Considerations for Patenting an Invention

Many people start the patenting process after having developed an idea into an invention.  However, once the invention is formed, there are many more items to consider, which depend on the inventor’s goals for the invention, such as bringing the invention to market by himself or herself, seeking out investors to bring an invention to market, or seeking someone else to “purchase” the technology.  Ultimately, a patent defines an area of protection, where the owner of a patent can prevent others from making, selling, importing, and offering to sell the invention in the country where the invention is patented.

Getting started with a patent application can be daunting, but there are fundamental concerns that must be addressed for every patent.  While each can be a topic of its own, these are the five fundamental concerns the consider when getting ready to prepare a patent application.

The first concern is whether the invention is developed enough for warrant patenting.  This goes to the difference between ideas and inventions. An idea is identifying a need or a general starting point to address a need; the “wouldn’t it be cool if…” thought.  While it is a good place to start the invention process, it is too early at this stage to file a patent application.  Inventions are the practical answers to the questions.  Compounds that show promise to treat cancer, devices with the inner workings thought out.  It is at this stage that it is time to file a patent application.

The second concern is there enough information to permit someone else to figure out what the invention is and how to make and use it.  Every application requires the inventor to instruct the public on how to make the invention and use the invention.  Additionally, the application must flesh out the invention, provide different versions of the invention that the inventor deems covered by the application.  This requires the inventor to share notes on developing the invention, diagrams of the invention, testing, and in most instances, requires the inventor to work with his or her attorney to work on alternative variations of the invention to provide useful patent coverage.

The third concern is whether the inventor has discussed his or her invention with others. In some instances, talking about an invention triggers a deadline to file a patent application.  For the U.S., talking about the invention publicly, which includes oral presentations, web-based videos, journal articles, trade articles, advertisements, and many others, starts a one-year period to file an application.  For many foreign countries, any disclosure to the public requires an immediate patent application filing.

The fourth concern is the geographic scope of protection, meaning is the application filed only in the U.S. or in foreign countries as well.  There are different requirements, both for the text of the application (specification) and claims in each different country, and different strategies that may be employed based on the geographical protection sought.

The fifth concern is the goal of the patent.  As stated above, each patent carves out an area of protection.  However, the value in the patent is optimized when the application is tailored.  Some inventors or companies want a family of patents to protect the invention, others want the patent for marketing purposes, and others want the patent to generate investor interest. Each requires a slightly different approach to writing the text of the application (specification) and claims.

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