QUESTIONS FOR INVENTORS TO
ANSWER
BEFORE CONSULTING A PATENT PRACTITIONER
BUT DON'T WAIT TOO LONG, BECAUSE UNDER THE PATENT REFORMS PASSED IN SEPTEMBER 2011, U.S. LAW HAS CHANGED FROM "FIRST-TO-INVENT" TO "FIRST-TO-FILE", A SIGNIFICANT CHANGE, ESPECIALLY FOR INDEPENDENT INVENTORS
1. Why do you want a patent? Will you make, use, sell or offer to sell the invention, or do you want to license it to others?
2. Do you have drawings and a detailed written description of the invention, or have you made a working prototype?
3. Have you done a patent search, and what similar "prior art" are you aware of in the field of technology most closely related? Is the closest prior art you know about old, new, relatively extensive or rather rare?
4. Have you made any public use or disclosure of the invention, including on the Internet, at trade shows or in any other place open to the public?
5. How long has it been since you first mentally conceived of the invention and physically reduced it to practice, either by making a working prototype or filing a patent application?
6. Do you have any coinventors, any employment contracts relating to inventions, or have you granted any assignments or licenses of the invention?
7. Do you have any trademarks or service marks used or intended to be used in connection with the invention?
8. Does the invention include any trade secrets known only to you, what have you done to keep those secrets safe and can the invention be reverse-engineered by someone who wants to find out how it works?
9. Do you want to accelerate the patenting process, either because you are over 65 years old, because the invention involves "green" energy-saving technology or are you willing to pay additional fees to speed up what can be a lengthy process taking several years?
10. Are you able to pay fees of at least $5,000-10,000 upfront for professional preparation and prosecution of a patent application, or do you intend to do it yourself? Do you have a business plan for marketing and selling the invention, and do you have any idea what sort of cash flow and return on your investment it is likely to produce over the next 5, 10 or 20 years?
* * * * *
BEFORE CONSULTING A PATENT PRACTITIONER
BUT DON'T WAIT TOO LONG, BECAUSE UNDER THE PATENT REFORMS PASSED IN SEPTEMBER 2011, U.S. LAW HAS CHANGED FROM "FIRST-TO-INVENT" TO "FIRST-TO-FILE", A SIGNIFICANT CHANGE, ESPECIALLY FOR INDEPENDENT INVENTORS
1. Why do you want a patent? Will you make, use, sell or offer to sell the invention, or do you want to license it to others?
2. Do you have drawings and a detailed written description of the invention, or have you made a working prototype?
3. Have you done a patent search, and what similar "prior art" are you aware of in the field of technology most closely related? Is the closest prior art you know about old, new, relatively extensive or rather rare?
4. Have you made any public use or disclosure of the invention, including on the Internet, at trade shows or in any other place open to the public?
5. How long has it been since you first mentally conceived of the invention and physically reduced it to practice, either by making a working prototype or filing a patent application?
6. Do you have any coinventors, any employment contracts relating to inventions, or have you granted any assignments or licenses of the invention?
7. Do you have any trademarks or service marks used or intended to be used in connection with the invention?
8. Does the invention include any trade secrets known only to you, what have you done to keep those secrets safe and can the invention be reverse-engineered by someone who wants to find out how it works?
9. Do you want to accelerate the patenting process, either because you are over 65 years old, because the invention involves "green" energy-saving technology or are you willing to pay additional fees to speed up what can be a lengthy process taking several years?
10. Are you able to pay fees of at least $5,000-10,000 upfront for professional preparation and prosecution of a patent application, or do you intend to do it yourself? Do you have a business plan for marketing and selling the invention, and do you have any idea what sort of cash flow and return on your investment it is likely to produce over the next 5, 10 or 20 years?
* * * * *