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During the beginning of the patenting process, inventors should always search for patents that already exist and closely resemble their invention. To prevent wasted time, effort, money, and possible legal issues in the future, see if the new invention is patentable, and then follow up that action by researching other patents. It is an inventor's legal obligation to conduct a patent search and submit their findings to the U.S. Patent & Trademark Office upon applying for a patent.
When patenting a product, two searches must be performed: a prior art search followed by the actual patent search. Similar academic and technological ideas and inventions with existing patents must be documented. These documented findings must be submitted along with your patent application. If an inventor fails to submit this information, or any other information they may have knowledge about, on the invention they plan to patent, he or she may be given a lawsuit on charges of fraud on the patent office, also called inequitable conduct.
By submitting prior art and knowledge of similar patents, as well as showing the contrasting results of an invention's results, an inventor has a legal presumption of a valid invention eligible for patent. It is extremely difficult to discredit the inventor's product and many challengers will perform patent searches on prior art that was not included in the inventor's initial art search. When inventors seek funding, their investors will most likely perform prior art and patent searches as well as distinguish the invention from prior art to strengthen it from any legal challenges. In short, a wise inventor should always submit all findings of similar prior art and knowledge with his or her application so that their invention will be given an advantage in legal issues concerning its originality.
It is advisable to always perform prior art and patent searches before applying for a patent. The patent search is a tremendous investment that can assist in strengthening the actual invention by allowing an inventor to make improvements on his or her invention to further distinguish it from previous similar prototypes. Patent searches may also assist an inventor on researching companies and firms that would license his or her patent.
If an inventor is barely starting his or her business venture, the inventor should hire a patent agent or attorney to perform the appropriate searches, at least, until more experience is gained where the inventor can perform this task by his or herself. The use of a legal aid should also be treated with extreme care, and an inventor should make sure the legal aid is trustworthy and professional enough to not steal the patent idea or disclose any of the product's information into another person's hands. A confidentiality agreement should be made before hiring a legal assistant.
The more cost-efficient way of performing patent searches is to personally conduct the search. An inventor may also do this before hiring a legal aid. Patent searches can be performed online by using the U.S. Patent & Trademark Office and its link to the Public Search Room. To find aids and references locally, an inventor should research patent agents. Agents and attorneys who are registered by the U.S. Patent & Trademark Office and have upstanding reputations should be considered before hiring an agent or attorney. In addition, an inventor should find the best prices, but be aware of extremely low costs. Extremely inexpensive patent agents have been proven in the past to perform less than mediocre searches, along with providing falsified information. Again, this can lead to a costly lawsuit. To gain a better background understanding on any potential patent agent or legal aid, an inventor should contact the Better Business Bureau or the State Attorney General's Office to see if former complaints were filed against the agent or the agent's firm.
There are several initial low-cost steps you can take to protect your ideas and inventions. The United States (and Canada and Mexico) are "first-to-invent" countries, not "first to file". Thus, the inventor who can prove he/she was the person who came up with the idea first, is the one who will be considered the first, true inventor. An invention disclosure is the first step towards establishing your first-to-invent rights. It establishes the "date of original conception". An invention disclosure should adequately describe your invention and it's unique features. It should then be signed by you and validated by one or more signatures of credible witnesses. This means, by those individuals who understand the inventive matter you are disclosing and do not stand to gain from the project, such as a business partner, wife or husband. A notary public may also validate your disclosure. Don't mail the disclosure to yourself (sometimes called a "poor man's patent") as this has been defeated in court. Next you want to follow through and "reduce your invention to practice". In other words, show it works the way you say it does. Reduction to practice is usually accomplished by building a functional prototype or showing with sufficient drawings and specifications how it works. Otherwise, the filing of a patent application will be considered the legal date an invention was "reduced to practice". The reason reduction to practice is important is that if you have to legally prove your first-to-invent position, the date you reduced it to practice will become more important than the date of original conception. It will prove your "diligence" in following through.
The best way to verify reducing your invention to practice is by using a Scientific Journal. A glue-bound, page-numbered journal is best to record your daily activities, who you've talked to, drawings you've made, alternative uses and so on. It can become a valuable tool towards verifying your paper trail should you ever need to. There is one other factor that can affect your first-to-invent rights. If an inventor has a great lapse of time during the initial development it may be considered "abandonment". Time periods may be relevant, but you'll want to be able to prove you asserted a reasonable effort (diligence) in developing your concept. Obviously, you would be in a very difficult position if you had discovered your concept years ago and had done nothing for 3-4 years. Meanwhile, during the past year another inventor made the same (or similar) discovery and diligently proceeded to develop it into a viable product and filed a patent application. The recent inventor would most likely be considered the first, true inventor. | Provisional Patent Applications | |
One other tool you may use is to file a provisional patent application, which allows you to post "Patent Pending" on your inventions for a period of one year. But you must file the permanent application within one year or lose the priority date. Provisional patent applications are well-tested and commonly used by experienced inventors. They also protect your international filing rights providing you have not publicly disclosed your invention prior to filing. Learn more about provisional patent applications and how to file one for $80.
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