Introduction
Every time a person comes up with a solution to a problem, there is potentially a patentable invention. The United States Patent and Trademark Office has taken an "everything new under the sun" approach to patentability. They are patenting things that are "cutting edge", as far as Canada is concerned, such as: life forms (the Harvard mouse), ways of doing business especially in relation to the internet (Amazon.com, Cybergold.com, and realage.com patents), innovative algorithms in computer software, computer game and board game themes. Inventions do not occur in a vacuum. There is always some background of previous patents that is "prior art". Most patents are granted for incremental improvements. These improvements have commercial value as they provide better performance or lead to a better result.
The Patent Office applies three patentability tests, two of which are very straight forward. Firstly, the solution to the problem must be new. You pass this test if the Patent Examiner is unable to find a single patent that suggests the same solution to the same problem. Secondly, the solution must be useful. You pass this test if the problem is clearly identified in the Patent Application, along with the manner in which your solution solves that problem. Thirdly, the solution must not be "obvious". You pass this test if the Patent Examiner is unable to use the patent office as a library to combine "teachings" from two or more patents to arrive at your invention.
Canada and the United States have a time limit of one year from the date of first public exposure within which to obtain patent protection. Most other countries in the world require that a patent application be filed before any public disclosure has taken place.
Deciding Whether to Patent your Invention
Ask yourself the following questions:
- What problem does this invention solve?
If it doesn't solve a problem it must be protected in a different way—
see inventor's dictionary
- Is this solution one that may meet the three tests of patentability?
(New, Useful, Not obvious)
Selling ideas is like selling wild birds—if you can't cage them, it is difficult
to sell them
- Can I find any similar solution in searches through the publicly accessible patent office databases?
These databases can be accessed through:
- Are there competing technologies that would be equally effective solutions?
Some of my clients discovered too late that they were competing with an alternative technology that was less costly and more effective—if your search reveals a number of patents in the same area none of which appear to be making money—your odds at making money don't appear to be very good.
- Do the potential financial benefits to be gained warrant the effort, expense and risk associated with patenting?
A Canadian patent may cost you $4,000.00-$6,000.00 and a United States patent may cost you $7,000.00-$9,000.00—you don't want or need another expensive hobby.
- Can I do this myself or do I have to "hope" that I can sell or license my invention to a large or medium sized corporation?
There are risks both ways—but trying to get the interest of a large corporation is difficult.
STEPS YOU CAN TAKE TO ASSIST YOUR PATENT AGENT
1. PROVIDING BACKGROUND
Every invention solves a problem. Prepare some background information setting forth what the problem is. Prepare some background information as to what alternative technologies are presently available as “prior art” for addressing the problem and why yours is a more attractive solution.
2. PROVIDING DRAWINGS
There is a duty upon every person applying for a patent to describe their invention in such a full and complete manner as to enable a person "skilled in the art" to make and use it. We are not to provide fabrication drawings. The patent office is not concerned about exact dimensions and tolerances. The patent office does not want to be shown a plurality of parts drawings. What you do need are as many exterior views as may be required to show important exterior features and as many section views as may be required to show important internal features. With some key assemblies or some key components, individual parts may be shown. Where there is movement, simplified drawings should be provided to show the various movements. With a method patent, the drawing should show the various steps in the method—preferably one drawing for each step. For a kit patent, the parts in the kit should be illustrated together in one drawing and then the steps in the assembly of the kit should be illustrated in individual drawings. You should provide the patent agent with two sets of drawings. One set has no markings and is for the patent agents use in preparing the patent application. On the other set the parts should be labelled, along with any explanatory notes you feel might assist the patent agent.
3. CLAIMING THE INVENTION
The job of a patent agent is to "claim" the invention. To do a proper job he must examine the invention and break it down into essential components and non-essential components. All essential components are set forth in Claim 1. Without those essential components the invention will not work at all. The non-essential components all are enhancements that improve performance. For example, although an automobile will operate without any windows, it is preferred that windows be provided for the comfort and safety of the passengers. You can assist the patent agent by indicating those features that you feel are non-essential and stating the reason you chose to include them.
4. DEADLINES ARISING FROM PUBLIC DISCLOSURE
Some countries do not allow you to obtain a patent if you have publicly exposed your invention prior to applying. Canada and the United States allow you a period of one year from the date of such public disclosure to apply for your patent. You should advise the patent agent as to whether there has been any public disclosure. If there has been a public disclosure you should notify the patent agent as to the date of that disclosure, so he can calculate the one year deadline he must meet. If there has not been any public disclosure, you must notify the patent agent in advance of your publicly disclosing the invention.
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