Before you spend a dime on ANY patent attorney…
Savvy entrepreneurs must protect their wallets! Throwing money around will guarantee a startup’s failure. Before even considering hiring a patent attorney to draft your patent, you should understand enough about patent law to ensure your “patent idea” is at the stage where it is “ready for patenting.” You, the inventor, are in the best position to develop you
r patent idea that point, and it can save you thousands of dollars that a patent attorney would be all too happy take off your hands in helping you reach this point.
But also be sure you’re not too far into process, or else you can lose the right to patent your idea.
Common but critical questions include: “Do you need a working prototype to get a patent, or can you patent an idea?” How clear do you have to be about the details of the invention in order to patent your idea?” A basic understanding of these issues will pay dividends.
Determining your next move
There are various stages every inventor goes through, and you must be clear on whether you’re far enough along to patent an idea. Let’s look at an invention timeline to illustrate when exactly you become eligible to patent an idea:
1. Recognizing a Problem
Often the first stage is recognizing a problem that needs a solution – the stage where you say “there’s gotta be a better way!” You may have no clue yet as to what that better way is, but you recognize the need and are aware that “necessity is the mother of invention.” Hypothetically, before mousetraps were invented, you might say “I want to invent a system to get mice out of my home.” The only form your invention has at this point is that it must offer a solution to the problem of unwanted mice in homes. Surely this is a multimillion-dollar idea – but can you patent an idea at this point? I.e., can you patent “a system for getting mice out of a home?” Let’s first look ahead on the timeline.
2. Clever Concept
After carrying this patent idea around in the back of your mind for a while, finally one day in the shower in a flash of inspiration you think of how to put this idea into practice. All you need is a way to hold a piece of bait on a delicate trigger that activates a spring-loaded bar to bonk the mouse on the head! You don’t know the best way to design this yet, but you have a clever concept. Can you patent an idea at this point, or do you need still more detail?
3. Rough Sketch
What if you take another step and sit down with pencil and paper and make some rough sketches of possible designs? Should you hire a patent attorney now?
4. Working Prototype
Maybe next you go to your R&D lab (your garage) and start playing with some materials, trying to put together the world’s first working mousetrap. You find a tiny block of wood for the base, a piece of heavy wire for the bar that will bonk Mickey on the head, a spring to generate the force, and you build what today is known as the common mousetrap. Can you patent an idea now that you have a working prototype?
5. Engineering Drawings & Professional Prototype
What if you go even farther and bring your prototype to an engineer for design input and he drafts some professional 3D engineering drawings for you? You then take these drawings to a company that produces a professional prototype for you. Patent yet?
How much detail will a patent attorney require?
So at what stage of development can you patent an idea? Recognize that the patent system is based on the idea of “quid pro quo,” which is Latin for “this for that.” In other words, there’s a give and take when you patent an idea – you get something very valuable but you have to give something valuable in return. What you get is the right to exclude everyone else from making, using, selling, offering for sale, or importing your invention for a number of years (like a monopoly on your invention).
In return, you must agree that when your patent expires, the public is allowed full access to your invention. Now this wouldn’t be valuable to the public if they didn’t know the intricacies of your patent idea and how your invention worked because you kept it a secret. For this reason, you’re required to describe enough detail in your patent to teach someone who has an ordinary level of skill in the particular field how to make and use your invention without excessive experimentation. When you’ve developed your patent idea far enough to be able to describe it in this level of detail, you have an invention that can be patented. Seeking a patent attorney prior to this can be a waste of money and can unnecessarily add to the already high patent cost.
Patentable Inventions vs. Unpatentable Ideas
Prior to this stage, you don’t have a patentable invention – you simply have an idea or a concept – and just an idea is not patentable. (We refer to a “patent idea” throughout this discussion because inventors commonly use that term and so frequently ask: “Can you patent an idea?” To be clear – No…your patent idea must qualify as an invention to be eligible for a patent, and you should develop it to this point before hiring a patent attorney). But notice that you don’t even need a prototype or professional engineering drawings – all you need is a detailed enough description (which may include some hand-made sketches) that can teach someone how to make and use your invention.
More good news: to meet this legal standard, your description doesn’t have to be capable of teaching every single person how to make and use the invention – only someone of “ordinary skill” in the relevant field (not someone with no experience at all). This helps reduce the amount of detail required. And it’s okay if the person would have to experiment a little to actually get it working – the standard only necessitates enough detail that “undue experimentation” is not required (so a little is fine).
Revising your patented idea…too late?
Suppose you were granted a patent on your mousetrap invention, and they’re selling like hotcakes and you’re making a very good profit. Later you conclude that getting rid of mice this way by bonking them on the head isn’t that nice and you start to feel bad for the little guys. So you come up with a totally new concept and discontinue your current version of the mousetrap. You replace it with a device that safely captures the mouse and allows you to set it free in the backyard (or your neighbor’s backyard so it doesn’t find it’s way back to your home). This new mousetrap is selling beautifully and yielding you twice the net profits as the original product. Does your mousetrap patent enable you to stop competitors from making and selling your new version of the mousetrap?
Recall that recognizing the new problem (that you need a way to remove mice without hurting them), or coming up with the general concept, or even building a working product or prototype isn’t enough to grant you patent protection unless you included enough detail in the patent to teach someone of ordinary skill in the mousetrap field how to make and use your new mousetrap.
The fact that you have a working product on store shelves that someone can reverse engineer is irrelevant. You didn’t come up with the new concept until now, so your patent attorney had no opportunity to include this in your patent. So unfortunately, in this example, your original patent doesn’t cover your new design.
Forfeiting your right to a patent…uh oh…
Not having the necessary detail in your patent can be very costly and cause irreversible damage! Once you put an invention or its newer version up for sale or make it available to the public, you automatically lose your right to get a patent!
Upon conceiving a new version of and invention you already patented, such as the mouse-friendly mousetrap above, it would be wise to immediately discuss it with the patent attorney who filed your initial patent application to avoid fatal mistakes that can forever preclude you from monetizing your idea. This patent attorney is already familiar with the metes and bounds of what your patent covers, and should be able to easily determine whether the new design is already covered. This will be the most efficient and least costly (hopefully free) way to get a definitive answer. This will also help you reserve the right to file a second patent application if one is needed to prevent competition.
So if you have an invention idea that you’d like to monetize, being familiar with the above distinctions can save you thousands of dollars in patent attorney costs by ensuring your invention is “ready for patenting,” and can potentially save you millions of dollars by preserving your eligibility for a patent.
* No mice were harmed in the making of this website.