Inventors should keep an inventor's notebook made from a permanently bound notebook in which sketches, descriptions, and photos of their inventions are kept which is periodically notarized as additions are made.

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"Independent Inventor's Forum" - 5 new articles

  1. Lost Inventor’s Notebook and “Poor Man’s Patents”… Oh My!
  2. What Is Your “Invention Game Plan”?
  3. Hoping Your Patent Application Gets Published Soon… Think Again!
  4. Is There Only One Patent Office – The One In The United States of America?
  5. Do I Need a Prototype of My Invention or New Product Idea Before Filing a Patent Application?
  6. More Recent Articles

Lost Inventor’s Notebook and “Poor Man’s Patents”… Oh My!

I recently received a question from an independent inventor like yourself who faced a seemingly serious situation and did not know to do about it.

She has been inventing for several years and kept an inventor’s notebook and “poor man’s patents” but misplaced them. In case you do not know what a poor man’s patent is… that is where the inventor puts a write-up and sketches (called a disclosure) of their invention in an envelope and mails it to herself. The still sealed envelope with postmark is retained by the inventor to supposedly provide some form of legal protection for the invention and inventor.

She is worried that her inventions will be stolen by someone finding the notebook or by any of several companies to which she recently sent disclosures of her inventions, she no longer having “proof” she had invented them. She wonders whether there is anything that she can do to protect herself as she counted on those inventions for her future livelihood.

My reply to her is that the poor man’s patent is an”urban legend” and is worthless in providing any protection for inventors an their inventions. Likewise, while her inventor’s notebook was a good reminder of the details of her various inventions, it provides no protection for her or her inventions since it was not notarized or witnessed.

Rather, inventors should keep an inventor’s notebook made from a permanently bound notebook, the kind in which you cannot add pages nor can you remove pages without it being apparent that a page was removed. The best notebooks are about 1/4 inch thick with 8-1/2 by 11 inch pages available at any of the big office supply stores such as Staples or Office Depot.

Make sketches, write a description, and permanently glue any photos you have taken of your invention(s) on the pages. Use a new page for the start of each new invention. Consecutively number the pages at the bottom and have the notebook notarized on the last page you have used. You can have it notarized at your local bank by a Notary Public, which is usually a free service.

You can use the remaining notebook pages to sketch and describe other inventions or improvements to the existing inventions you come up with. Have your notebook notarized on the new last page you have used every time you make a significant update to your notebook (i.e. when you add a new invention or a significant improvement to an existing invention).

Why you should you keep an inventor’s notebook? Well, lets be clear… it is NOT a patent application and your invention is NOT “patent pending”. Rather, an inventor’s notebook has a strictly limited use… as evidence of your date of conception of your invention(s), but ONLY in the United States of America (USA). That is because in the USA, you must be an inventor to get a valid patent and if there is a dispute as to who is the first inventor, the U.S. Patent Office admits proof of inventorship such as notarized inventor’s notebooks (but not your poor man’s patents).

Note also that you CANNOT “backdate” your inventor’s notebook to when you originally conceived your invention(s)… you only get the date of notarization as evidence of the date of conception of your invention(s).

Alternatively to notarization, you can have your inventor’s notebook signed and dated (witnessed) by TWO people, preferably people who have no monetary or other interest in your invention(s).

Best regards,

Brian R. Rayve
Owner, InventionPatenting.com

P.S. You can lock in “patent pending” at a reasonable price by filing a provisional patent application.

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What Is Your “Invention Game Plan”?

I. Introduction

Most new inventors have no idea what to do with their idea… and rightly so! It is new territory that even experienced inventors and companies “wrestle with” to produce their desire outcome (e.g make maximum money, defend their current product line, preclude a product line from competitors).

First of all, think about your goal for your idea, then take into account the expertise you bring to the table (or have access to). For example, trying to start a manufacturing facility to produce products based on your idea might be within the realm of possibilities for a seasoned plant manager or manufacturing engineer, but not for the average person.

In fact, starting your first company is a full-time job in itself (e.g. federal and state paperwork, setting up corporation, locating a business location, having products designed) even when you have the requisite background. Here is a sampling of decisions you might make based on your goals or “endgame”.


II. What is your endgame (i.e. What are you trying to accomplish)?

1. Sell all of my rights in my idea to a big company and be done with it.

A. Best Choice:

Have a professional patent search done with written patentability opinion to determine: 1) whether a patent is likely to be issued on your idea; and 2) how broad the coverage of the patent that issues will likely be (ie. the likely value of your idea).

File a utility patent application and approach companies after you have received a first Office Action from the U.S. Patent and Trademark Office (USPTO) so you can show the companies: 1) that a patent is likely to be issued on your idea; and 2) how broad the coverage of the patent that issues will likely be (ie. the likely value of your idea).

– Be sure to discuss the ramifications of “public disclosure” with a patent attorney and the proper use of a “confidentiality/non-compete (CNC) agreement before discussing your idea with any person or company.

B. Next Best Choice:

Have a professional patent search done for the purposes described above.

File a provisional patent application and approach companies with the patentability opinion in-hand so you can show the companies as described above.

– Be sure to follow up the provisional patent application with a utility patent application within one year that claims priority of the provisional patent application to retain its filing date.

– Be sure to discuss the ramifications of “public disclosure” and use of a CNC agreement with a patent attorney as described above.

C. Next Best Choice:

File a provisional patent application and approach companies blind not knowing what you have to sell.

– Be sure to follow up the provisional patent application with a utility patent application within one year that claims priority of the provisional patent application to retain its filing date.

– Be sure to discuss the ramifications of “public disclosure” and use of a CNC agreement with a patent attorney as described above.

D. Next Best Choice:

Approach companies blind not knowing what you have to sell.

– Be sure to discuss the ramifications of “public disclosure” and use of a CNC agreement with a patent attorney as described above.


2. License one or more companies to produce and sell products based on my idea and collect periodic payments (royalties) based on the number and value of the products sold (plus other negotiated lump sum and minimum royalty payments).

A. Best Choice:

Have a professional patent search done with written patentability opinion to determine: 1) whether a patent is likely to be issued on your idea; and 2) how broad the coverage of the patent that issues will likely be (ie. the likely value of your idea).

File a utility patent application and approach companies after you have received a Notice of Allowance stating that a patent will issue on your idea.

– Be sure to discuss the coverage of your patent your patent attorney. You should do this through the entire pendency of your patent application so you know whether it is worthwhile to continue the patenting process).

– Be sure to discuss your idea with a marketing or other specialist in the applicable industry to determine the value of your idea in the marketplace.

– Be sure to discuss the ramifications of “public disclosure” and use of a CNC agreement with a patent attorney as described above.


3. Produce (or have produced) and sell products myself based on my idea.

A. One Choice:

Note – the course you take is highly variable based on your business goals – discuss your particular circumstances with a patent attorney and the appropriate business professionals:

Have a professional patent search done with written patentability opinion to determine: 1) whether a patent is likely to be issued on your idea; and 2) how broad the coverage of the patent that issues will likely be (ie. the likely value of your idea).

File a utility patent application and do not make any substantial money investments until you received a first Office Action from the USPTO so you can evaluate: 1) whether a patent is likely to be issued on your idea; and 2) how broad the coverage of the patent that issues will likely be (ie. the likely value of your idea).

– Be sure to discuss the ramifications of “public disclosure” with a patent attorney and the proper use of a “confidentiality/non-compete (CNC) agreement before discussing your idea with any person or company.

B. Another Choice:

Have a professional patent search done for the purposes described above.

File a provisional patent application and be cautious in making any substantial money investments until you file a utility patent application and have received a first Office Action from the USPTO for the purposes described above. Prominently mark products based on your idea “Patent Pending” or “Patent Applied For”. This may discourage competitors from copying your product until you may obtain a patent in the future.

– Be sure to follow up the provisional patent application with a utility patent application within one year that claims priority of the provisional patent application to retain its filing date.

– Be sure to discuss the ramfications of “public disclosure” and use of a CNC agreement with a patent attorney as described above.

I hope this gives you some ideas on how to proceed with commercializing and making money from your invention.

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Hoping Your Patent Application Gets Published Soon… Think Again!

I received a question today from an independent inventor like yourself who is hoping to have publication of his patent application within few weeks. He also indicates that his invention may be protectable as a “trade secret” (as interpreted by me).

Well, I probably wouldn’t post this question and answer except for the fact that I have received the same question before.

I think that inventors are anxious to see progress in the oftentimes lengthy patenting process. Publication of their patent application is something “tangible” for them to hang onto.

In case you do not know what I am talking about, patent applications filed in virtually any country of the world are published 18 (eighteen) months after the “priority date” (a patent application may claim priority of a previously filed co-pending patent application a the time of filing) of the patent application for the whole world to see.

This publication is automatic unless you “opt out” of filing foreign patent applications based on the patent application at the time of filing the patent application.

Opting out on future foreign filings is usually not done as inventors usually want to “keep their options open” for filing foreign patent applications. For example, even though an inventor knows that he/she does not have the rather large sum of money to file for and get patents in all desired countries, he/she is knowledgeable enough to know that preserving the right to file foreign patents (by not opting out of foreign filings and not prematurely publicly disclosing the invention) might be economically valuable, say for instance an international company subsequently comes along that will pay “big bucks” for your invention if they can still patent it in forein countries where their markets are located.

Such foreign patent applications (or a Patent Cooperation Treaty Application – discuss with your patent attorney) are usually filed within the one year period after filing the initial patent application to claim priority thereof under the Paris Treaty (non-treaty countries must be filed in before a public disclosure to have an enforceable patent issue – discuss with yor patent attorney).

Inventors usually file foreign patent applications in those countries where they: 1) want to exclude competitors (i.e. the main markets for their inventions – including where they want to license their invention; and 2) want to prevent manufacturing of their invention by others (e.g. China).

Opting out or failing to file before a “public disclosure” of their invention (such as product advertising or publication of their patent application) will ruin your ability to get a valid patent in the various foreign countries.

Additionally, present and future competitors can view your patent application which by law must include how your invention works and the best way of making it (the “best mode” or way of practicing your invention).

The scope of your desired patent coverage is also revealed since the claims (legal phraseology of your invention) is published. Therefore, your competitors can get valuable competitive information about your invention.

As an inventor, at the time of publication of your application, hopefully you are in a good competitive business position having:

1) Filed any foreign patent applications (or a PCT application) you desire;

2) A patent search with a favorable written patentability opinion (done before you file your initial patent application) so you have a reasonable idea of the scope of protection and that a patent of economic value will issue; and 3) you have products based on your invention market tested and either ready to sell or already on the market (discuss the ramifications thereof with your patent attorney).

A common misconception by inventors is that you need to have an issued patent before marketing products based on your invention. Actually, you need to discuss this issue with your patent attorney up-front, which includes the sub-issues of:

1) publicly disclosing your invention; and
2) infringing (violating) someone’s patent.

Note that even when you get a patent issued on your invention, you still can infringe someone else’s patent and need to dscuss this issue with your patent attorney.

Finally, there is something called a “trade secret” which is another way to protect ideas that are not easily “reverse engineered”. This includes how to make soft drinks, processes to make products, and the like but is beyond the scope of this post. It is something you should discuss up-front with your patent attorney prior to filing your initial patent application.

It is difficult to keep a trade secret as a secret if you file a patent application disclosing it that is subsequently published for all the world to see! However, you might patent a product made using a process that is kept as a trade secret. The advantage is that unlike patents in which you get a “monopoly” on your invention for a finite period of time, trade secrets last for as long as they are kept secret.

Best regards,

Brian R. Rayve
Owner, InventionPatenting.com

P.S. You can lock in “patent pending” at a reasonable price at:

http://www.inventionpatenting.com/file_a_patent_application.html

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Is There Only One Patent Office – The One In The United States of America?

I received a question from an independent inventor like yourself in the United Kingdom basically asking “whether the only patent office is the U.S. Patent and Trademark Office (USPTO) in the United States?”.

Well, my response is that is that each country has its own patent office to accept patent applications for that country and which issues patents for that country. You get patent rights only in those countries where you have an issued patent or a treaty country in which you register your treaty patent as explained below.

Therefore, you can file individual patent applications with the patent office in each country in which patent protection is desired (e.g. drop off, mail, courier service, or electronically depending on the particular patent office).

Alternatively, there are also several patent treaties which allow the filing of a single patent application for all member countries. For example, an inventor (anywhere in the world) can file individual patent applications in the various European Union (EU) countries and individually prosecute them to issuance as patent. Advantage – If you do not get a patent in one country, you may get one in another country. Disadvantage – cost to prosecute and government fees to get separate patents.

The EU also has one of these patent treaties that allows the filing of a single EU Patent Application. It is much more expensive to file than one in a single country, but there is only one application to prosecute to issuance as a patent. You then pay a relatively low fee to register the patent in those EU countries in which you want the patent to be enforceable. Advantage – Only one application to prosecute to issuance as a patent. Disadvantages – Expensive to file. You have “all your eggs in one basket” so getting a patent to register in all of your desired EU countries is dependent on ne application.

Contact a patent attorney in each country where patent protection is desired for filing individual patent applications in those countries. Contact a treaty patent attorney such as an EU Patent Attorney for filing a EU Patent Application.

Best regards,

Brian R. Rayve
Owner, InventionPatenting.com

P.S. You can lock in “patent pending” at a reasonable price at:

http://www.inventionpatenting.com/file_a_patent_application.html

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Do I Need a Prototype of My Invention or New Product Idea Before Filing a Patent Application?

I received a question today from an independent inventor like yourself asking “I have an invention. What do I do first, do I make a prototype then patent it? If so I would have to have help with some parts. Are there companies out there to help with parts to make the prototype?”.

Well, my response is that you should file a patent application to lock-in “patent pending” first. You obviously do not want your idea stolen. Then use a confidentially/non-compete agreement (search Internet for one used for patents) with anyone you need to disclose your invention to, such as somebody making a prototype for you. Use the agreement and do NOT advertise your idea (such as on the Internet) at least until you discuss the ramifications of a “public disclosure” with an experienced patent attorney.

Regarding making a prototype, you do not need to make one in order to file a patent application unless you (or a person you get to evaluate your idea who is more experienced in the particular technology involved) are not sure the idea will work. Then, you might have an inexpensive prototype made to prove the concept. Still, I would not wait long before filing a patent application as there may be time limits on filing a patent application based on what previous marketing activities you have done.

Prototypes are mainly made to help sell your idea to potential investors, to get feedback from potential customers, and to assist you in selling any patent rights you may have in your idea to a person or company interested in buying you out.

I see a lot of people making expensive prototypes as the first thing they do. I am a advocate of the “scissors, cardboard, and tape” (or box knife, artist’s foam-cored cardboard, glue or rivets, and paint) approach to making prototypes. You would be surprised what you can make yourself (even without any experience). Advantages of doing at least the initial prototype yourself include: 1) it is MUCH CHEAPER than professionally made prototypes; 2) it helps you find problems and new approaches (even alternative or better designs) to your idea (you might have invested a lot of money in a less-preferred design); and 3) it can serve most or all of the purposes of a professionally made prototype.

Even if you are intent on getting a professionally made prototype made, consider having a prototype of the type described above initially professionally made for the reasons stated above. Once you have determined the best design and any improvements you want to make, you can have a “brick and mortar” (wooden, metal, or plastic) prototype (the expensive type) made of your preferred design with all of the improvements!

You can lock in “patent pending” at a reasonable price by filing a provisional (locks-in patent pending for one year – file a utility patent within the one year period that claims “priority” of the provisional patent application) or a utility patent application at:

http://www.inventionpatenting.com/file_a_patent_application.html

Best regards,

Brian R. Rayve
Owner, InventionPatenting.com

P.S. I will be adding a list of prototype companies to my Ultimate Inventor Resources at:

http://www.inventionpatenting.com/ultimate_inventor_resources.html

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