The innovation process is complex, iterative, and often undefined. This makes it hard to know when you’re ready to file for initial patent protection. Here are a few tips to think about what stage you should file.
An inventor recently asked me the following:
“I’m working on the general way we’re going to solve the problem. We have a couple of different approaches. How close to the final product do we need to be before moving forward with patent steps?”
Here’s my answer.
From a legal perspective, you have to have enough information to teach someone skilled in that technology how to make and use your invention
From a design perspective, you need more than an abstract idea about the problem and solution. You should have a workable design concept that is detailed enough to identify the significant component parts, structures, and functions
From a novelty perspective, it can be helpful to think of your design as a combination of four conditions:
- Incorporating existing technology into your design
- Adding novelty to the existing technology to achieve your superior functionality or unique user benefits
- Identifying incremental improvements to your base design as you proceed from concept to final design; these will strengthen your novelty, superior functionality, and unique user benefits
- Implementing manufacturability details to finalize commercial production of your design; these are design and manufacturing best practices that do not add to your novelty, superior functionality or unique user benefits
Patents are useful once you have identified your point of novelty. This is typically an appropriate stage for a provisional patent application, so you get the earliest priority date on your point of novelty.
If you identify further incremental improvements throughout the design process, then you can either 1) file incremental provisional patent applications (if the incremental improvements are critical or highly advantageous), or 2) wait to incorporate the incremental improvements into a future non-provisional patent application.
Here are a few more considerations:
- You do not need a prototype, formal design drawings, or manufacturing spec
- You can get preliminary coverage for more than one invention/design in a single patent application at the provisional stage
- You can “bundle” provisional patent applications together in a single non-provisional patent application
Jeff Holman draws from a broad background that spans law, engineering, and business. He is driven to deploy strategic business initiatives that create enterprise value and establish operational efficiencies. Mr. Holman earned his Bachelor of Science in Electrical Engineering and Juris Doctor (JD) from the University of Utah and a Master in Business Administration (MBA) from Brigham Young University. He has practiced patent and intellectual property law in Silicon Valley, built and managed a law firm focused on IP transactions, helped “Shark Tank” inventors with legal and business strategy, and served as general counsel for the leading innovator for consumer electronics waterproofing technology–where he managed engagements with two Fortune 10 customers, provided key legal oversight related to $170 million in equity and debt funding, and oversees global IP strategy. Additionally, Mr. Holman is working with a development team at Intellectual Strategies to launch the first SAAS platform dedicated to IP strategy.
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Legal Disclaimer: This general information does not establish a legal relationship with any attorneys or law firm without a written and signed legal representation engagement agreement.