Patenting for a First Timer: Some tips and a rundown of the process
About a month ago I submitted the utility patent application for my yard bagging product, Direct-Bag-It. (Woo Hoo!) Having successfully navigated this process, I thought I would pass along my new-found knowledge, in the event that it could help you in your path toward obtaining a patent.
Examine Your Motivation.
Before you even head down the patenting road, be sure you can justify the effort and expense you will incur…i.e. do you really envision a product path for your invention; is there a way for it to provide return for the investment you are about to make? Nothing is certain of course, so you will be taking some risk no matter what. Just be sure you really believe in what you have created. One way to evaluate your risks and your potential returns is through creating a business plan. The process of thinking about your business in a systematic way— seeing estimated costs and realistically examining the time it will take—can quickly put your dream into perspective. I suggest working through the entire business plan process to make sure there are no critical flaws or roadblocks for what you hope to do, but not to become overwhelmed in getting every detail nailed down from the start. Consider the initial plan as a starting point to be refined as you go, and a reality check before you go further.
I often find it amusing that I have devoted so much time and effort to developing a better way to bag leaves and grass clippings–not exactly how someone sets out to make his mark in the world. On the other hand, every time I am in my yard saving time and effort with Direct-Bag-It or when I watch others wrestle with current methods, I am reminded of why I am doing this: I really believe I have something that has a market, will help people, and provide a return on my investment. (But yes, daily, I think I may be a bit nuts working on this.)
Document Your Invention.
Prior to taking the next step, I suggest preparing a basic Record of Invention so you have relevant information readily available. I worked off of this one as a starting point since it wasn’t overly complicated like some others I found.
Find a Patent Lawyer
So at this point you have an idea you are really passionate about, a formulated business plan, and a detailed description of your invention. While you are making tweaks to your working prototype (or hiring me to help), your next step will be to find a patent lawyer you can work with. Simply put, patent language is a different language and you will need professional help translating your thoughts into the words and format the United States Patent and Trademark Office (USPTO) requires. Long ago I bought a few “patent it yourself” books thinking that I could climb this mountain on my own; but after one evening of looking through books with my invention in mind, I knew I was in over my head.
I spoke with several firms in the St. Louis area and was very happy to find CreatiVenture Law (CVL). I had a nice upfront, no fee consultation with them and pretty quickly felt like it was a good fit. From a personal perspective, Dennis and Linda seemed like good people who were legitimately there to help and provide value. From a business perspective, I felt like they had strong experience patenting inventions that became successful products—proving that they were effective in their work and knew aspects of the licensing and product development process that I would eventually need. So they were “hired,” and off I went with Linda guiding me through the process.
Perform a Patent Search.
The first suggested step of the patent process was to perform a patent search to make sure there was no prior art relative to what I could claim with Direct-Bag-It. Although you can accomplish a lot using Google Patent Search and the USPTO site, we chose to contract a patent search from one of CVL’s partners to make sure we covered what we needed to. The key is to make sure your claims have not been made before. In that regard, it makes smart sense to spend a bit of money now ($hundreds) to make sure it is worth spending a chunk of money ($thousands) later in the patent process. In my case, there were scores of patents pertaining to bagging of leaves and grass clippings—some of which I found comical and surmised that a working prototype must have never been built. However, thankfully, none of them provided the efficiency-enabling overfill capacity of Direct-Bag-It. With the claims hurdle behind me, we moved on to the provisional application.
Complete a Provisional Application.
The provisional application is your opportunity to establish a filing date with the USPTO—allowing you one year to refine your invention prior to finalizing the application for the utility patent and also allowing you to speak openly with whomever about your invention under a patent pending status. The provisional application, relative to the utility patent application, is more simple, does not require formal drawings (pictures, hand drawings, etc.), is less expensive, feeds into the eventual utility patent (saving time and money), and taught me a lot about what the patent lawyer and USPTO are looking for. Of all the benefits of the provisional application, the most important to me was the extra year it provided for me to refine my invention. Direct-Bag-It evolved in several ways that were important to capture in the subsequent utility patent.
Submit the Utility Patent Application.
If you haven’t already developed an appreciation for your patent lawyer’s translating abilities, you will once the utility patent application rolls around. As you may be able to tell from this blog, I can communicate my thoughts, but I tend to drone on and on in doing so. (Bravo if you are still reading. Hey, it’s a blog on legal and engineering matters…would you expect it to be short?). I was really amazed at Linda’s ability to distill the important aspects of my invention into efficient wording that conformed to the patent legalese. Although my invention is relatively simple, I could tell she really understood all of the aspects of its function as she incorporated relevant aspects of descriptive documents and accounts I had provided.
Fortunately, I was able to take an active part in the utility patent application process for this patent. I was able to create my own formal patent drawings using the SolidWorks 3D CAD models I generated for the design of the Direct-Bag-It prototype. This saved me both time and money. I learned a lot about how to work with SolidWorks models to create quality, professional-level patent drawings; a value added service I can now offer to my design services customers or independently.
With a few tweaks and iterations between Linda’s text and my drawings, we had the application submitted with several weeks to spare relative to the one year provisional application deadline. Now it is with the USPTO for their review, which I understand can take several years. In the meantime, I am good to go marketing and developing Direct-Bag-It with patent pending status.
Note: New Patent Law
Your experience may be slightly different than mine, as patent laws changed in early 2013. I asked Linda from CVL to provide a quick synopsis of what the changes mean, and how inventors may need to handle their inventions differently during the early, pre-patent development phases. Here is what she had to say:
“The America Invents Act (AIA) was fully enacted on March 16, 2013. The biggest impact of the new law is the change in our country’s patent system from ‘first to invent’ to ‘first to file.’ There are many changes involved with this new law, but the most important is that the inventor who files first is the one who gets the patent. For example, inventor A can work diligently for two years on an invention, starting on September 1, 2011, keeping it secret, and file on September 1, 2013. Totally independently, and unknown to inventor A, is inventor B who works for six months on the same invention, keeping it secret, starting on February 1, 2013 and filing on August 1, 2013. Inventor B filed first, one month before inventor A, and inventor B gets the patent. This is a great simplification of the law, with many assumptions present, but it is the general premise of the change. It is more important than ever that an inventor file as early as possible.”
CVL also provides some important guidance about those pre-patent early phases of your work when you have to be careful about how you handle disclosure of your invention. Essentially, keep your ideas held close, proceed with non-disclosure agreements if you need to talk to companies, and if you go to market with your device, you’ve got one year to get your invention filed, otherwise your rights are void.
Good Luck!
I hope this overview of my patenting experience can help you with your invention or product development effort. Please visit my Services link to learn more about the ways Top-Down Engineering can help you take your ideas from concept to reality!
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