Invention Help Guide

From a Baton Rouge Patent Attorney

Inventors often don’t know how to get the most for their money when seeking patent protection.

This guide will help you (1) understand basic patent concepts, (2) determine if your invention is new, and (3) prepare for a productive initial consultation with John Edel, a Baton Rouge Patent Attorney, or any other patent attorney.

You will learn a simple Google Patents search strategy to turn four terms or phrases into thousands of relevance sorted results and many other tips.

John Edel
Baton Rouge Patent Attorney

Industry Experience | Former Patent Examiner
10+ Years Patent Experience

(225) 302-8559 | john@edelpatents.com

Flat fee pricing is just a phone call away.

Disclosures are Dangerous!

You can’t get much more upset that an inventor who just found out they ruined their chance at a patent. More times than not, that inventor has a disclosure problem.

Secret inventions don’t have disclosure problems

Avoiding disclosure problems is simple. Don’t disclose your invention until your patent applications are filed.

Anything you say can and will be used against you in a court of law.

– Miranda Warning
(Until you know how a disclosure effects you it is better to be safe than sorry)

The US patent Statute 35 U.S.C. 102 lays out the basic rules for what can actually be used against you.

A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention

Excerpt from 35 U.S.C. 102

But …

Confidential disclosures are not generally considered “available to the public”, so non-disclosure agreements may be a good way to manage disclosures that cannot wait for a patent filing.

None of that matters if your invention isn’t new. …

Is My Invention New?

Novelty is measured from the application filing date. If you have not filed a patent application yet, your application will be compared against the body of patent and non-patent publications in the known world.

Don’t wait on the Patent Office to do this comparison. The best way to find out if your invention is new is to do a search. In a patent search you enter combinations of invention features to see if someone something similar is already out there.

Patent Search Tools

Google Patents Search

Simple
Fast
User Friendly

Google Patents

United States Patent and Trademark office (USPTO) Patent Search

Boolean Searching
US Only

USPTO

Espacenet

European Patent Search
Broad Searching
Good Classification Searching

Espacenet

Quick Google Patents Search

Follow the instructions in the video for a quick patent search technique using Google Patents.

Professional third-party search?

Whether you search or not, it is a good idea to at least consider getting a professional third-party search or having your attorney do some searching for you. The more time and resources you spend looking for prior art the more likely you are to find the best prior art.

You want to find the best prior art (closest document) for two reasons:

1. If you find the document that proves your invention is old you can save a lot of money.
2. If you find the closest document, but your invention is still new, you can write your application to make a patent grant much more likely.

Remember not to lose confidentiality along the way. …

Confidentiality

Confidentiality is exceptionally important prior to the filing of a patent application. (see “Disclosures are Dangerous!” above)

Can I trust an attorney with confidential information?

When a Baton Rouge patent attorney receives confidential information for the purposes of giving a client or potential client advice about an invention, that information is automatically treated as confidential based on both state and federal ethics rules.

Outside of an attorney-client relationship there is no such guarantee. Nondisclosure agreements can be used to manage confidential disclosure outside of the attorney-client or attorney-potential-client relationship.

Types of Patents

Plant Patents

Protects an Asexually Reproduced Distinct and New Variety of Plant

Relatively Inexpensive Compared to Utility

Utility Patents

Protects any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof

Relatively Expensive to Obtain Compared to Other Types

Design Patents

Protects the Ornamental Appearance of an Article of Manufacture

Relatively Inexpensive Compared to Utility

Provisional v/s Non-Provisional

Utility patent applications may take two forms, Provisional and Non-Provisional.

provisional patent application

(A ‘Get Your Foot in the Door’ Patent Application)

Lower Formality Requirements
Lower Attorney’s Fees
Lower USPTO Fees
No Formal Patent Examination
Expires after 12 Months
Does Not Directly Result in a Patent Grant

Non-provisional patent application

(A ‘Genuine Request for a Patent’ Type Application)

Higher Formality Requirements
Higher Attorney’s Fees
Higher USPTO Fee
Is Examined by a Patent Examiner
Must Engage in Examination to Keep Alive
Can Result in a Patent Grant

When to Seek Investors

If you take seriously the need to avoid disclosures, seeking investors before an application is filed can be difficult.

After a patent filing is a much better time to seek investors. But if you cannot wait, nondisclosure agreements are a way to navigate the pre-filing challenges relating to investors.

Prototype needed?

Prototypes are not generally need to file a patent application, but you do need to be able to explain how to make and use the invention to your attorney.

Just because prototypes are not necessary, does not mean that they are not valuable. Prototypes can help you better understand the best version of your invention and help you understand what does and doesn’t work.

How long does it take?

It can take 2 to 5 years to get a patent granted from the application filing date. But you don’t need to wait until a patent is granted to start commercializing.

The fact that the patent process is a lengthy process can be a significant financial benefit. If it takes 18 months to get the USPTO’s first office action, then that is a great time to evaluate whether the invention is commercially viable. If you are able to determine the commercial viability in that window of time, your decisions for the first office action will likely be easy. In other words, you would not spend additional money chasing after an invention that is not commercially viable. On the other hand, if you have a growing business by the time the first office action shows up fighting for your potential patent rights may be an obvious choice.

How much does it cost?

Most of the cost of a patent is attorney’s fees. Attorneys generally do not publish their rates, but you can gain a lot of information fast by talking to an attorney. Here are some of the best questions you can ask:

1. What is your hourly rate?
2. How much do you typically charge for a non-provisional patent application?
3. How much do you typically charge for responding to an office action?
4. Do you offer fixed fee services?

Answers to the above questions should give a quick frame of reference for what you might be getting into. Just remember that every application is different, and every attorney is different. Also remember that if the scope of work starts to expand your bill will probably start to expand also.

Finally, not all attorneys are equally skilled in getting patent examiners to agree to grant a patent. The difference between 2 and 5 office action responses can easily be $10,000. Ask your potential patent attorney how they work toward a patent grant without too many office action responses. This process is generally poorly understood by clients but has a lot to do with the total cost that clients pay for patent work.

Are You Ready for a Consultation?

When you talk to an attorney you can find out:

• Cost Information
• A better idea of what to expect

What do you need for an in person consultation?

The two things most helpful in an initial consultation are:

1. Whatever drawings and explanation will help you explain your invention to the attorney.
2. The best information you have about the closest prior art. (i.e. a document you found in your search)

#2 is particularly important if you care about the answer to the question “can I get a patent?” Why? That is the same type of information an examiner would use to determine if you can have a patent.

When you meet with an attorney you can find out:

• How the patent office might treat your invention
• A potential path forward for seeking patent protection

Is an invention ready for patenting?

Do you need a Prototype? Drawings? Experiments?

You don’t need a prototype, drawings or completed experiments to start working with an attorney, but drawings will probably be made in the patent application process.

The big Test:

Prototypes, drawings and experiments are secondary to the real requirement …

A patent application must teach how to make and use the invention.

Paraphrase of 35 U.S.C. 112

What are the steps in the application process?

Every application is different, but below is an example of some significant steps for how a non-provisional application might progress to and through the USPTO.

• Inventor does a brief patent search
• Initial phone consultation with attorney
• In person phone consultation with attorney
• Attorney hired through engagement letter
• Upfront fee is collected
• Applicant provides a full disclosure of the details of the invention
• Optional additional patent searching Attorney prepares a draft of the application
• Attorney and client work out the final details for the application
• Attorney files the non-provisional application
• 18 month wait for examiner to take up the application
• Examiner begins the prosecution phase of the application by issuing an office action rejecting all claims (the most common response from the patent office)
• Applicant replies to the office action both amending claims and making arguments as to why the invention is new and deserves a patent.
• Examiner issues a final office action rejecting claims and objecting to claim with an indication that some claims may be allowable if appropriately amended.
• Applicant replies to the final office action with appropriate amendments seeking issue of certain claims.
• Examiner issues a notice of allowance requiring the payment of an issue fee for the granting of the patent.
• Applicant’s attorney pays the issue fee.
• The patent grants.

There are so many variations and potential complications in examination that the bullets presented in italics are far more speculative than the earlier bullets.

Can I use an invention submission company?

I have never had a client say they were happy that they used an invention submission company.

Invention submission companies may be scams, but they are more commonly just horrible value propositions selling wildly overpriced marketing, search and consulting services.

Never Forget:

Invention disclosures can lead to a loss of potential patent rights, so don’t pay someone to ruin you chances of getting a patent.

Edel Patents Office

You don’t have to travel far from anywhere in town to find a Baton Rouge Patent Attorney. John is located just off of Essen Lane.