follow on questions similar to ‘could this app be run on a server, e.g. software as a service (SASS) model’, and ‘what other electronic devices will the app work on’. In this example, the inventor has limited their invention to a smartphone while the invention has broader applications.
Sometimes the inventor is so involved with the details of the invention that they do not see the high level picture. Think of the old idiom “cannot see the forest for the trees”. A second set of eyes can be very beneficial to help the inventor understand the full potential of their invention.
Also, inventors sometimes do not think about alternatives for their invention. The legal word for alternatives is embodiments. I typically disclose multiple embodiments with the goal of blocking competitors from slightly tweaking the invention to get around the patent.
With US patent practice, the inventor can claim a patent with broader scope than they discovered. The legal word is that an inventor can discover a species and claim a genus. The inventor can discover one way of doing something (species), and claim it in such a way that multiple ways of doing it is covered (genus).
Let’s use a land discovery analogy that includes time travel. Let’s go back in time and assume an explorer is the first one to discover the Americas. The explorer made landfall in what will become Virginia Beach, VA. Though the explorer did discover Virginia Beach, the explorer may be entitled to claim more land than just Virginia Beach.
If we could patent the discovery of land, I would first claim the explorer discovered the Americas (i.e., North America, Central America, and South America).
Then claim the explorer discovered North America.
Then claim the explorer discovered the U.S. of America.
Then claim the explorer discovered the Mid-Atlantic and Southeastern region of the USA.
Then claim the explorer discovered the state of Virginia.
Then claim the explorer discovered Virginia Beach. And so on with smaller pieces of land.
Though the explorer may think they have discovered Virginia Beach, the explorer may be entitled to more land than just Virginia Beach.
With patents, the broader the claims, the higher the potential that someone else discovered the invention first. When I initially draft a patent application, I write claims that go from very broad to more narrow. This way when the patent examiner at the U.S. Patent and Trademark Office (USPTO) examines the application, I can get an estimate of how much breath the inventor is entitled to (assuming the patent examiner didn’t make a mistake). On a side note, a land analogy for patents is not a perfect analogy. Land cannot be patented and the property rights for real estate is different than the rights for a patent.
Patent Mistake #5: Thinking The Invention Is Not Patentable
Some inventors think their invention is not patentable.
For example, some people think software is not patentable. While software is not patent eligible, software can be described in such a way as to make software patent eligible. To be patent eligible, 35 U.S. Code § 101 states an invention has to be a “process, machine, manufacture, or composition of matter”. Additionally, there are judicial exceptions to patent eligibility which are abstract ideas, laws of nature, and natural phenomena. Software may be made patent eligible by describing the invention as a process (also called a method). Another way to make software patent eligible is to describe the invention as a machine (also called an apparatus). The software algorithm is combined with a piece of electronic hardware to create a machine. Typically, when claiming software, patent practitioners will claim both a method and an apparatus, and sometimes a computer readable media (CRM).
Also, some inventors do not appreciate how inventive the invention is. This can be especially true of inventors at larger companies, who create on a daily basis. To help explore patentability, I ask questions similar to ‘what have you developed that gives you an advantage over your competitors’.