KEEP CAREFUL RECORDS
soon as you conceive your invention, prepare a complete description
of the invention including all details and information necessary
to enable someone of ordinary skill in the relevant industry to
make and use the invention in a bound notebook. Include sketches
in your notes showing all parts and features of the invention. Update
your notes with new entries relating to any new developments, tests
and results, analyses, descriptions of prototype development, etc.,
and save all related receipts and documents. Include detailed descriptions
of activities, participating individuals, and invention descriptions,
and permanently affix any loose documents such as photographs into
the notebook. Use pages consecutively, and line through any blank
pages or portions of pages. Sign and date each entry of your notes,
and preferably have each entry witnessed or notarized in confidence.
The practice of sending a certified letter to yourself with a description
of the invention is not an effective way to create evidence of your
invention conception date.
PROCEED WITH DILIGENCE
diligent in developing your inventive concept either into an operable
prototype, or to the point of filing a patent application. Be sure
that your records reflect your diligent activity in proceeding.
DEVELOP A PROTOTYPE IF POSSIBLE
model or prototype is not necessary in order to file a patent application.
However, it is advisable to create an operable prototype before
filing a patent application because the details and design of an
invention invariably change during this development stage. If it
is feasible, proceeding to the prototype stage, either on your own
or using the services of a model maker or 3-D image designer (with
the use of a non-disclosure agreement) can be very beneficial with
respect to obtaining a scope of patent protection which is commercially
KEEP YOUR INVENTION CONFIDENTIAL
your invention in strict confidence prior to developing a strategy
with a patent attorney. Any public disclosure, use, sale, or offer
to sell of your invention will trigger the beginning of a one year
grace period, after which U.S. patent protection will be barred
for your invention if no patent application has been filed. If seeking
foreign patent protection is a possibility, at least a U.S. patent
application must be filed prior to any public disclosure. If you
must disclose your invention for any purpose to anyone other than
a patent attorney, use a non-disclosure agreement.
AVOID USING YOUR EMPLOYER'S RESOURCES
your invention does not relate to your employment and is not for
the benefit of your employer, do not work on your invention on your
employer's time or using any of your employer's facilities, equipment,
or premises. This will help avoid a dispute with your employer over
the rights to your invention.
CONDUCT A PATENT SEARCH
your own preliminary online patent search
using a suitable web site such as the Delphion
Intellectual Property Network or the U.S.
Patent and Trademark Office Database. Keep records of any patent
numbers or citations of all patents and publications you uncover
having any relation to the invention and put together a list of
these references for your patent attorney and for later submission
to the U.S. Patent and Trademark Office. Then, have a professional
search conducted and analyzed by a qualified patent attorney.
7. EVALUATE THE MARKETABILITY
OF THE INVENTION
investing in a patent application, research the market including
price points of similar products, and use available resources to
perform an analysis to determine whether there is enough market
potential for your invention to justify the costs of a patent application.
Obtain an objective opinion, in confidence, regarding the market
potential of your invention. Avoid using
invention promotion firms which often charge excessive rates
and promise more than they can deliver. Understand that proceeding
with a patent application must be considered a business risk, as
there are no guarantees that a patent will be granted, and there
are no guarantees that your invention will be profitable. Balance
the costs and risks ahead of time, and be willing to accept the
possibility of a loss.
CONTACT PATENT COUNSEL
a registered patent attorney with whom you feel comfortable working
as early as possible. Develop a strategy with your attorney, and
inform him or her of your objectives. Make use of his or her expertise
in preparing a patent application which will seek effective protection,
and in navigating the complex laws and procedures involved in the
FILE A PATENT APPLICATION BEFORE MARKETING YOUR INVENTION
your patent application is on file, you should choose whether you
desire to manufacture and sell a product embodying your invention,
or whether you wish to license or sell your rights to a third party.
Many companies will not even agree to review your invention if a
patent application is not at least filed. While your patent application
is pending, you should still attempt to have prospective licensees
enter into a non-disclosure agreement with you.
MARKET YOUR INVENTION WISELY
you choose to seek a company willing to license or purchase your
rights in the invention, you should expect considerable time and
effort to be necessary. Research the industry and compile as large
a list as possible of target companies who might be interested in
your invention. Determine which individual or division of the company
is responsible for reviewing outside inventions and approach them
in a professional manner with a well drafted letter and product
brochure. Consider creating a web site to illustrate the invention.
Follow your correspondence with a telephone call. If you find an
interested company, ask your patent attorney to assist in negotiating
a license agreement which will be of benefit to you.