Home Syracuse University College of Law NYSTAR - New York State Foundation for Science, Technology & Innovation
Search
   Go

INVENTION PROCESS

So you have an idea and want to get a patent? There are a number of things that you need to know about the invention and patent process that can help you focus your efforts and overcome the potential hurdles.

The first thing to know is that a pure idea cannot be patented. Many people have great ideas but are not be able to put those ideas into a package appropriate for a patent because there is no invention, only the beginnings of a concept. To be sure, an idea is the critical first step in the invention process. After an inventor comes up with the idea or concept, it is necessary for the inventor to develop a game plan calculated to take the idea through to fruition. This idea and game plan together form what the law calls conception. Conception is important in patent law for two reasons: (1) conception marks the first step in the invention process; and (2) in the United States, the first person to invent will ultimately receive the exclusive rights to a patented invention.

Once there is conception, it is important for the inventor to be diligent in defining and experimenting with the invention. Generally speaking, conception without diligence can cause the first person who invents to lose the right to the invention, assuming someone else invents after you but files their patent application first. The law recognizes that so-called "garage inventors" cannot quit their day job, but the law will also require proof that you are consistently moving forward and not shelving the invention for periods of time in favor of other endeavors. The lesson here is that an inventor must move swiftly once you he has an idea and game plan.

This leads to another important consideration, which is documentation and proof. In some cases, it is necessary to for an inventor to be able to prove he was working on his invention in a diligent fashion. In other cases it will be important to demonstrate what was known by the inventor at a particular point in time. It is critically important to understand that the law will not accept the word of the inventor alone. In every venue, an inventor’s testimony alone is considered inherently unreliable. If, however, there is corroborating evidence to support the inventor's testimony, courts will admit the testimony. Hence, it is necessary for an inventor to document work and progress on the invention.

Detailed documentation is necessary for many reasons, not only to demonstrate diligence. The type of documentation an inventor needs must be concrete. For example, if you purchase items, keep your receipts and write down exactly what was purchased and when it was purchased. Also try and keep a regular schedule. If other persons can testify that you worked in your workshop for an hour or two every night after dinner, such evidence could be helpful. Most importantly, keep an invention notebook! The invention notebook should be like a diary of what you did and tried and when and how it went and what you are thinking about doing and trying and why. Be as complete and specific as you can be. One thing that is certain is that courts expect that inventors will document everything they do and try. This is true because there is no way to reliably remember everything you did, so most inventors will write things down so they can keep things straight in their own minds. The importance of a detailed invention notebook cannot be overstated. It is also a good idea to periodically have the invention notebook notarized so that it can be shown that some independent individual who is qualified under the law to administer an oath has seen that you have documented your progress. It is not important that this independent party understand what is written in the notebook, although that would be ideal. All that is necessary is that someone who can legally administer an oath, such as a notary, a justice of the peace (in some states) or an attorney (in some states) can verify that as of a certain date and time an invention notebook was presented. It is best to have each page signed and/or stamped.

It is important to understand that notarizing, for example, does not create any property interests. The inventor who has had a notebook verified by an independent individual capable of administering an oath does not mean the invention has been protected. What notarizing does do, however, is make it difficult if not impossible for someone to claim that the inventor created the invention notebook after the fact. Remember that in some cases, particularly when invention is being made in cutting edge areas, there are many other individuals and teams working to solve the same problem. Because the United States is a first-to-invent system, the rights go to the inventor(s) who is first to invent. In such a race, it may be necessary to proof exactly what was known and accomplished and as of when. This is why the invention notebook together with independent verification is considered essential.

Many idea submission companies and idea promotion companies will tell inventors that they should mail a description of their invention to themselves or to family or friends. It is important to know that mailing things will provide absolutely no protection whatsoever. Assuming that you do not open the envelope, and the envelope is appropriately post marked, all that such a mailing will do is prove that as of the postmark date the inventor wrote what is represented on the pages included. While this is not necessarily a bad idea, such mailing creates no property rights and lacks the verification of an independent third party, as would be the case if the invention book were notarized.

The most important evidence an invention notebook must contain is a detailed explanation of when the inventor came up with the concept (idea + game plan) and whether the inventor was diligent. If an invention really exists it should be relatively easy to prove diligence, assuming careful entries have been preserved. Inventors should not skimp on the invention notebook, and should not skimp on the details written in the invention notebook. Composition books are only $1 each, so fill them up and keep good records. After contacting a patent attorney, inventors who keep detailed records will discover that within those records there are multiple inventions, and at the very least a wealth of information that will be useful in the future.

One further comment regarding invention notebooks needs to be made. It was previously suggested that inventors use composition books. The reason for this suggestion is that removing pages from such books is difficult. Stay away from spiral bound books because with wear and tear pages have a way of falling out. Also, stay away from loose leaf pages. It is easy to insert pages out of order, which means that if proof of a particular chronological order becomes important the invention notebook may have inherent credibility questions. Finally, if you are going to use a computer, it is absolutely essential to print out the pages with frequency and have each page individually notarized. This is because it is very easy to manipulate date stamps on computers, and also because it is easy to save over previous work. If you are using a computer do not save over previous work. Each time a saved document is opened save it with a different name. The inclusion of dates into the file name is particularly helpful.

At this point in the process, the inventor now has both the idea and game plan and is moving forward trying to finalize the invention. This process is moving toward what the law calls a reduction to practice. An inventor does not need to have a prototype built in order to apply for and/or receive a patent, but it is necessary for the inventor to describe the invention with enough specificity so that someone who is technically skilled in the area of the invention can understand how to make and use the invention. Reduction to practice, therefore, can occur through the creation of a prototype or a specific and certain definition of the invention. One or the other is required.

Let’s return to the game plan. The game plan is what connects your idea with the reduction to practice. What is needed is the knowledge and understanding of how to take the idea and move forward toward a reduction to practice. The game plan does not need to be flawless. It can and frequently will be modified over time as the inventor begins conducting research or otherwise works on the invention. The game plan, however, is frequently where many inventors, particularly first time inventors, encounter significant problems. Remember, simply coming up with an idea is not enough. From time to time, every patent attorney will hear from people say: "I have this great idea and I want to get a patent. I just need to find someone who can figure out how to make the product, but if someone could figure out how to make it I know it could make money." This is an example of a pure idea, which is an idea without a game plan. While there is absolutely nothing wrong with more than one person working on an invention, in order to be co-inventors each inventor must contribute to the conception of at least one aspect of the invention. Because conception requires both the idea and the game plan, there is no getting around the fact that all inventors must be able to forward the invention.

To review, the law recognizes that with many, if not most, inventions there will be three steps to the invention process. The idea comes first, followed by the game plan, followed by the reduction to practice. When dealing with some inventions the idea, game plan and reduction happen rapidly. With other inventions there is some time between these steps.

After a reduction to practice is achieved the next step in the process is to determine whether obtaining a patent is the appropriate course of action. Obtaining a patent can be the best decision, and may even be the best business move an inventor could make. Nevertheless, what must be understood is that most patents do not make inventors money. Furthermore, based on what is coming out of the Patent Office these days, the question should not be whether you can get a patent, but rather whether any patent you are able to obtain is worth the investment. In other words, is the scope of protection meaningful? Are you going to actually be able to prevent competitors from making, using, selling and importing your invention? Is there a market for your invention? These and other questions should be considered.

When an inventor is considering whether to get a patent it is absolutely essential to understand the rights a patent will give. A patent will give you the right to exclude others from making, using, selling and importing a product or process that is covered by your patent. Many will say that a patent is a monopoly, or a patent provides a monopoly. This is simply not true. The loose application of the pejorative term "monopoly" to the property right of exclusion represented by a patent is misleading, although given that the United States Supreme Court uses the term in connection with patents it is understandable why and how it has crept into our lexicon.

What a patent can do is allow the owner of the patent right to prevent others from entering a market. This requires a strong patent, not just any patent that you can get through the Patent Office. Likewise, it is necessary to have a product or process that others want to pay for. It is a simple truth that a monopoly can only exist if there is or will be an existing market. To characterize a patent as a monopoly without first questioning whether there is a market for the patented product or process is to put the cart before the horse. Those patents that are litigated are litigated because there is money at stake and, therefore, a market does exist. Nevertheless, there are undoubtedly a large number of patents that could never possibly have any market and could never be considered to yield a monopoly. If you doubt this consider the fact that a method of painting using the posterior of an infant was patented on February 8, 2000. U.S. Patent No. 6,022,219. What a patent can do is provide the opportunity to obtain what economists would call monopoly profits.

Two things are required in order to turn a patent into a highly lucrative piece of property. First, it is necessary to have a patent that adequately covers the product or process that embodies the invention. Coverage in this sense not only requires solid, literal coverage of the invention but also protection broad enough to prevent similar and/or substitute products. Second, it is necessary to have an invention that others will pay for. If an inventor has these two things then there will be a customer base that must come to the inventor for the product. This is, of course, the holy grail of patent law. It can be exceedingly difficult to know if these two ingredients are present, and sometimes even experience patent attorneys and inventors will be wrong. This being true, risk taking is sometimes inevitable. Nevertheless, prior to rushing in head first and applying for a patent these two considerations must be given proper attention.