You just came up with a brilliant idea. It's never been done before, and you're sure it will make you a millionaire... If you're like me, your first reflex is to tell everyone about it and write an instructable. Sadly, if you want a shot at that cool million that's a reflex you'll need to curb -- for a while at least.
Now before I go on, let me say that patent law is huge, and complicated, and people with PhD's in all sorts of fields then go on to law school for additional years of study before they practice patent law. I don't have a Phd, and I'm not even a lawyer -- but I have come up with a few ideas in my time, I have filed for a couple patents, and last but not least I have a friend who is a patent lawyer and has been very patient with me, even though he specializes in biochemistry and I make paper toys. So I'm not giving legal advice here, just sharing my experience.
Everybody always says "talk to a lawyer" but not everybody can afford a lawyer. Adding insult to injury, unless your company name is Mattel or Hoffmann La Roche a lot of lawyers won't even bother return your calls. Still, if you can afford it, try to consult a patent lawyer who specializes in the type of product you're working on. If you've come up with a cool electronic toy, don't talk to someone who does pharmaceuticals (and vis versa).
This instructable is designed as a beginner's guide, to orient you and help you avoid certain pitfalls as you get started whether you can afford a lawyer or not. I will also guide you through the steps of writing a PROVISIONAL patent in the U.S. and point you in the right direction for filing it yourself. That said, if you're doing this on your own, be prepared to do a LOT more work than just reading this instructable. The United StatesPatent and Trademark Office is the best place to learn.
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Step 1: What Is a Patent and Why You Should (or Shouldn't) Get One
Let's start by defining a few concepts:
Copyright offers protection for text or images (static or moving), but also computer code or music. Roughly anything which can be printed.
Trademark offers protection for words or phrases (such as a company name and its moto) and images (such as a logo). In other words, it's for protecting brands and identity.
Patents offer protection for inventions. These are generally objects, but they can be processes (inventing a new method to produce something) or materials and compounds. You can even patent a plant, but not an abstract idea or a law of nature (learn more). The purpose of patents is to encourage invention, by allowing inventors to own and profit from their ideas, but also to share this knowledge for posterity. This is why the rights to the patent are granted only for a limited amount of time, which varies depending on the countries and type of patent. In the US, the periods range from one year (provisional patent) to twenty (utility patent). For this reason also, to get the patent you have to reveal all your secrets, lay it all out (the word patent is derived from the latin patere, "to lay open") and explain exactly how this brilliant idea of yours can become reality.
So patents do carry a risk. Honorable people and companies will seek to license your ideas and they will avoid infringing on your patent -- but dishonest ones will steal, blatantly and intentionally, especially if you are a small, independent inventor. Why? Because YOU have to defend the patent. If someone steals your idea, you're the one who has to hire lawyers and sue. Chances are you won't be able to afford a lawsuit, and they know it.
Furthermore, patents can be very costly to obtain. You aren't just submitting a form and, a few weeks later, getting a paper in the mail with a beautiful golden seal. You "prosecute" your patent and you must defend your claims. The US Patent and Trademark Office examines it carefully and generally comes back with at least one rejection, which means you need to rewrite and resubmit, and each step costs more time and money. Including all the filing and professional fees, winning your patent will run into the thousands of dollars, maybe even tens of thousands. To make matters worse, the US patent is only valid in the US, so you might want to obtain international patents as well, which can quickly get prohibitive.
But don't give up hope! Because you can obtain a PROVISIONAL PATENT.
This type of patent has very distinct advantages.
- It costs A LOT less to get (and if you do a lot of research you can submit it without a lawyer)
- It is not examined by the USPTO (at least not until you upgrade your application to the regular, non-provisional patent application)
- It is not made public (even after it has been abandoned) so no one can use it to copy your ideas
- It allows you to legally write "patent pending" on your invention, to scare away potential copycats.
- It establishes an official US filing date, aka a "priority date". This means if someone else comes up with the same brilliant idea and tries to file it, you'll get the patent because you were there first.
- It only lasts one year, and if you do not apply for a corresponding non-provisional patent, it is considered abandoned. You will no longer be able to obtain a patent for this invention. This 12 month period cannot be extended.
- It is not a TRUE patent -- you can't sue anybody for infringing on it (nobody could, because it is not a public document).
So what's the point of getting this? The provisional patent will allow you to pitch your idea to companies and potential manufacturers, with some protection. You'll still need to be careful: do not, for example, show anyone your actual provisional patent application (this could give them the opportunity to modify it slightly and apply for a different patent). Also write "TRADE SECRET" on the documents you show to anyone, ask them to sign a confidentiality agreement, and treat your idea like a secret (i.e. don't write an instructable yet, or forget your documents at your local bar). Violating a trade secret is a crime, which means that you won't need to sue a company which violates it... the government will do that for you.
If you can get a big company interested, they can then take care of the non-provisional patent, the international patents, and they will defend the patent for you. You 'll have to share the profits, of course, but you can go back to what you do best... inventing.
Step 2: Research
Before you invest time and money into this process, you have to make sure your brilliant idea is truly new and original. If it's been done before, don't waste your time, you won't get a patent. That said, you might find a similar invention. If you're improving on that invention, and you emphasize the difference between the two when you describe yours, then it might be worth a shot.
Google is good for finding out what's out there in the market, but for a proper patent search go to the USPTO, and follow their guides and instructions. I've found you'll get the most relevant matches by searching using categories (aka "classifications") rather than key words, but you should spend a few hours or even days there. It can be frustrating, fascinating, humbling, and totally worth it. Not only will you find out if your invention is original and patentable, but reading all these patents will teach you how to write yours.
Take notes and write down the patent numbers of similar inventions. This will come in handy when you're working on the non-provisional patent.
Bear in mind that you are reading completed non-provisional patents -- so you will want to write your provisional patent application a bit differently.
Step 3: Learn the Language
This will be a quick course in jargon. Though US patents are theoretically written in English, if you google patents randomly and try to read them you will quickly realize they are NOT in English but in "legalese," a language which combines Latin, English and Klingon. If you choose your words carefully you might get away with writing in plain, understandable, English, but you will still need to follow the rigid structure of the patent application text, and you will be forced to use some legalese jargon. Below are some useful words or phrases and their translations:
"Abstract" means "brief summary." This will be the name of the first paragraph of your description.
"Object" means "purpose" or "goal" (as in: "it is the object of this invention to make a miniature toy house which can be folded flat for storage"). An invention can have many objects.
"Fig." is an abbreviation of "figure" which means illustration. Figures are always numbered so they can be referenced in the description you write (see step 5 for more info).
"Present" means "this" (as in "the present invention," or "the present legalese word makes me crazy because saying this works just as well"). This word is useful if you want to sound like a lawyer, but otherwise only use it if you're talking about a gift.
"Priority date" refers to the date you file your patent. You will have priority over any other similar patent filed by someone else at a later date.
"Pro se" This is what you're doing here, writing and filing a preliminary patent pro se, for yourself, without a lawyer.
"Small entity" means independent inventor, and "micro entity" means broke, independent inventor. The patent office is understanding to the little guys. Depending on your income (based on tax returns, so if you file jointly your spouse's income counts too) and a few other factors (like how many patents you've submitted) you can qualify as a micro entity and your filing fees will be reduced. You might also qualify for "pro bono" (literally "for good" meaning volunteer/free) legal help. If you're working with a lawyer, make sure he/she checks your eligibility for micro entity status. Unless they're pro bono, it won't occur to most lawyers how broke you really are, so they won't check unless you ask.
"Prior Art" (sometimes called "related art") means -- well, that's a complicated one. It means any image, text, product or idea which is publicly available before you submitted your patent application, but which might be similar or have bearing on your invention. It can be a patented idea (even one which has never been produced), or it can be an unpatented invention which is already out there (like a traditional toy such as the Jacob's ladder). It is very important to have a good grasp on this concept, because it could be the difference between winning or being denied a patent.
Your invention has to be different from prior art to qualify for a patent. Even something YOU have made is considered prior art, so if you're not careful you can make your own invention unpatentable -- the only loophole is that you've got a year after an idea's been made public to file a patent (or a preliminary patent). Before I learned this, I thought writing about something publicly would protect me, it would prove that the idea came from me... This is simply not true. Not only will publishing the information disqualify you from getting a patent, it is also likely you will not get credit for your idea. Too many people just copy things, do not quote their sources or even pretend to have invented it -- then your original idea gets lost in the copies. This happened with my crayon lipstick; when I wrote that instructable in 2010 I did extensive googling and no one had published anything on the subject. Now the web is flooded with videos, articles and tutorials including over 10 on Instructables alone. The idea is de facto in the public domain now (in spite of the "attribution non-commercial share alike" license), and completely anonymous.
Step 4: The Structure of the Text
Your description must follow a strict structure, with main sections with sub-paragraphs. Main sections are in ALL CAPS, sub-paragraphs underlined.
In a few words, what is your invention (for example: "automatic toothpick dispenser" or "tissue box" or "pop-up house").
This is the first paragraph, which summarizes your invention in one or two sentences. You are not describing the details of how it works, only what it does.
Field of the invention
This is a brief description of the context surrounding your invention. A patent for a tissue box, for example, describes the field this way: "The present invention relates to a box, for containing tissues, that comprises a dispensing insert." A description for a sous vide cooker describes the field this way: "The present invention pertains to a method and appliance for cooking food, and more particularly, for sous vide cooking."
Background of the invention
This is where you can expand a bit on the context of your invention. For the sous-vide cooker above, the patent describes a brief history of the sous vide cooking technique, how it works, what its advantages are and the disadvantages of the sous-vide cooking devices on the market which that invention was proposing to solve. You can describe the object (i.e. purpose) of your invention here, or include that information later with your summary.
Prior Art and references
This is a paragraph which is required for the non provisional patent application. Sometimes this is included within the "background of the invention" sub-section rather than in its own paragraph. Although it is very important that you do the research to find similar patents (to make sure yours is a new idea and doesn't infringe on previous patents), it is equally important that you DO NOT INCLUDE THIS PARAGRAPH IN YOUR PROVISIONAL APPLICATION. Why? Because anything you write can be used against you. When you submit your non-provisional application the US patent office will examine this provisional one. They will turn down your application if they judge that your idea is not original. Later, when you file the non provisional application you will be required to divulge any similar invention which you know about and might have inspired you, but for now avoid saying things you might regret down the road. Wait till you've learned more and spoken to experts, and leave this part out for now.
Summary of the invention
This is the meat of your provisional application. You need to describe your invention in detail so that a reasonably intelligent person who is not an expert in your field can understand it. You need to explain it well enough to show how it works, and how it is unique. Someone should be able to read your patent and be able to manufacture the product. You therefore want to be descriptive and specific, but not TOO specific. Avoid defining attributes (such as materials used) unless they are intrinsic to the design. If you invented a special pouch and imagined it to be made of leather, but it could also theoretically be made of rubber, do not describe your invention as a leather pouch. Someone could come along and make a rubber one using your design, without infringing on your patent.
Brief Description of the Drawings
Here you will list your illustrations (see the next step) and describe them. Specify what type of drawing each figure is (perspective drawing, elevation, plan, top view, cross section, etc).
The claims are what matters the most for the non provisional patent application, but the least for the provisional one... Because all you have to do in the provisional patent application is write under the "Claims" heading: [the title of your invention] is described herein.
Step 5: Illustrations
You will need to accompany your description with illustrations. Since the USPTO has been around a long time and is still quite old fashioned, these illustrations must be in black and white -- even greyscale is frowned upon. So you'll be preparing technical drawings (shading is OK, drawn in black ink with dots or hashes) to illustrate your invention. These are technical drawings, NOT shop drawings. Do not include dimensions (or someone could copy the invention on a different scale and claim that their product doesn't infringe upon your patent).
Number your drawings (fig.1, fig.2, etc). The first drawing should be the one which gives the best overview of your invention, the one which illustrates it best. Add as many other drawings (showing details, cross sections, plans, elevations or 3D renderings) as needed to illustrate how your invention works. Any cross section must be adequately described -- you need to indicate where the cross section is taken from by referencing it in another illustration (in this example from US patent 4998644, fig.6 is a section taken along the lines 6-6 of fig. 1)
Step 6: Ready, Set, File!
If you can, see if you can get feedback from a patent specialist before submitting your application. There are many valid reasons why everyone says "talk to a lawyer." Even though this is just the preliminary patent, you want to be quite sure that nothing you wrote will harm your case later on, and only someone with experience and knowledge of patent law will be able give you informed advice. But don't let them tell you a paralegal has to file the application for you, because you can do that part yourself, it's not hard. You'll probably want to sign in as an unregistered user -- registering is a multi-step process, involving submitting forms, notarization, snail mail, etc. You can do it of course, but it's only worth it if you're planning on being a repeat customer.
I'm not going to go through each step of the online filing here, because websites change more often than laws and the process is fairly self-explanatory -- there are instructions on the website as you go along.
Good luck... and remember, you have one year from the day you file to shop your project around!
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