Patents 101: Just relax, it doesn't hurt that much :-)
Welcome to the scary, frustrating, nerve-wracking, insidious, and confusing world of patent submission.
Ok, so it’s really none of those things. Seriously. I am going to step you through the way ‘I’ do it, Inventors all have our different ways.
And you get a pony at the end!
This article is based on my experience and knowledge within IBM, and disparate external sources including, but not limited to: IP.com, and USPTO.com. The most current, and single source of truth, is always your IP Legal within your company, or USPTO, and you should confer with them regarding any legal questions, major actions, or decisions.
I am NOT an IPL Attorney, nor do I play one on tv, I am a UX / Visual / Research Designer/Lead within IBM since 1997, currently in the Analytics Safer Planet division.
It was different back then. Patent submission wasn’t widely publicized. I was a bit naive and didn’t think patents were attainable for a non-developer within IBM, much less a Designer. So, I didn’t submit my first patent until 2006, 9 years after joining IBM, at the prompting of a UX colleague/Master Inventor, and having attended an IPL Patent session.
Really?! I can haz?!
Well, the rest is history. My first patent was issued in 2008, I attained my 1st Plateau in 2012 and 1n 2016 I reached my second patent plateau level, and 1 patent away from Master Inventor eligibility. I hold 5 patents and 9 publishes, and a handful of submissions always in queue.
That being said, I have MANY submissions that were closed (without patent/publish). It’s a learning experience, and experience is always good. Don’t get discouraged, it makes you a better Inventor.
Let's get started!
ALWAYS check with your employer or USPTO on policies and filing procedures, my experience is from within IBM and some statements may be specific to IBM only.
What is a patent, really?
In a nutshell, a patent is a limited government-granted monopoly that prohibits others “from making, using, offering for sale, or selling” an invention throughout the United States and or worldwide.
And….it is pretty damn impressive to have on your resume!!
How soon should I submit?
As soon as you are ready to submit!
In the past, the United States granted patents to “the first to invent” a new invention. So if you had historically captured data (timestamps, documentation) and someone filed before you (for the same idea), but you had the idea before they did-and can prove it, the patent could be rescinded and reissued to you.
That is no longer true; Congress passed a law in March 2013 after the enhancement of the AIA, to grant a patent to “the first to file” for the patent.
In other words, if you fail to patent your invention and someone else files for a patent first, for the same idea, the first-filer may be able to legally prohibit you from taking advantage of the invention!
Who will own my patent?
If you submit from within your company, your company will hold the patent, but you will be listed as the inventor. If you submit outside of your company, you will be the patent owner. NOTE: You will need to contact your company to fully understand the IP rights you have and don't have as it applied to patent filing and IP (Intellectual Property).
Can I rescind / decouple a patent or idea from my company?
You will need to contact your company and review their policies on this.
Can I submit a patent outside of my company?
(aka: do they own my head?!)
You will need to contact your company and review their policies on this.
How do I know if my invention is ‘novel’ enough?
I am glad you asked! Ok, here’s the skinny.
‘Yes’ must be the answer to all of the points:
Is it NEW?
Did you invent it?
Do you own it?
Is it non-obvious?
Is it useful?
Is it within the patent categories?
Is my idea new?
An idea must be “novel” in order to be eligible for protection.
In short, this means that the subject matter of the patent must not have been publicly disclosed prior to the date of the filing.
This requirement is strict. Inventors have been denied patents because the invention was previously disclosed to the public, the invention was made available for use to the public, or the invention was disclosed in a prior patent application.
NOTE: If your invention was disclosed in a user feedback session/demo with your company and NDAs in place, this is not the same thing as ‘disclosed to public’, check your companie's policies. HOWEVER, you should strive to submit before your demo, or asap after the demo in order to secure your invention(s) as soon as possible. That being said, do NOT abuse this method to always fast-track your inventions, be mindful and thoughtful of your IPL time and resources.
Did I invent it?
A patent can only be applied for in the name of the actual inventor or co-inventor(s) of the invention.
(It is not enough to make a financial contribution to a product to be considered the inventor. ‘Enablement’ does not equal IP contribution)
This is true even if the inventor was employed by another person or company to create the invention. Although an employer will often own the resulting patent, the patent will be issued in the name of the actual inventor. Contact your IPL if you are unsure.
Do I 'own' it?
Just because you invented the underlying invention, that doesn’t necessarily mean you own the patent.
This is especially true if the inventor’s employment contract contains a pre-assignment clause or if the patent was invented as part of the inventor’s job. In such cases, even though the patent will be issued in the name of the inventor, the employer may have contractual rights to the invention.
In fact, if the inventor attempts to sell, license, or use the invention without the employer’s consent, the employer would probably have an action for breach of contract against the inventor.
Is my idea non-obvious?
An invention must be “non-obvious” in order to be eligible for a patent. The test here is whether or not your invention would seem easily knowable to a “person having ordinary skill in the art” in which the patent in intended.
In other words, it can’t be something that people already know about, in that field.
Courts examining whether an invention is obvious will look at the scope and content of the existing knowledge and technology in that industry, the level of what constitutes ordinary skill for that industry, the differences between the claimed invention and what’s already common in the industry, and any other objective evidence to suggest that your new idea is not obvious.
Is my idea useful?
Unlike a trademark or copyright, an invention must be “useful” to be eligible for protection. An invention meets this requirement under U.S. law if it provides some benefit and is capable of use.
Although most inventions will be able to meet this requirement, devices such as a perpetual motion machine have been considered non-useful and not eligible for patent protection.
Is my idea within patent categories?
Not every invention is eligible for a patent. In fact, some things are specifically excluded from patent law. For example, US law does not provide patents for laws of nature, physical phenomena, abstract ideas, and non-useful objects.
However, patents are available for processes, machines, articles of manufacture, and improvements to any of those classes so long as they meet all of the other qualifications.
How can I substantiate these 6 points?
Research. Research. Research.
Here are some sites to search ‘prior art’ (previously filed patents):
Are there different types of patents?
Yes. The U.S. Patent and Trademark Office (USPTO) issues several different types of patent documents offering different kinds of protection and covering different types of subject matter.
We will be dealing with the first two categories.
3. Plant Patent
Defensive Publication (DEF)
Statutory Invention Registration (SIR)
What is a utility patent?
Issued for the invention of a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof.
Design patents are unique to the United States. In other countries they are called designs or design registrations, but they are not considered patents. In the US there are design patents, and what is covered in a design patent is the ornamental design. So, for example, with this pen this is a very distinctive pen. It has a unique shape on the end of it. It has stripes. It has shape. And showing this in drawings would be sufficient to disclose this for a design patent application, but to really explain how the pen works, how it rotates, what the spring is on the inside, how the refill works, what the size of the refill is, what the different sizes and shapes. Those are the kinds of things that go into a utility patent.
enforcement: from the date of patent application filing: 20 years
fees: subject to the payment of maintenance fees
Approximately 90% of the patent documents issued by the USPTO in recent years have been utility patents, also referred to as "patents for invention".
What is a design patent?
Issued for a new, original, and ornamental design embodied in or applied to an article of manufacture.
It permits its owner to exclude others from making, using, or selling the design for a period of fourteen years from the date of patent grant.
enforcement: from the date of filing: 14 years (may change in the future)
fees: not subject to the payment of maintenance fees
What is an infringement?
An object with a design that is substantially similar to the design claimed in the design patent cannot be made, used, copied, or imported in the U.S. The copy does not have to be exact for the patent to be infringed. It only has to be substantially similar.
Keep in mind: Review your user interfaces. Look at what makes them unique. What in your UI would really upset your company if it were copied? Do those items have any functionality or are they purely ornamental?
For those items having functionality, if you believe they are novel, consider submitting an invention disclosure clearly identifying it as a design patent.
Do my inventions have to be in my functional area?
Not necessarily, check your company's policy BUT, patents in areas of direct interest and use to your company are of more value, and weighted as such.
I have patents/publishes in many different areas, including; electrical, visual design, UX controls, UX methods, and industrial design, to name a few, and have submitted in a number of other disparate areas! Those invention areas your company does not have a stake in can be functionally grouped and sold, or leased to other parties.
Ok, I researched, and I think I have a shot, what do I do next?
A ha! Good for you. Now to the process of writing a patent submission. Stay calm, it’s relatively painless, “Om mani padme hum”……
Start with a rough description and a few key bullet points, this way, when you need to come back to the document, you can easily pick up where you left off.
Collaborate! It is always a good idea to get new eyes on. We’re all smart people, but each of us approaches things differently and new eyes can add important facets and dimensions you may not have even thought of. Just because you collaborate does not mean your collaborator(s) get listed on the patent as a Co-Inventor(s). A Co-Inventor must add ‘substantial’ input to the patent, and clear communication at the beginning is necessary to set expectations. At such time a collaborator does contribute substantial input, it is the ethical (and sometimes legal) obligation of the Inventor to propose to them to be listed as a Co-Inventor.
Let it stew. I like to let it sit in the back of my mind for a number of days to be able to make a far more robust disclosure. I have had many “EUREKA!” moments by not thinking too hard on a concept at times, in order to allow for other possible implementations and uses to free-associate in my head. When those moments do happen, and they will, write it down, record a voice memo, do an interpretive dance, any way to capture it to make notes in the dB! I have ~4 draft disclosures at any given time, to give myself some diversity in thinking about ideas.
Think differently. As you think about your invention, let your mind wander and think also about possible applications of your invention. Could the Insurance industry benefit? How? What about differently-abled users, First Responders, helicopter pilots, cashiers, etc. . . . .This helps you begin to develop a far more robust submission, BUT, don’t make it so generic as to be current common practice. This is a line you will learn how to walk. (break for a Johnny Cash moment)
Start to diagram. I find that I can validate (or, at times, invalidate) my logic with a simple diagram. Getting it down on ‘paper’ ,in it’s extremis, often leads you to places you hadn’t even thought of at inception! If your original path to your idea changes somewhat as you go, you’re probably doing it right! Don’t be so locked into only one path to your goal that you have not explored other paths. It is in the accepting or thoughtful discounting of all options that will make you successful.
Go back to your research. Assessing other implementations of relevant or somewhat tangential ideas will make yours all the more novel and unique, and you will need to identify those in your submission.
Asking yourself “what really makes my invention better than what’s out there?” is the best question you can ask when developing your patent. If you can’t come up with a solid answer to this question over time, leave it in draft until you can. On occasion I will delete a draft after ~12 months if I have explored all the avenues I can think of, and still not be able to profoundly answer this question. (Within IBM, this is one of the first questions the Patent Review Board will ask you, and you are required to provide a solid, detailed defense.) Start to flesh out your bullet points, add possible industry implementations, collaborate with internal IBM colleagues, find internal subject matter experts. All of this will benefit you as you further develop your idea.
How long should my patent submission be? As long as it needs to be, to clearly document your idea with clearly documented claims. No more, no less.
What is a claim?
The claims are the heart of a patent, in that they define the limits of exactly what the patent does, and does not, cover. That is, the patentee has the right to exclude others from making, using or selling, only those things which are described by the claims. Reading and understanding the claims of a patent is the key to determining if a given product or process infringes the patent.
There are 2 kinds of claims: