This Guest Post follows the same principle. Inventor, Mona Singh, has learned by doing with over 50 patents filed and was kind enough to share an inventor’s perspective on the decision to patent and the drafting process.
To Patent or not to Patent, that is the question
by Mona Singh, Ph.D.
Over the years I have run across a large number of entrepreneurs and the one thing that’s common among all of them is their passion for their idea. The passion sometimes translates into an urge to patent the idea. And inevitably, as soon as the word patent is uttered the focus shifts to finding a patent lawyer and the money to pay them.
More often than not the question of a provisional patent comes up to muddy the waters.
Having been in several situations centered around patenting and having been the inventor of over 50 patent filings I finally have some opinions and lessons to share.
Do some research: The first piece of advice I have for entrepreneurs with great ideas is to do a thorough search on the USPTO patents database (www.uspto.gov). Keep searching till you find at least one patent that comes really close to your idea. If you find nothing then you need to modify your search. Make sure you have searched both the issued and published patent databases.
Write your own claim: this will help you figure out what your invention really is about. You may have a very broad concept in your head at this point but you need to convert that into a specific method. I did not realize this for a really long time.
Patent attorneys will take what you give them and create a claim for what *they* think is patentable – that may not be very close to what you think your core invention is. You as the inventor need to be able to point out exactly what is novel and non-obvious about your idea, and why. Remember *you* are the subject matter expert!
Be the devil’s advocate: Spend some time (read that as a lot of time) thinking about all the ways that someone can get around that method. Refine your claim. If you can’t do that, get a friend to try and pull it apart. Look for prior art that kills your idea! Make sure you don’t get emotionally attached to it. Remember, there are always more where your current idea came from; chances are your next idea will be better than this one.
Create a business justification for yourself: Ask yourself your business goals are for getting a patent. Remember that after 18 months all filed patents are published on the USPTO site. So in a sense, your competitors will have more insight into your idea. Do you really want that? A lot of companies (e.g., Google) don’t patent the methods they want to protect the most.
How will you be able to tell if someone is infringing on your patent?
Get a prior-art search done: Once you have the main claim down and you are convinced that you do want to patent your idea, get a professional search firm to do a prior-art search. Some firms also do a patentability analysis. A number of these search companies are run by ex-Examiners. The results they produce are usually quite valuable. When you see the results, you should refine and expand on your original claim.
Find a Patent Attorney: When *you* are totally convinced that your idea is novel, valuable, and if someone infringes on it you will be able to detect it, that’s when you a ready for a patent filing. The value of provisional patents is arguable. A patent attorney will charge about the same amount for a provisional as for a utility (real) patent filing. So, it is better to get a utility patent.
Read the draft: So, you find a good patent attorney and he sends you this draft that is full of legal language and looks really overwhelming. You are obviously busy with everything else that relates to your business. Well, no excuse is good enough! You have to go through the draft with a fine-toothed comb. Make sure the claims are not too broad and not too narrow. Question the choice of words in the claims. Make sure you have properly “enabled” the invention – that is, figured a way to implement it. The enablement should be precise enough that if someone were to build what you are patenting they will be able to do so without experimentation.
Once the patent has been filed, you’re patent pending!