A guide to using the Patent & Trademark Library
501 Edmon Low Library • Oklahoma State University • Stillwater, OK 74078-1071
The Ten Commandments of Inventing
Ten things you should know about the world of inventing
The Oklahoma State University Patent & Trademark Library thanks the author, Ronald E. Smith, Registered Patent Attorney, Mason & Associates, Clearwater, FL, for his permission to reprint this information.
It takes two to four hours to conduct a preliminary patent search. Please call to make an appointment before visiting the Patent & Trademark Library (405)744-7086. 1.
Don’t draw your invention for the first time in the attorney’s office. Arrive at the attorney’s office with completed drawings that make sense. However, don’t hire an engineer or draftsperson to do the drawings unless absolutely necessary; keep your costs down by doing them yourself. If a patent search shows that your invention is unpatentable, at least you won’t have wasted a lot of money on professional drawings. For the same reason, don’t squander your money on making prototypes either. Again if the patent search shows that your invention was done before, you will have wasted whatever money you spent on building a prototype. The successful inventor spends a very small amount of money before a patent search is initiated. At your first office conference don’t waste everyone’s time by announcing: “ I don’t need a patent search on my invention because I’ve already checked the stores and it’s not for sale anywhere. If my invention had ever been invented before, it would be on the store shelves by now.” That’s ridiculous. Thousands of inventions are never marketed because most inventors have no idea how to market their inventions. At the first office conference, the attorney will recommend a patent search. Don’t argue with that advice. About one-half of all patent searches performed result in finding a preexisting patent on the “invention.” The search results will also help the attorney write the patent applications, if the coast is clear. Do not demand that the search be skipped. Never ask a registered patent attorney: “How do I know you won’t steal my invention?” If you do ask that question, the answer will be, “Because I’m showing you the exit door before you ever show it to me, that’s how you know.” You can’t possibly get a good patent without showing your invention to a registered patent attorney, and you’re wasting everyone’s time by playing cat and mouse. Before you go to the attorney’s office, have two trusted friends (your spouse, your neighbor, anybody you trust) examine your drawings and your written descriptions of the invention. (Preferably the witness should have no financial stake in the invention, to avoid a charge of bias if their testimony is ever needed.) If they understand your disclosure, then ask them to write: “Read and understood by me on the day of , 19 ,” followed by their signature. Obviously, the witnesses should have the technical competency to understand the invention. That’s all you have to do to protect yourself. Do not have the disclosure notarized, because a notarization does not indicate that the notary public has read and understood the disclosure. The notarization merely states that you carried identification sufficient to prove your identity and that you affixed your signature to something while the notary was looking. Do not mail the disclosure to yourself—the disclosure must be read and understood by someone other than yourself. Forget all the stories you’ve heard about having your disclosure notarized and mailed to yourself! Let the inventors who don’t know what they’re doing do that nonsense.
Keep an inventor’s notebook. When you have an idea, write it down and have two trusted friends do the “read and understood” routine described above. As you continue to work on the idea, date your work and have every page witnessed with the “read and understood” notation. If you eventually get a patent and someone infringes your claims, your inventor’s notebook will prove invaluable. The jury that sees your notebook will not think highly of the infringer who has no such proof of independent creation.
Continued on Page 2
The Ten Commandments of Invention
Page 2 5.
Make a full disclosure of your invention to your patent attorney. Don’t hold anything back. If critical information is omitted from a patent application, any patent resulting there from is invalid, i.e., worthless. Tell your patent attorney of all the prior art of which you are aware. If you know of prior art and fail to disclose it, hoping to fool your attorney and eventually the Patent and Trademark Office (PTO), you will have successfully shot yourself in the foot and your patent will be invalid. There is a section in every patent application entitled, “Description of the Prior Art.” It had better be complete. Read your patent application after the attorney has prepared it. Don’t assume everything is okay. When you sign your patent application as the inventor, you are telling the PTO: “I have read and understood this patent application and it fully and accurately describes my invention.” Don’t hesitate to ask the attorney the meaning of any unfamiliar word or phrase. Patent applications are full of unusual phrases, and the attorney will be surprised if you don’t ask, for example: “What does ‘orthogonal’ mean?” or, “What’s an imperforate bottom plate of predetermined geometrical configuration having sidewalls mounted about the periphery thereof, projecting upwardly therefrom, defining a cavity there between?” (By the way, that’s a cup.) Don’t harass your attorney with telephone calls during the preparation of your patent application. Make your full disclosure and then shut up. Otherwise, you will be billed for telephone calls (and attorney time by the minute) while you are inquiring about the progress of your application. Repeated calls slow down the work and make the task take even longer to complete. Your attorney will probably tell you that the job is not a simple task and will take 3 to 4 weeks. You’re wasting everyone’s time by calling during that time period and asking for progress reports. If you flippantly ask: “Why does it take so long?”, you are only showing your ignorance. When you see the completed application, you’ll know why it took 3 to 4 weeks.
Expect that the first communication from the PTO will be a rejection. Very few patent applications (only about 10 percent) are approved without an initial rejection. It is almost impossible to write a “perfect” patent application. Almost always, the PTO Examiner will find an old patent that was not uncovered by the patent searcher. (After all, the Examiner starts with your search results and spends hours extending that search.) However don’t panic when the expected rejection arrives. Meet with your attorney, discuss the prior art cited in the rejection, and let the attorney take it from there. According to PTO statistics, about 90 percent of all patent applications are initially rejected, but about 65 percent are eventually awarded. The attorney will bill you for the amendments needed to get the patent issued. Don’t ask: “Why didn’t you do it right the first time?” In fact, if your patent is allowed without a rejection, the PTO is saying: “If that’s all you want, you can have it.” If your patent application is allowed without a rejection, that’s when you ask your attorney: “Why didn’t you do it right the first time?” A patent awarded without objection indicates that the claims of the application may have been too narrow. Your attorney wants to draw rejections. Accordingly, he or she will ask for broad patent protections and let the PTO whittle the claims down to size, because filing a narrow claim to begin with is not considered good practice by good patent attorneys. “You’ll never know what you could have got if you had asked for more.” The first rejection indicates your attorney did something right. see your attorney for that first time. When you call for an appointment, ask the firm to send you one. It will speed things up and give the attorney information he or she needs. By arriving fully prepared, and by not asking the questions of the uninformed, you are saving yourself additional money.
10. Complete an invention disclosure form before going to
11. To the foregoing, I will add the eleventh Commandment:
“Keep on learning.” Knowing the first ten gives you a broad overview of what you need to know about the world of inventing. The world of inventing is vast and no one knows everything. Join an inventor’s club. Read books about inventors, how to market them, how to raise money, etc. Don’t expect your attorney to handle your marketing.
6/05/p:\patent handouts\variousguides.indd\page 2-3