A Way to Defeat a Troll - Inter Partes Review

 written by James Klobucar, Esq., Patent Attorney at Gearhart Law

Review This….


            Inter partes review may be a term many are not familiar with but it can be used as an instrumental tool in protecting one’s self and business. 

            Inter partes review was given life by the America Invents Act (AIA) signed into law back in 2012. This procedural maneuver enables a third party to challenge the validity of an issued patent. It was designed to be a quick and efficient mechanism for challenging an issued patent as opposed to the overtly costly litigation route. Inter partesreview proceedings are administrated by the Patent Trial and Appeal Board (PTAB). The proceedings are presided over by a panel of administrative law judges who ultimately issue a decision on patentability of the contested patent at the conclusion of the inter partesreview. Any party dissatisfied with the final decision may appeal directly to the Federal Circuit Court.

            One such proceeding instituted recently (August 25, 2014) involves Space Exploration Technologies Corporation (SpaceX) headed up by former PayPal founder Elon Musk, and Blue Origin, LLC led by Amazon founder Jeff Bezos. The focus of the proceeding is patent 8,678,321 granted to Blue Origin, which interestingly enough is entitled “Sea Landing of Space Launch Vehicles and Associated Systems and Methods.” The patent focuses on reusable rocket technology, which many, including Musk, believe is the key to affordable space travel for the mass populous. Generally speaking, the focus of the patent is a rocket booster that once jettisoned can return in a controlled landing and subsequently be reused thus saving a vast amount of resources and money.

            SpaceX contends that Blue Origin’s patent should be invalid given the prior art, or patents and patent applications, available at the time of issuance and that it gives nothing new to the world of rocketry. The patent, itself, is broad and contains very little detail on how Blue Origin hopes to achieve a reusable rocket. SpaceX contends the patent is essentially, “it goes up, and then it comes down.” Thus, sparking this proceeding.

            Now, in order to institute an inter partes review, one must put forth a reasonable likelihood that the petitioner (challenger to the validity of the patent) would prevail with respect to at least one of the arguments put forth. The standard necessary to invalidate a patent is by a “preponderance of the evidence.” Legally, this is a relatively low threshold and essentially means “more likely than not” or a 51% chance of success. SpaceX’s argument is that this patent teaches nothing new and therefore should have never been issued. They cite numerous patents and patent applications which they claim show and describe all of Blue Origin’s claims in the issued patent. There are many in the community who feel the same way and an oft expressed opinion is that the patent should have never issued in the first place.   

With this seemingly low threshold, there is a moderately good chance of success in invalidating this patent. Thus, if you are concerned about a competitor enforcing a “flimsy” patent against you, one can move to have it invalidated via inter partes review rather than ending up in a costly court proceeding. However, it is important to note that inter partes review is only available during the first year after one has been served with an infringement complaint.

            Further, inter partes review should be a useful mechanism for those battling so called “patent trolls” as this avenue can help prevent litigation and the overall lower threshold for invalidation noted above should make for a quick decision or settlement. Even yet, the claims, or the metes and bounds, of the patent are construed with a broader interpretation standard in an inter partes review than what one may find in a litigious courtroom. This again further bolsters the challenger’s position as opposed to a monetary driven litigation proceeding. A charge of infringement for a patent troll can now potentially quickly become a case of an invalid and unenforceable patent.

            Thus, one may use an inter partes review to seek an invalidation of an issued patent. The rules set forth by this review process are generally favorable to the challenger and can result in substantially less money spent than in litigation. This may be the right choice for the small business or sole proprietor looking to preserve their business and technology while limiting costs.

Further Reading:



USPTO Resources for Inventors


How does the USPTO (United States Patent and Trademark Office) encourage innovation? One way is through resources for inventors. One such resource can be found on the USPTO website, and is called “Inventors Eye Newsletter.” You can get to it by clicking on the USPTO website’s ‘Inventors” tab, or subscribe to the newsletter by following the link below. See the description below from the USPTO website:

“Inventors Eye is the United States Patent and Trademark Office's bi-monthly publication for the independent inventor community. Want to stay current? Subscribe to our mailing list and receive the latest stories, advice, and tips for inventors, entrepreneurs, and small business owners. Only subscribers get the current edition, so sign up now. It's free and it takes just one easy step.”

The November newsletter, available on the website, has the following:

A message from the Commissioner

This contains valuable information for inventors. Commissioner Margaret (Peggy) Focarino discusses the reduction in the backlog of applications waiting for examination and lists websites with resources for inventors. It’s worth checking out.

There are featured articles and inventors, such as the article on the role patents played in advancing prosthetics technology, and how an inventor’s device was used against Somali pirates. 

Other features include tabs for advice, events, and network sections.

This is just one of the helpful tabs on the USPTO website. It’s a great place to start, but if you have more questions feel free to call us at Gearhart Law, 908-273-0700.

A Brief History of Animated Turkey Decoys, told in Patents


written by Roy Rosser, Ph.D., Patent Agent

A Brief History of Animated Turkey Decoys, told in Patents

Yes, it’s that time of year again, already. Time to man up, load the 12 gauge and shoot yourself a turkey. 

Having cleaned the shotgun and ironed my freshly washed camo outfit, I was sorting through my extensive collection of turkey decoys, trying to decide which would suit tomorrow’s weather best, when it struck me. No one has ever done a definitive, comprehensive review of the turkey decoy through history.   Well, this short monologue isn’t it, but at least it’s a start in the right direction. 

Surprisingly, it was 1989 before the first patent on a remote controlled turkey decoy was granted (4,965,953, Richard McKinney, Iowa). More surprisingly, the motion – the head moving to simulate feeding – was activated by a control line. How quaintly primitive that seems in the age of the i-phone 5!

Within a few years, a cunning New Yorker (5,289,654, Arthur Denny) realized that with a couple of remote controlled motors, a decoy could be made to both peck and rotate its head, which is, apparently, even more convincing to hungry wild turkeys. Denny also envisaged a deluxe embodiment in which the motion was automatically activated in response to the sound of a turkey call, real or faked. 

This deluxe version may have been the result of realizing that controlling both “peck” and “rotate” motions may not only be taxing on the brain, but it doesn’t leave any fingers free to pull the trigger.

A paradigm shift occurred at the turn of the millennium when Cornell, (6,408,558, Richard Cornell, Jr.) a South Carolinian, decided that horizontal motion along a rail may be a more effective lure and devised a system based on remotely controlled electric motors.

Van Loughman, from Pennsylvania, (6,487,810, R.D. Van Loughman) took a different direction, reckoning that better results would be obtained by simulating a full-strut gobbler tail movement. His two piece lure was activated by a pull line – a step back towards more authentic hunting, perhaps?. (The invention was intended to lure turkeys, not balding dodos, as the drawing (above right) may suggest).

In 2004, Raymond Montalta and Von E. Summers (6,708,440, Summers et al) produced a grand unification of both these approaches in a remote controlled, self-propelled robotic frame that could accommodate a variety of flexible decoy covers, including that of a turkey, and imbue them with motions such as, but not limited to, horizontal motion, pecking, flapping, full-strut gobbler tail movement, or any combination thereof.

This may have remained the ultimate in animated turkey decoy – except for one crucial oversight. 

In birds, as with humans, sex appears to be a stronger motivator than food. In 2012, Glen Dunaway (8,230,638, Dunaway) was awarded a patent for an animated decoy that can realistically imitate the mating behavior of a turkey.  

While the patent doesn’t show the actual choreography of a mating turkey, it does open up new frontiers for animated decoys.   How long before inventors figure out a way to use fake Facebook and Twitter accounts to lure turkeys online to real world assignations? 

Whatever the next development in animated turkey decoys, the real point of the hunt will always remain the same. To simply be an opportunity to fire your gun as many times as possible. That way, when you return home to your supermarket-bought, spouse-cooked, turkey, your pent up frustration at Thanksgiving will have been released in the woods – not on the rest of your dear, but weird and annoying, extended families that you have to endure for the entire, seemingly endless, meal. 

So good hunting – and, in case you are interested - I have decided to once again go with the reliable old string pulled, pecking model. Call me old fashioned – because I am.

Happy Thanksgiving!

US Design Patents

Why would anyone want a design patent? Design Patents Part One: US patent system
written by Elizabeth Gearhart, Ph.D., Patent Agent at Gearhart Law


Why would anyone want a design patent?

2 reasons:

Ø      time

Ø      money

Caveat:   the protection from a design patent is very narrow compared to a utility patent.

Compare a typical design patent application to a typical utility patent application:

Type               Design              Utility                             

Time                 8 months                      2 ½ to 5 years

Cost                 ~$2000                        ~$10,000

Protection         limited scope               broad scope

What is a design patent?

A design patent covers the ornamental design of a product, and only the exact design shown in the drawings. A utility patent covers the utility of your invention, ie: the useable features that make it unique. A link to an example of one of Apple’s design patents is below. A design patent has one claim, claiming the ornamental design, and many figures, or drawings, of the design showing all parts of the object: front, back, both sides, top, bottom, and other views as necessary. The design patent in Fig. 3 of the link below covers the look of the phone, but not any of the functions. It shows a round button, so the phone can have a round button, but it doesn’t cover what the button actually does. It wouldn’t cover a phone with a rectangular button. A design patent is differentiated from other patents with the designation of “D” before the patent number.

Here’s a link to Apple’s US Patent D593087:



Why file a design patent application?

Two good reasons for the typical entrepreneur: time and money.  

A design patent costs much less than a utility patent and is issued much sooner. Allowance of design patents normally takes about 8 months but can they be processed much sooner. For instance, a recent design patent application filed by Gearhart Law received a notice of allowance just 2 ½ months after filing. The inventor then paid the issue fee and the patent published shortly thereafter.  It may cost up to $10,000 or more over 3 ½ years to get a utility patent, what with attorney fees and government filing fees. The utility patent results in very broad protection for your invention; particularly protection for the function of the invention.   In most cases, inventors try to obtain a utility patent if possible. While very narrow, a design patent normally costs less than $2,000.  Both types of patents have their place depending on your intellectual property strategy.

You may also decide to file a design patent application if you feel you won’t be able to get a utility patent allowed, but you still need protection for your invention. In that case a design patent (and possibly a trademark too, but that’s a story for another day) is your best option. Or you may have a design that you just don’t want others to copy, and you don’t even need or want a utility patent. Or, you’re covering every aspect of your important invention that you can, so you have maximum protection in a number of infringement areas. In that case you would file for both utility and design patents. 

The Power of the Design Patent in Action

A famous, or infamous, as the case may be, example of a design patent offering an extreme level of protection is seen in the many lawsuits between Apple and Samsung. Apple filed an application for a design patent which was granted on May 26, 2009 as US patent D593087. There’s a link to it above. It was for the design of a smart phone outer casing, just how it looked, not any of the electronics or function. Of course those were covered in utility patents by Apple.  Apple decided to sue Samsung for infringing on their design patent (among others), and they won! On August 24, 2012, the jury found that Samsung had infringed on a number of Apple’s patents, including patent D593087.   Apple had also received a patent on a basic rectangle (D504889) and decided to argue infringement on it too. The defense argued that it would be ridiculous if Apple could corner the market on rectangles. The jury and most of the rest of the world agreed. Apple lost that one.

I hope this helped; if you have further questions, please don’t hesitate to email us at hello@gearhartlaw.com 

Visit our blog next week for Design Patents Part 2: Foreign Filing Design Patent Rules

Fireworks are patentable

Fireworks are patentable and have been around for awhile.  The figures above are from US Patent No. 001,217,544 granted to William H. Willson of Los Angeles on Feb. 27, 1917. 

As of July 2, 2013, we're up to US Patent No. 8,474,092, meaning the USPTO has granted over 8 million patents since patent number 1 was granted on July 13, 1836 to J. Ruggles of Maine for a Steam Engine. 

But patent number 1 was not the first patent.  The first patent was number 1X, granted to Samuel Hopkins of Vermont on July 31, 1790 for a method of making potash.  9,957 patents were issued before congress decided to officially number them in 1836.  They then went back and renumbered the 9,957 patents with an 'x' after their patent number to distinguish them. 

The ownership of patents in the United States was written into our constitution by congress in 1790.  Before that, patents created by the colonists were owned by the King of England.  Another reason to celebrate the 4th of July!

Happy 4th of July!

Patent's End

USPTO Patent term calculator: http://j.mp/12nR23h


Patents have fixed, finite lives.   As savvy inventors and entrepreneurs know, since 1995 US patents are valid for twenty years from the date of the first US filing of the patent.   Not hard to calculate that – so why has the US Patent & Trademark Office (USPTO) just released a new online patent term calculating app?

Because life – even that of a patent – is never that simple. It’s not just that the filing date of a provisional US patent application does not start the clock on a US patent's term of validity.   The real complication is Patent Term Extensions. Since 1995, US Utility patents may have Patent Term Extensions. These are days added to the patent's life to compensate for delays attributable to the USPTO, or, in the case of pharmaceuticals, attributable to a US Government agency, such as the Food & Drug Administration (FDA).

Patent term extensions arise from compromises made in 1995 when Congress modified US law, and a patent’s validity went from 17 years from the date of issue, to 20 years from the date of filing.   This change was required to comply with US treaty obligations as a member of the World Trade Organization (WTO) – in particular with the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). 

To make the new patent term more palatable, the maximum time allowed to prosecute a patent application was assumed to be 3 years, so that 20 years from filing would be equivalent to 17 years from issue. Any delay beyond that 3 year mark attributable to the USPTO is, therefore, added to the life of the patent.

On the face of it, an equitable solution.   In practice, a gigantic pain in the a$$, especially since Patent Term Extensions (PTE) are calculated in days. It’s not too much of a problem if there are only a few days of PTE.   In reality, the extra days often number in the 1000s.  The front page of the patent only tells you the filing date and the number of days of the patent extension, not what the final date of validity is for the patent – that’s left as an exercise for the student.

Who can remember when it’s a leap year or how many days are in each month?

OK most people can – but how easy is it to adjust for an extension of 1024 days on a patent filed on 6/18/2005? That is, calculate how long after its 20 year expiration date of 6/18/2025 the patent will actually expire? More important, how confident will you be that your calculation is correct?

1024 days is 2.82 years or 2 years and 9.51 months (divide by 365). So 6/18/2027 plus 9.5 months - or about 4/3/2028. But what if you need an exact date?

It turns out to be April 7, 2028.    So, in this instance, our rough calculation was close, but especially in pharmaceuticals where the value of the patent may be 10’s of millions of dollars per day, those 4 days are significant.

When you really need to know, and you don’t have the time to add up days of the month from June to March – or are afraid that your once sharp math skills may have rusted a little and will lead you astray - here is an app that does it all for you.


This app – the USPTO’s Patent Term Calculator - gives you a quick, accurate and reassuring calculation of just when your – or your client’s - patent ends.   As a bonus, it also calculates when maintenance fees are due.


New Patent Rules - Microentity Definition



R U a μ-N it E?

(Translation: Are you a micro-entity?)

First of all, apart from the sheer novelty of it, why would an entrepreneur or inventor want to be a micro-entity?

Every cloud has a silver lining.   For the AIA “First Inventor to Invent” cloud due on Saturday, March 16th, that silver lining may be a 75% reduction in USPTO fees. To qualify for those reductions, the USPTO needs to consider you a “micro-entity” aka a “μ-entity”.

A μ-entity is a new class of applicants invented by the USPTO. It supplements their existing “Large Entity” and “Small Entity” classifications.

To be a μ-entity you first need to be a small entity – i.e. have fewer than 500 employees or be part of a US institute of higher education – and then pass three further tests, summarized as:


Question:     Which of these apply:




Employee of a US University?[1]




Four or more Patent applications?[2]




Earn $150,000 or more in 2012?[3]









1.       Are you an employee of a US Institute of Higher Education?

2.       Have you been named as an inventor on 4 or more previously filed patent applications?

3.       Did you, as an individual, earn $150,000 or more in the year 2012?

If you can either answer “Yes” to question 1, or “No” to all three questions – congratulations! You are a μ-entity and eligible for a 75% reduction on USPTO fees. This reduction does not, unfortunately, apply to fees due to your patent practitioner. 

You will, of course, need to sign a “Certification of entitlement to micro-entity status” to the effect that you understand the requirements to claim a μ-entity status, and that you do, in fact, meet them, subject to the usual penalty of being hung, drawn and quartered* if you willfully provide false information. 

Before you sign such a document you may, therefore, want to acquaint yourself with the finer details of these definitions.

                For instance, in question 1, “Are you an employee of an Institute of Higher Education”, you qualify if one of the following two apply:

                 (1) Your employer, from which obtain the majority of your income, is a US institution of higher education (If you are unsure if your institute qualifies see Note A below); or

(2) You have assigned, granted, conveyed, or are under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular applications to such an institution of higher education.

Question 2 (in full): Have you been named as an inventor on 4 or more previously filed patent applications?   Importantly, the following four do not count towards this total:

                i.             Applications filed in a country other than the US.

                ii.            Provisional applications.

iii.           PCT applications for which the US national stage fee was not paid

iv.           Applications during prior employment in which you assigned, or were

                legally obligated to assign, your ownership in the patent to another.   

Question 3 (in full): Did your gross income exceed three times the US median household income for the preceding calendar year? Unfortunately, the last year for which there are US Bureau of Census statistics is 2011 (released September 2012) when the US median household income was $50,054. So the figure you need to be under in 2013 is likely to be close to $150,162 – although the exact number won’t be available until much later in the year.    One important point is that what counts is an applicant’s individual income, not their household income. Furthermore, in joint inventions, each inventor must qualify for μ-entity status.

If you have any questions or comments, please send them to: info@patentpuzzle.com or call us at 908-273-0700.


*I was kidding. Queen Anne did away with that in 1702, I think. Nowadays a willful false statement is punishable in the US under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both. Not quite as bad, but still to be avoided, if possible.     


Note A: An Institution of higher education for the purposes of determining micro-entity status is as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)), i.e. an institution that meets all of the following criteria:

It is an educational institution located in a State of the US that—

(1) admits as regular students only persons having a certificate of graduation from a school providing secondary education, or the recognized equivalent of such a certificate, or persons who meet the requirements of section 1091 (d) of this title;

(2) is legally authorized within such State to provide a program of education beyond secondary education;

(3) provides an educational program for which the institution awards a bachelor’s degree or provides not less than a 2-year program that is acceptable for full credit toward such a degree, or awards a degree that is acceptable for admission to a graduate or professional degree program, subject to review and approval by the Secretary;

(4) is a public or other nonprofit institution; and

(5) is accredited by a nationally recognized accrediting agency or association, or if not so accredited, is an institution that has been granted pre-accreditation status by such an agency or association that has been recognized by the Secretary for the granting of pre-accreditation status, and the Secretary has determined that there is satisfactory assurance that the institution will meet the accreditation standards of such an agency or association within a reasonable time.


How the New Patent Rules Under the America Invents Act Affect the Chemical Industry

By: Richard Gearhart


First to file” replaces “first to invent.”  If two inventors invent the same technology, the one who files the patent on it first gets the intellectual property protection, regardless of who invented it first.  This aligns the US patent system with the other countries of the world. For example, if inventor A invents a new catalyst in 2012 and inventor B invents the same catalyst in 2013, inventor B will get the patent if he files his patent application first. Before the America Invents Act, even if inventor B filed first, inventor A could take action with the patent office to have the patent awarded to him since he invented the catalyst first. So it will be more important to file patents quickly if your company does not already take global patent rules into account when making filing decisions.

Notice of patent protection. It is no longer a violation to mark a product with an expired patent, as long as that patent once covered the product.  For example, if a company markets a consumer chemical formulation with the patent number on the packaging, the company doesn’t have to revise its packaging once the patent expires, as it did in the past.

Best mode. While an inventor is still required to set forth the best mode in his patent application for the invention, failure to disclose a best mode is no longer a basis for invalidating or rendering unenforceable an issued patent. While the law formally retains the best mode requirement, by making insufficient disclosure no longer an allowable defense against patent infringement, the law renders best mode unenforceable.  This aligns the US more with Europe, which doesn’t have the ‘best mode’ requirement.  For instance, if multiple chemical formulations are similar in composition but one demonstrates the highest efficacy, then that formulation is the ‘best mode’ of the invention, and the inventor is required to disclose it.  In the past, the patent could be invalidated in the United States if the best mode wasn’t disclosed.  Now, there is no recourse if the inventor leaves the best mode out of the application, so if a company wants to keep their best formulation a secret and not publish it, it won’t affect the patentability of their product.

 Confidential Sale.  America Invents Act provides that confidential sales of products containing the patented technology will no longer mark the beginning of the 1 year period to file the patent

Prior user rights defense. If an individual/entity begins using an invention ('user') more than a year before a subsequent inventor files for a patent on the same invention, then the user will have the right to continue using the invention in the same way after the subsequent inventor is granted a patent as long as the user did not derive the invention from the subsequent inventor. These prior user rights are limited in scope and transferability, and they also have limited applicability to patents held by universities.  This issue comes up in the chemical industry where a manufacturing process is kept as a trade secret.  In the past, if a competitor independently discovered and patented the trade secret then the competitor could enforce the patent against the trade secret holder.  This is no longer the case, as if the process has been used more than a year then the trade secret holder has prior user rights and the patent cannot be enforced against them.


Let your patent attorney know if you published your invention before filing the patent application



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"One invention, one patent" and Restriction Requirements

      - By Harry Du

Is there a patent equivalent of “one person, one vote?”  Undoubtedly, there is.  A doctrinal pillar of the patent system takes the form of “one invention, one patent.”  That sounds awfully straightforward and self-explanatory, right?  Not so fast.

What is ONE invention?  If you invented a special syringe using a special curved needle? Is that one invention? Two? Or even three?  Does the method to use the syringe and needle also considered an invention?  Sometimes it is very hard to draw the lines.  The US Patent Office has a set of rules to deal with the question.  However, there is always much discretion involved.

In many cases of patent application, the first office action does not deal with the patentability of the invention.  Instead, the first office action is a Restriction Requirement, which tells the inventor that there are more than one inventions included in the application and demands the inventor to elect which invention will be further prosecuted.  The Restriction Requirements have become more and more prevalent in recent years, in a large part because the Patent Office implemented a bonus system based on the number of inventions an examiner completes.  Therefore, the examiners are taking a very strict approach to decide the number of inventions included in an application.

To reply to a Restriction Requirement, the inventor may choose to traverse the examiner’s assertion—arguing that there is indeed only one invention included.  However, even with the traverse, the inventor still has to elect one species to continue the prosecution process.  In a large part, it is not worth it for the inventor to make a long argument against a Restriction Requirement.  In many cases, making the election without traversing is the most rational choice.

One useful approach in replying to the Restriction Requirement is to revise the claims subjected to the Restriction Requirement so that they are directed to a single genus, making the division requested by the Restriction unnecessary.  In the mean time, it is always prudent to discuss the matter with the examiner, finding a generally acceptable solution.


The Pros and Cons of Trade Secrets

Trade Secrets are a potentially valuable, inexpensive, fourth-form of intellectual property, separate from Patents, Trademarks and Copyright.

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Five Reasons You Should Consider a Design Patent

A design patent protects the ornamental features of an item, but does not protect the utility of the item. So why is it so beneficial to get one? Here is a look at five of the top reasons to consider a design patent:

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Patent Infringment: Know Your Rights

If you have a patent in the United States and someone tries to sell your product in China what happens? What rights do you have as a patent holder? What qualifies as patent infringement and what can you do about it? All these questions and more are answered by Richard Gearhart of Gearhart Law. Continue Reading...

What Does it Cost to Get a Patent?

 Everything you need to know about the cost of the patent process.

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Can I Patent a Recipe - Or Eat Cardboard?

The answer to both questions is yes....but why would you want to?

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Do I need a Trademark?

Aside from patent protection, a trademark may be a good alternative or addition to protect your product or service.

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Understanding Patent Rejections

What to do? How to face a rejection? The message I want to convey here is that there are almost always ways to deal with a rejection, even a final rejection. What is more, the main goal here is to understand that rejections, even the so-called final ones, are not necessarily all bad.

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Do I Need a Patent?

If you are a first time innovator who has an idea, such as a consumer product, a question frequently asked is “Do I need a patent”?

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Patent Reform

President Obama signed the new patent law (America Invents Act, 2011) on September 16, 2011.The reform is the largest since 1952, and perhaps the largest since 1836, when the United States moved from patent registration system to patent examination system.

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What is a Foreign Filing License?

When an inventor intends to file a patent application in a foreign country before he files the application in his own country, he may need to have a foreign filing license.

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Can You Patent an Idea?

Can I get a patent for my “idea?”

Clients sometimes ask us whether it is possible to get patent for his/her “idea.” The word is somewhat too vague to warrant a definitive answer. Our initial reply would probably be stereotypically lawyer-like: it depends. However, some further explanation may probably provide enough guidance.

When a client asks whether his/her “idea” can be patented, it usually falls into two kinds of situations. In the first category, the idea, though somewhat complete, is an abstract one that cannot be reflected in something concrete, such as a tangible device or a chemical compound. One fine example is a method to evaluate the ups and downs of the stock market. Can the client patent such an “idea?” The second kind of “idea” usually refers to a design or blueprint that is directed to something concrete, but the intended target of the “idea” is far from complete. For example, if the inventor has a detailed, fine scheme to build a remote-controlled paper clipper but the lack of funds made it impossible to buy some parts for now, can the inventor patent his “idea” for the device?

It is no surprise that which category does the “idea” belong to can affect its patentability – the likelihood it can get patent protection. For the first category of “abstract ideas,” the key is proper patent drafting that makes the “idea” fit into the subject matter requirement of patent law. If it is the latter category, the inventor needs to put more consideration into how detailed the “idea” currently is and how likely it will be materialized. This week’s blog post will discuss the first type of “abstract idea,” while the second category will be discussed next week.

For “abstract ideas,” the main obstacle for a patent protection is the subject matter requirement of patent law. Under Section 101 of the United States Patent Act, only “new and useful process, machine, manufacture, or composition of matter” can be patented. An “abstract idea,” in most circumstances, can be considered in some way as a process. However, a pure abstract idea, such as a mathematical formula (E.g. Einstein’s E=mc2), on its own, cannot be patented. On the other hand, a process to calculate, for example, the fluctuation of the stock market, may be patented if the patent application is drafted in an appropriate manner. The federal courts, through the years, have wrestled with the boundaries of patenting an “abstract idea.” In the past few years, the U.S. Supreme Court and the Federal Circuit Court have provided some guidance that is helpful to such an inquiry. All the legalise aside, the most reassuring way to make an “abstract idea” patentable is to associate the idea with “machine or transformation”—as instructed by the Federal Circuit Court. Under this doctrine, an idea, or a process is patentable if it (1) is implemented with a particular machine, that is, one specifically devised and adapted to carry out the process in a way that is not concededly conventional and is not trivial; or else (2) transforms an article from one thing or state to another. For most of the “abstract ideas,” the most straight forward approach is to draft a patent application that directly links the idea to a machine that carries out the idea. It should be noted, however, the “machine or transformation” approach is not the only way to make a process patentable. However, as indicated above, it is probably the most reassuring method. Moreover, to draft such a patent application requires experience and a keen understanding of the invention. It is probably wise to seek professional help to avoid unnecessary delays in getting a patent.

So what about the “ideas” that are directed to tangible devices or compounds but the intended projects are far from complete? For these “ideas,” the key is how concrete and detailed the design or plan is. The major legal obstacle here is the Enablement requirement imposed by Section 112 of the United States Patent Act. Section 112 states that the specification of a patent, the detailed descriptions for the invention, shall Enable “a person skilled in the art” to “make and use” the invention. Here, “art” can be generally understood as the field of technology of the invention. If the patent application does not satisfy the Enablement Requirement, a patent will not be issued.

To better understand the Enablement Requirement, it is essential to get a basic grasp of the underlying rationale of the patent system. Fundamentally speaking, the patent system is an exchange between the inventor and the public: the public, through the government, grants to the inventor or the owner of the invention a monopoly of limited time (currently it is 20 years) to make, use, and sell the invention, in exchange for the disclosure of the invention by the inventor. Naturally the Enablement Requirement comes into play. Without this, there is no guarantee that the disclosure in the patent is sufficient to warrant granting the patent monopoly. The Enablement Requirement is the statutory language to hold the inventor to his/her side of the bargain—a full and useful disclosure of the invention. It is designed to make sure that the public, again through the government, will not be shortchanged.

For an “idea” that is not fully materialized, the patent law does not prevent the holder of the “idea” to get a patent for it. You need not wait to have a prototype remote controlled paper-clipper to file a patent for it, as long as your disclosure enables a “person skilled in the art”—usually considered a general expert in the field, to make one. However, if the “idea” is so vague and amorphous that it will not teach “a person skilled in the art” to build a remote controlled paper-clipper, the government will not grant a patent. As you may realize now, it is impossible to draw a definitive line here without carefully reviewing the “idea.” Moreover, it is also essential to be able to parse the legal definition of “a person skilled in the art” as well as the technology demand to “make and use” the invention. Therefore, it would probably wise to at least briefly consult a patent law professional as some legal expertise is required here.

Sometime a client may ask an important and related question regarding patenting an unfinished design: when is the time of invention—the time of having the “idea,” or the time of finishing making the prototype? If this blog was written a month ago, the answer would have been very complex and confusing. However, as if hearing the voice of the troubled inventors, Congress passed the America Invents Act of 2011 on 9/9/2011 and President Obama has signed it into law on 9/16/2011. Under the revised framework, the U.S. adopts a “first-to-file” system that no longer focuses on the time of invention to determine who the rightful owner of the invention is. The new system emphasizes the time to file the application. If A conceives the “idea” earlier, or even makes the prototype earlier than B, A still loses if B files his patent application first. Therefore, the new patent laws encourage one to file a patent application for his invention as soon as possible. But what is to stop him from filing for something dreadfully premature? That will be the task of the Enablement Requirement, which remains intact under the new law.

– Contributed by Y. Harry Du


How can I do my own (FREE) patent search?

Inventors often ask how they can find patents related to their idea. Patent searching is not especially difficult, although it can be time consuming. 

The goal of patent searching is to understand the prior art related to the invention. This serves several purposes. First, it can help an inventor decide if patent protection is worth pursuing. Second, it can help the patent drafter draft broad claims that avoid the prior art.

Prior art constitutes everything that ever happened prior to the date of invention by the inventor, anywhere in the world. It includes not only patents and patent applications, but other publications and products too.


A through patent search includes a review of patents and patent publications outside the US, as well as patents and patent publications outside the US.

The internet provides excellent access for prior art searching. For example, as simple keyword search in Google or Yahoo can locate similar products.

The internet is also an excellent venue for patent searching. There are a number of patent data bases that provide excellent results.


For example, theUnited States Patent and Trademark Office has an excellent data base for searches of US Patents and Publications.   For Patents outside the US, good places to look include the World Intellectual Property Organization, website (Patent Scope), the European Patent Office search site Espacenet


Other free online services include Google Patents, and Free Patents on Line, among others. It is not always clear, however, how secure the free online patent searching data bases are.


The most common approach to searching is to simply type in keywords that reflect the invention, and review the resulting results. Sometimes, however, the search returns too many results. The search can be narrowed by using classifications. 


Classifications are the categories that the Patent Offices use to sort and organize patents into groups. Adding a classification to your search can limit your search results and omit extraneous patents that have no relation to your invention.   A full explanation of classification searching is beyond the scope of this post, but for the truly dedicated an excellent explanation can be found at the US Patent Office Search Site Classification Help.


These data bases can provide the inventor excellent tools to do their own patent searching. Final decisions about whether to file a patent should always be made in consultation with a patent attorney.

Licensing - The grant clause.

One of the most important clauses in a license agreement is the “grant clause”. The grant clause defines the scope of the legal rights that the patent holder (or “Licensor”) gives to the user (“Licensee”). The scope of the grant clause has significant implications for the commercial use of the invention.

Here is a typical grant clause that could be found in a license agreement – there are many ways to grant rights in a patent, the one below will suffice for illustrative purposes:


“The Licensor hereby grants the Licensee an exclusive, royalty bearing license in US Patent 9,999,999  in the territory defined as the United States.”


The grant clause is full of important information.


First, the grant clause states the license is exclusive. This means that nobody except the Licensee will have the right to make, use or sell the technology.   The parties have agreed that only this one user will have the right to commercialize this invention. This is in contrast to a “non-exclusive” license. A non-exclusive license gives the patent holder the right to grant additional licenses to other users. In some cases, the license can be drafted in a way to start as an exclusive license, then change to a non-exclusive license. This can be conditioned to happen if the user does not meet certain conditions of the license, such as minimum sales requirements. Sometimes, the patent holder agrees to give a time advantage to the first user, then after a year open the market to other users.


Second, the grant clause above states that the license is royalty bearing. This means that the user will pay the licensor a fee for the right to use the technology. Usually, the royalty is paid on a per unit sold basis, although other methods of calculation are possible. The royalty can be paid on a net profit or a gross profit basis. Royalty rates, or the percentage paid per unit, can very greatly depending on the product and industry. The percentage is usually an important focal point of the negotiations.


The grant clause also refers to a specific patent, here fictionally referred to as US Patent No. 9.999.999. It could also refer to several patents, a patent portfolio, or even to just one or more claims to a patent. So a license can grant rights in multiple patents as well as

a single patent.


The last part of the clause states the geographical region in which the license is granted. In this case, the grant is in the United States. This can be altered to be a region or territory, or expanded to be global, or a region.

Patent Assignments

               Patents are property so, like any property, ownership can be transferred from one person or company to another. A patent attorney can help prepare an assignment for the inventor. 

               A “patent assignment” is the legal document that makes this transfer happen.

A common type of assignment is the transfer of ownership of the patent or patent application from the inventor to the inventor’s LLC.

 In the United States, patents are filed in the name of the inventor. If the inventor has patented the invention, the inventor can keep ownership of the patent in his or her name, or they can make it an asset of an LLC. If the patent or patent application is to be owned by the LLC, an assignment is executed by the inventor and the transfer becomes effective.

If there are multiple inventors on a patent application, then both inventors may assign the patent to the LLC. The LLC document (or operating agreement) can spell out how the profits from the venture are to be allocated.

            Inventors often sell their patent as a way to profit from it. An assignment will also be executed if the patent is sold to a third party.

            Inventors who invent for their employer may have an employment contract that requires them to assign the patent to the employer. An assignment will be executed in this case. Again, a patent lawyer will help prepare the needed documentation.

Licenses - Introduction

One of the most common ways an inventor can take advantage of their patent is through licensing. A license gives another rights to make, use or sell an invention. However, the patent holder retains ownership of the patent.   A license is a bit like a renting a piece of real property. The owner still owns it, but lets another use it, usually for a profit. When it’s a real property license, the payment is called “rent”. If it’s a patent that’s being licensed, the property is called a “royalty”.

Licenses allow the inventor to share in the profits of the manufacturer or producer of the invention. Often, the license will be based on the number of units sold by the producer. This arrangement is advantageous for the producer, since the producer only pays the licensor based on the producer’s sales. 


The license can take many different forms and can be tailored to the needs of the parties to the transaction. For example, the license can be exclusive or non-exclusive to the party receiving the license. If the license is exclusive, then only the party receiving the license can make, user or sell the invention, and nobody else. If the license is non-exclusive, then the owner of the patent can license it many different parties.

Patent Infringement


What happens if someone infringes on another person’s patent? The inventor who holds the patent can sue in court for damages. If a judge finds that patent infringement has occurred, the court may rule that the infringing party discontinue production and sales of the product. The court may also award damages to the person whose patent was infringed.  Often the cases are settled by the patent attorneys without going to trial and the infringing party pays the other a royalty for the use of the technology.

If you are accused of infringement, or if you find someone infringing your patent, a patent attorney can help you decide how to proceed.

A patent is only valuable if it is enforceable and can withstand the rigors of litigation. Likewise, the patent professional you choose for your patent needs should have an understanding of what can happen to your patent if it ends up in court. There is no substitute for an understanding of how your patent will be challenged by an alleged infringer.

At Gearhart Law, we have many years of litigation management experience, and have learned first hand how your competitors will seek to avoid or invalidate your patent in court. This experience is invaluable in helping you to achieve the best possible protection for your invention.




For example, in the case of Wesley Jessen v. Bausch & Lomb, Richard Gearhart, Esq. was involved in every aspect of the case, including discovery, motions, trial, and appeals, and with the help of other attorneys obtained an injunction preventing Bausch & Lomb from selling it’s product for the life of the patent.

How do I File a Patent?


Many of my clients in New Jersey ask about the steps for filing a patent. There are three main steps to patenting an invention.

*       First, a global or US patent search is conducted to make sure your invention is original.

*       Second, the patent must be drafted and filed with the patent office.

*       The final step is to prosecute the patent.

There are many databases, including the US Patent and Trademark Office (USPTO) website which list published patents. Searching the USPTO site for patents on inventions similar to yours (prior art) is the first step. In order to get an invention patent, your invention must be unique enough to be allowed by the patent office. An examiner at the patent office looks at all the prior art when determining whether to allow your patent. Experienced patent attorneys will make a judgment on what they think the USPTO will allow when evaluating your patent application. The patent attorney will then write your application in a way to maximize your chance of success and, after your review, will file it with the USPTO.

The next step in getting an invention patent is prosecution. The USPTO does not grant a patent just because the paperwork has been filed; the patent attorney must argue the points of the patent with the patent examiner and convince him or her that the invention meets all of the USPTO requirements. Your chances of success in this step are increased if you use an experienced patent attorney who has dealt with the USPTO on patent inventions and is familiar with their requirements.

Need to get an invention patented or conduct a US patent search? Call Gearhart Law today.

Do you need international patent protection?

 So you’ve gotten your patent application on file, the rush and the fuss are over with for the time being, you’ve hit your deadline before the presentation or the trade show. Fortunately the patent decisions have been made now and you can forget about this part of your project at least for awhile. And maybe you take a deep breath, because the financial hemorrhage from the patent work is at least on hold.

But soon you get a letter from your patent attorney advising that the one year deadline is fast approaching and you need to decide whether you want international protection. What do you decide? How do you decide? What countries do you file in? Is worth the money it will cost?

Well the answer to the question “do we need international protection” is a qualified “maybe”.

Obviously, if you don’t plan to do business outside the US, then the answer is a clear “no”. If you get a US patent, you can always prevent people from importing into the US from another country. The US is all you need.

If you plan to sell outside the US, then you want to consider patents in the major markets where you plan to sell. If you plan to sell in Japan, for instance, consider a patent in Japan. That too is obvious.

But just because a patent is available doesn’t mean you want one. Here are some additional considerations.

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Who will read your patent?

You may be surprised to realize your patent has many audiences. The list includes you (the inventor), your inventor peers, Patent Examiners, investors and business people, other lawyers, and in some cases, a judge and jury. A good patent application will effectively address the needs of each audience.

Obviously, the application reflects the inventor’s work and creativity. Often the application will include parts and descriptions written by the inventors, and so has the inventor’s own voice. The patent provider will incorporate as many of the inventor’s ideas and suggestions as possible with the goal of protecting as many variations of the invention as possible. In any case, you, the inventor, should be happy and satisfied with the application's content.

It may also be read by your peers. This happens frequently in highly technical fields, such as biotechnology and engineering. Here a premium is placed on scientific content and accuracy.  Most inventors enjoy the feeling of statisfaction that comes when their application publishes and their ideas have become a part of the technical literature. Published patents provide important teachings and are considered an important scientific resource. The publication part of the process helps fulfill the patent systems constitutional purpose of advancing the useful arts and sciences, by making technical knowledge publicly available that may otherwise remain secret.

Another important reviewer is the patent examiner at the US Patent and Trademark Office. The patent examiner has highly regulated criteria that the patent must be met before allowance.  The Manuel of Patent Examining Procedure (MPEP) is the reference source for the patent examiner and contains thousands of pages that direct the Examiner though the proper examination of the patent application. The patent must meet the criteria set forth in the MPEP and the patent laws in general including novelty and non-obviousness, as well as numerous other details of a highly complex nature.

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About the Author

Richard Gearhart is the principal and founder of Gearhart Law, LLC a law firm specializing in patent services. The firm provides an array of services in the mechanical, software and chemical arts, and includes patent application drafting, domestic and international patent prosecution, opinion rendering, agreement and transactional work, and litigation support. Gearhart Law’s clients range in size from individual entrepreneurs to multi-million dollar businesses. For more information on patents and/or the firm’s services, call (973) 410-4005 or visit the website at www.GearhartLaw.com.

How to Select a Patent Attorney

Some criteria to look for when choosing a patent attorney include:

1. Experience writing and defending patents.

A patent attorney who has a lot of experience will know what the USPTO expects in terms of the patent content, and will tailor your patent to fit those expectations. In addition, an attorney who has experience working with the patent examiners at the USPTO will better know what arguments to present on your behalf during the prosecution phase.

2. Litigation background.

A patent attorney who has been involved in litigation of patents, either for infringement purposes or other aspects of patent law has an understanding of what will hold up in court and what is likely to be challenged, and how to meet those challenges with arguments of his or her own.

3. Responsiveness.

Any patent attorney you choose should return your phone calls! They should answer any questions you have to the best of your ability.

4. Search criteria.

A search is essential for identifying prior art. Prior art is the set of patents for inventions that are similar to your invention. An experienced searcher knows what terms to use and how to identify relevant prior art. If there is prior art that is very close to your idea, then you can’t get a patent on your invention. It will most likely get rejected by the patent examiner, and you need to know that before you invest any money. If there is prior art that is close but not too close, then you need a patent attorney to help determine if there is a possibility of obtaining a patent.

5. Length of time to complete the patent search.

It should take only 1-2 weeks to get your search results. It may take a little longer (1 week) if the field of prior art is crowded with many inventions that are similar to yours.

6. Length of time to complete the patent.

This partly depends on you, because you should be involved with every step. After either meeting with the attorney to describe your idea or sending him or her the invention disclosure, the attorney should work with you to draft the claims. This should happen within 3-4 weeks of your meeting (the attorney needs time to draft some rough claims to discuss with you). After the claims are drafted, they are sent to you for review and/or revisions. Once the claims are written to your satisfaction, the drawings are requested from the draftsman; after the drawings arrive, the specification is drafted. This takes another 3-4 weeks for a relatively simple patent. Depending on the complexity of the patent and your responsiveness, you should have a first draft to review within 2 months of hiring a patent attorney. Of course, a more complex patent will take more time, usually an additional month or two. The patent should be filed with the USPTO within a week of your approval of the final draft.

7. Experience with international patents.

A patent attorney should know what the requirements, including timelines, criteria, and rough costs are of filing internationally.

Watch Out for the Scams

Unfortunately, patenting and marketing inventions is an industry that attracts a lot of scam artists. While there are legitimate companies that can and do provide worthwhile help to inventors, many charge inventors thousands of dollars and do very little to actually help them. These unscrupulous firms may charge high fees just to provide information repackaged from the USPTO that anyone can obtain for free.

Some make claims about licensing and/or marketing inventions that exceed the firm’s ability to deliver. Others will deliberately understate costs and surprise you with additional fees that creep up later in the process once you are already committed. And still other firms have been known to take inventors’ money and literally disappear. Do your homework before signing anything or issuing payment!

Here is a partial list of things to watch for:

  • Check with the (USPTO) or the Federal Trade Commission (FTC) to see if there are any complaints or lawsuits filed against the company.
  • Find out if they have ever operated under a different name. Some of the less legitimate providers have changed names several times.
  • Ask for a complete disclosure of all costs up front.
  • Be particularly suspicious of claims that they will definitely license your product and/or market it successfully. Early in the patent process, it is difficult or impossible to know these outcomes in advance.

Resources you can use to help avoid fraud include the USPTO and the Federal Trade Commission (FTC). The USPTO does not investigate or participate in any legal proceedings against invention promoters/promotion firms. But, under the American Inventors Protection Act of 1999, the office does publish complaints about invention promoters. You can find dozens of these firms listed here.

The FTC, meanwhile, provides a consumer alert, "Spotting Sweet-Sounding Promises of Fraudulent Invention Promotion Firms" at this page.

Perhaps the best assurance that you will be well represented—at least during the patent phase—is to work with a properly licensed patent attorney. He or she has received considerable legal training and must answer to the state bar association in the event a client lodges a complaint. Other types of firms are not necessarily subject to this kind of oversight, meaning you lack this extra layer of protection.

What does it Cost to Get a Patent?

There are two stages to getting a patent, each with its own set of fees. The first stage is the filing stage. The second stage is the prosecution stage, which occurs 1-2 years after the filing stage.

There are filing fees and attorney’s fees associated with filing a patent. Filing fees are fees you pay to the USPTO (United States Patent and Trademark Office) for filing your patent in their databases. These fees may increase slightly year to year, but for 2009 the costs are:

  • $110 to file a provisional patent
  • ~$600 to file a utility patent

Attorney’s fees to file a patent vary from about $3,000 up to $20,000 or more, depending on the complexity of the patent. Most patents for individual inventors fall on the lower end of the cost scale. These fees cover the actual writing of the patent, which includes:

  1. Drafting the claims – the claims capture the essence of your idea in broad terms. The claims are the most important part of the patent, and must be done correctly for maximum protection of your idea.
  2. Obtaining the proper drawings - a patent attorney usually uses a draftsman, who takes your sketches or ideas and turns them into drawings that meet all of the patent office’s criteria.
  3. Drafting the specification – this part of the patent uses the drawings and your ideas to describe your invention in detail, and is as comprehensive as possible to further protect your patent’s validity.
  4. Filling out the proper forms and submitting them to the patent office, with the proper filing fees.

Twelve  to thirty six monthsafter the patent is filed, an examiner at the patent office reviews it, and typically rejects some of the claims. At this point, prosecution begins. Prosecution is the act of arguing the validity of the patent with the patent examiner, with the goal of convincing him or her to allow as many claims as possible. The fees for this phase are variable, and typically range from $1,000 to $4,000, depending on the amount of time involved.

Negotiate with the Patent Office

After the application is ultimately filed as a utility application, it will sit at the USPTO for about 12-18 months before it is reviewed by a Patent Examiner. The Examiner will do his or her own prior art search, and will typically issue several rejections based on form and/or on other patents.

This is referred to the “prosecution phase” of the patent process. It can be thought of as a negotiation with the Examiner over the allowability of the application and the scope of protection.

Each time the USPTO issues a rejection, your patent attorney must prepare a response. Patent cases usually involve at least one response and frequently two. Your attorney should provide you with a copy of all correspondence to and from the USPTO.

There are other possibilities that may arise during the prosecution phase of the application which cannot be predicted with certainty in advance. These include restriction requirements, the filing of continuations, appeals, etc., though all can occur during a typical process. If the Examiner eventually allows the patent, then you will be responsible for paying an issue fee to the USPTO. Afterwards, your patent will likely have a term of at least 20 years from the date it is filed.


File the Patent Application

If the results of your patent search are favorable, then you will need to draft the claims and, if necessary, have drawings prepared that accurately describe your invention. Legally you have the right to prepare your own application documents. However, to ensure that your idea has maximum protection under the law, it is particularly important that an experienced professional, such as a patent attorney, handle this step for you.

You can file the patent application as either a “provisional” or a “utility” application. If the application is filed as a provisional, then you will have one year to make modifications to the application. After you file a provisional application, it must be converted to a utility application within a year.

A provisional is best if you are still experimenting or think you would like to make changes. It may also “add” an additional year of patent term, i.e., 21 years instead of 20 years. The disadvantages are that it takes about three years for a patent to issue from the USPTO, and filing the provisional delays its examination for a year.

Conduct a Thorough Patent Search

You must conduct a search to see if there is an existing patent or applications that constitute “prior art” to your idea. Searching patents is a complex and detailed process. Many patent writers only conduct a US patent search on Google or USPTO databases because it is easier and less time consuming.

However, there are additional search parameters that can be used. These include U.S. and international classification systems that search specialized proprietary databases, including World Intellectual Property, Japanese Patent Abstracts, European Patent Office and specialized scientific journals and papers when technology warrants.

Your objective is to establish that your idea is novel and not obvious. It may be difficult or impossible to patent your invention if prior to your application:

  • It was known or used by others in the U.S.
  • It was previously patented in the U.S. or elsewhere.
  • It was described in an article printed anywhere in the world.
  • The idea was obvious based on publications, patents or uses.

It is possible to conduct your own search, although most novices aren’t aware of the nuances of thorough search practices and patent laws. If you’re going to select a patent lawyer to assist you, look for one whose search methodology is comprehensive. Not all searches are the same!

Keep Your Idea Under Wraps

Be sure you don’t disclose information about your work except to your patent attorney or, in other cases, with a solid non-disclosure agreement (NDA). You run the risk that someone may beat you to the patent process. If they have a good patent attorney on their side, it could jeopardize your ability to receive a patent even if you do possess some prior work.

What to do if you’ve already told people about your idea without a confidentiality or non-disclosure agreement? Get an agreement as soon as possible. You may need help with this from an attorney, who can word the agreement so that your idea is as well protected as possible.

If you publish your idea publicly, such as in a printed publication or on a web site, you must apply for a patent within a year, or you will forfeit your right to patent that invention.


Make a Record of Your Invention

As soon as possible, create a “Record of Invention.” This is simply a collection of information that describes and documents your invention(s) and the process in as much detail as possible. Be sure to include:

  • A written statement of your idea and how it works, including a description of any experimentation that led to design improvements.
  • Drawings, sketches or pictures you have, even if they are only in rough form.
  • Any correspondence about your work, sales receipts from materials, and any other records that might help you prove the facts and dates of your accomplishments.

You should sign and date this record, and have a witness sign and date it as well. If you recall the date when you first thought of your invention, include that in the statement. This record could be important if you need to prove the date of your invention.

You can provide this record to your patent attorney as a way to improve his/her understanding of your invention. You can also submit it to the U.S. Patent and Trademark Office (USPTO) under its Disclosure Document Program, where it will be kept for two years pending filing for a patent. Doing so does not protect your idea. It merely establishes a record of your submission.

A Quick Guide to Patents

A quick overview of the patent process:
Key steps you need to know about protecting your idea and tips on how to avoid the scams.

Inventing a new product or process can be a rewarding and highly profitable venture. Indeed, many successful inventors have gotten rich by patenting an idea that turns out to be both viable and marketable. Because of their potential value, good ideas must be protected so they are not stolen and used to enrich someone other than the inventor.

Obtaining a patent is the formal, legal process for securing this protection, and it’s important to know the steps involved. Getting a patent is a complex and detailed process. Because many inventors are not familiar with it, they can be easy prey for unscrupulous firms that charge a lot of money in the guise of helping them patent and market their idea. Unfortunately these firms often deliver little or no real value in return for taking many thousands of dollars from the unsuspecting inventor.

This guide provides a brief overview of the patent process as well as some of the things to look for as you shop for a good patent provider.

Patent Trolls

Fred Wilson, in his respected and widely read blog, devoted to venture capital comments that Patent Trolls are “a tax on Innovation” He says:

There have been good discussions around this issue, both in this post and in the sessions event that the USV weblog posts talks about. At this point, after 22 years in the venture capital business and countless hours discussing this issue, I come out on the side of less patent protection in information technology, no patent protection for software and business methods, and first and foremost the elimination of patent trolls.

Seriously, it's hard not to hate anything called a "Troll"! I’ve never met a Troll I’ve liked.

“Patent trolls” are people or companies who obtain unused patents and sue companies for the only sue patent holders that do not make products but only threaten other companies with patent infringement lawsuits in order to extract money. They are criticized, probably justly, for gaming the system, collecting money without adding value.

But Fred Wilson takes a swipe at individual inventors: 

I am all for trying to protect the small inventor, but a solo inventor who does not commercialize his/her technology does not bring nearly as much economic value (and jobs) to our society as the entrepreneur who actually takes the risk, starts the company, hires people, commercializes the technology, raises the necessary capital, and builds lasting sustainable value.

I’ve never met a solo inventor who doesn’t intend to commercialize their idea. This passage discounts all the obstacles and challenges that a solo inventor faces when commercializing their products.  It can take many years to get something out on the market, and timing is always a crucial issue for the individual inventor. The market may not be right for the product until five years after the patent issues.

This attitude also discounts the numerous times small inventors disclose their inventions to large institutions with the resources to commercialize them, only to have their ideas stolen directly, or modified so slightly as to be obvious from the inventors contribution. A patent is the inventor’s only hope.


I recently spoke with an individual inventor that approached a large consumer products company with a software solution for improving a manufacturing process. The inventor gave the company a solution to a problem that the company had been unable to solve on its own. Unfortunately the inventor had not filed a patent application on his idea. After filling out multiple forms describing the idea in detail, and assuming the company would hire him for the implementation, the company offered a ridiculously low price contract with the inventor for providing the service, and then told the inventor that they could outsource the service to another provider in India at a much lower cost. As a patent attorney I hear these stories monthly.


So how did the inventor not create economic value? The inventor solved the problem that created value for the company. That idea was eventually implemented and saved the company many dollars in production costs. If the inventor had had a patent, then the inventor had a better shot at sharing the economic benefit with the company. All his time and effort, and nothing to show for it. He won’t be innovating for this company any time soon.  Definitely a "lose-lose" outcome.


In most cases where an independent inventor holds a patent covering technology utilized by a larger company, the inventor really doesn't have much interest in obtaining an injunction.

The inventor only wants to share reasonably in the value created by the idea. If the inventor commercializes herself, then she takes more risks but typically gains more if successful, which is significantly more than if she just pursues a license.


Engineers at large companies often review the patent literature for ideas to help solve problems. It’s also not unheard of that some corporations often ignore patents owned by small inventors and rely on their superior resources to overcome patents held by small inventors whether they conclude they are invalid or not. Maybe those ugly Patent Tolls just level the playing field a bit….