The Invention Process

The invention process can be broken into the five basic phases. A discussion of the dilemmas a frugal independent inventor faces when addressing each of these phases is presented. Also given is the approach I advocate for best overcoming these dilemmas.

Phase 1: Invention Conception, Development And Evaluation

  1. Develop inventive concept (the million dollar idea)
  2. Construct an actual and/or paper prototype of invention
  3. Evaluate marketability and patentability of idea
    1. Ask others (in confidence) to evaluate
    2. Do initial prior art search (PP*)
    3. Do market search and research for profitably of invention

Dilemma 1-How To Do Initial Prior art search And Proper Evaluation While Limiting Cost

Prior art searching is within most inventor’s’ capabilities. Who is better capable than the inventor in determining whether a patent or commercial product is similar to her own invention? However, interpreting whether her invention is patentable based on a similar prior art patent or commercial product requires considerable expertise. Of particular importance is whether her invention can overcome the prior art by proper claiming.

The dilemma is: how to do effective prior art searching and evaluation at an acceptable cost.

Solution 1-Inventor And Practitioner Share Search And Evaluation Effort At A Fixed Cost

Inventor does preliminary Initial search. Practitioner refines and evaluates results at a fixed, negotiated cost. Outcome of Phase 1 is a decision of whether to invention is patentable and marketable.

Phase 2: File Patent Application(s)

  1. File provisional patent application (PP*)–optional
  2. Refine inventive concept
  3. Revaluate marketability of invention
  4. File nonprovisional patent application (PP*)

Dilemma 2-How To Constrain Cost Yet Get Proper Protection

This phase is, in principle, straightforward. The inventor determines which steps in Phase 2 she wishes to do herself. After doing all the preliminary work, she then negotiates with the practitioner a mutually agreeable price to use her services to complete the application for filing.

The dilemma here is deciding how best to handle this division of labor between inventor and practitioner based on the inventor’s financial resources, skills and available time, and what can be negotiated with the practitioner.

Solution 2-Division Of Labor, Negotiated Services With A Cap On Maximum Cost

The key here is to find a patent practitioner as early as possible who will work with the inventor so that her objectives are met. To limit the cost, the inventor should do as much as she can do on one’s own; however, there are certain items that are best done by a professional practitioner. Here is my cut at a breakdown:

Done by inventor whenever possible:

  • Write specification first draft
  • Write first cut at claims
  • Prepare informal drawings and formal drawings if skilled with either freehand or drawing software
  • File application

Best done by a practitioner:

  • Review of relevant prior art to address patentability issues

Requires expertise to determine how prior art issues can be overcome

  • Review of disclosure to address adequacy of content and restriction patenting issues
    Requires restriction patenting experience
  • Review/editing/rewriting disclosure as needed

Experience matters

  • Final writing/rewriting of claims

Critical for getting patent and protecting patent after issue

  • Review of claims by an independent experienced agent or lawyer

Always a good idea

Phase 3: Prosecute The Nonprovisional Application

  1. Prosecute nonprovisional patent application with the USPTO (PP*)
  2. Pay Issue Fee so patent issues (PP)

Dilemma 3-How To Constrain Costs Of An Open-Ended Process

This phase is has its own unique challenges. The amount of time and effort involved in prosecuting the application is open-ended and cannot be determined in advance. Some applications become allowable and will issue as a patent with minor or even no changes. This will involve minimal practitioner effort. On the other hand, applications may require extensive revisions including filing continuations, divisionals, amending claims, etc. before the patent issues. If the practitioner is working in this stage at an hourly rate, limiting the cost becomes problematical. Many independent inventors, satisfied with the initial patent application preparation and filing costs, are totally unprepared for the unbudgeted charges during this phase, which can significantly exceed the Phase 2 filing costs.

Negotiating this stage with a patent practitioner at an acceptable cost is the major dilemma.

Solution 3-Agree With The Practitioner In Advance Of Prosecution Both an Initial Fee, an Hourly Fee And a Fixed Maximum Cost

The standard way of handling this type of open-ended situation in other domains is through insurance – e.g. life, home, auto, and medical. However, I am unaware of any insurance offered for patent application prosecution costs.

The solution to this dilemma is for the patent practitioner to self-insure the prosecution phase for the individual inventor, averaging prosecution costs over all clients.

At application filing time, the practitioner will negotiate with the inventor an initial fee, a fixed hourly rate and a fixed maximum cap of what prosecution will cost, based on the practitioner’s level-of-effort expectations. Then, regardless of the effort required to prosecute the patent application, this cost schedule will be adhered to.

Phase 4: Sell The Invention

  1. License invention (PA*) or manufacture and sell yourself

Dilemma 4– How to develop, manufacture band market your invention

This is an area in which most independent inventors have little experience. Some will pursue this themselves; others will look for help from other organization.

Solution 4-Do it yourself or get Outside Help

This is not an area in which I have expertise. I recommend you examine the Good Guys list of companies in the resource section. There are many other organizations, which will develop and market your invention for a fee. A good resource for identifying these organizations is the magazine Inventors Digest.

Phase 5: Protect the Issued Patent

  1. Address patent legal issues (infringement, patent challenges) (PA)

Dilemma 5-Potentially Expensive Litigation Requiring Patent Attorney

The 5th phase is especially challenging. A patent agent cannot litigate infringement issues in district or federal court; only a patent attorney can do this. Furthermore, patent litigation can be very expensive–at times running into the millions. How to handle this phase is the major dilemma.

Solution 5-Get A Patent Law Firm To Accept Litigation On A Contingency Basis

If the patent and the claims are properly written, and a competitor infringes on the inventor’s patent, then the inventor can seek a patent lawyer or law firm to take over the patent infringement case on a contingency basis. Googling the two words patent and contingency yields over a million of responses. One such promising organization is the Intellectual Property Contingency Consortium, there are many other law firms and organizations to contact.

*In the above, PP refers to items where one might want to use the services of a Registered Patent Practitioner (Patent Agent or Patent Attorney); PA refers to litigation that must be handled by a Patent Attorney.

The above is the basic outline of the inventing stages. Variations and iterations of these phases are common. For example Phase 4 is optional; on the other hand, one can file more than one provisional application that provides priority dates to a given nonprovisional patent application. Refer to Pressman for the details.