“I Have a Great Idea for an Invention! Now What?!”

It is a great feeling when you realize that you have the fix to a pestering problem; in other words, you have “an idea for an invention.” This “eureka” moment may come while working on matters that you are highly experienced with or perhaps your ingenuity was sparked by your being new to the technology and, therefore, not indoctrinated into a particular way of thinking about the technology. Either way, the question then becomes: what are the next steps?

The first step should be taking pencil to paper and preparing drawings. This will force you to consider details of your invention as it will be applied in practice; details that may not have occurred to you as necessary to consider at the initial “idea stage.” The drawings should, collectively, depict all necessary aspects of your invention. The drawings do not need to be aesthetically pleasing, but if you are convinced that your artistic skills are insufficient, some inventors enlist the assistance of a graphic designer or a patent illustrator. When you are at the stage of preparing the drawings from scratch, a graphic designer would be the better person to contact. If you already have informal drawings, a patent illustrator may be necessary to formalize the drawings and ready them for submission to the Patent Office. Contrary to what many people believe, a prototype is not necessary to apply for and obtain a U.S. patent.

The next step should be preparing a detailed written description of your invention. Having had the initial idea and then having prepared detailed drawings of your invention, the narrative description of your invention should flow fairly readily at this point. The description should include all variations or embodiments of the invention as well as working examples demonstrating how the invention actually operates in practice.

The third step that I recommend taking to turn your idea into an invention is retaining a patent attorney. A patent attorney will be able to take the information referred to above and, based on that information, prepare the groundwork for the strongest patent possible. The most critical work that the patent attorney will complete is preparing the “claims” section of the patent application. These are numbered sentences appearing at the end of the patent application (and then the patent, once issued) that specifically delineate what the inventor(s) considers the invention. While the detailed written description and drawings may inform how the claim language is interpreted (and the written description is required under the patent laws), the claims are the invention from a legal standpoint. Also, the claims must be adequately supported by the detailed written description and drawings, otherwise the patent application will be rejected; or, if somehow the application manages to make it through the examination process, the issued patent will be vulnerable to being invalidated subsequently. (Approximately 50% of patents that patent owners seek to enforce against infringers are invalidated by the courts.)

Around the time that you contact the patent attorney, you will want to consider whether to file a provisional patent application or proceed directly to a non-provisional patent application. A provisional patent application is less expensive to have prepared and filed, and can be filed more quickly, than a non-provisional application because it does not contain claims. Even though there are no claims in a provisional patent application, the filing of the application still secures a filing date for your invention and your ultimate patent. This filing date is critical because all developments in the field that come after the filing date will not impact the patentability of your invention; but all subject matter that exists prior to the filing date may be used to reject your patent application. A provisional patent application also provides the applicant with the benefit of being able to characterize the invention as “patent pending,” which will make the invention more attractive to potential business partners and/or investors. A provisional patent application, however, is not examined because, as noted, it does not contain claims, and will never issue as a patent. Rather, it serves as a “placeholder” (so to speak) for a period lasting up to a maximum of 12 months. The non-provisional patent application, which will be examined and, if allowed, will issue as a patent, must be filed within this 12-month window of time. Inevitably, therefore, you will need to file the non-provisional patent application and so if you feel as though you are at a stage where you are confident in the utility of your invention, how it will work, and what specifically is new and nonobvious about your invention, it may make more sense to proceed directly to the preparation and filing of the non-provisional application.

Approximately 18 months after filing the patent application (on average), you will receive an Office Action. (This timing can be accelerated with the payment of an additional fee for “Track One” prioritized examination.) In the vast majority of first Office Actions, the claims will be rejected, most commonly based upon disclosures in the prior art. Do not let this discourage you though, as noted this is very common. In fact, if your application was not rejected initially, you might be left to wonder how broad a patent you could have obtained. Upon receiving a rejection based upon the prior art, you may wish to present arguments as to why you disagree with the examiner’s characterization of the prior art or of how the teachings impact the claimed invention, and/or you may choose to amend the claims to address the examiner’s rejection(s). A U.S. utility patent application typically remains pending for approximately 2.5 to 3 years. If and when one or more claims in your patent application are allowed, you will be required to pay an issue fee and then your patent will be formally granted shortly after that. Patents expire 20 years from the filing date of the application. However, patent maintenance fees must be paid 3.5, 7.5, and 11.5 years after issuance, otherwise the patent will be deemed abandoned.