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By J.D. Houvener
Patent Attorney and Founder

Did you know that a little innocent post on social media could get you in a whole host of trouble and, in fact, invalidate your ability to get a patent?

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Hey, welcome to “How to Get a Patent on Your Idea.” I’m J.D. Houvener, and I’m the CEO and principal here at Bold Patents Law Firm. I’m going to be here today talking about what it means to get a patent on an idea and some of the nuances all the way along the track.

You’ve got to know right out of the gate that when I say “idea,” it kind of pains me a little bit because I know that ideas, while certainly valuable, and I mean I talk about bold ideas right in my book, ideas are by nature a dime a dozen. Okay, everybody’s got ideas—fun, cool, big, small. But what does it mean to actually bring an idea to an invention? The major difference is that an invention is something you’ve really thought about, something you’ve thought through well enough to where you could describe it. How to make it, how to bring it about—just on paper. Right on paper, through drawings, someone else could take what you’ve written and go build it. That’s an invention. We work with inventors at Bold Patents; we want you to move from idea to invention with us and with our help.

One thing I’ve got to mention up front too is that ideas sometimes can get carried away, right? These are big ideas. You think about how could I improve, and it oftentimes comes with some barriers—cost issues, maybe government’s got regulations blocking the situation. Something you have to know is that there’s no requirement to build a prototype. Okay? Don’t think you have to spend tens or even a hundred thousand dollars building your prototype. If it’s that big, you’ve simply got to be able to articulate it through words and drawings to move your idea from that phase to an invention.

Is your patent eligible? Do you fit into one of the four patented areas? Is it patentable? Do you have a machine, do you have a process, do you have an assembly, or do you have a composition of matter? If you fit into one of those categories, you’re patent eligible, and you can move forward. If you have any questions about what those categories mean and you want more information about whether your specific invention is eligible, I encourage you to visit our website, boldip.com. We’ve got lots of free resources there for you, whether you’re just getting started or maybe inventing your second project and want a little more advanced information. We’ve got that for you too.

And I want to show you really quickly in the book I wrote just a year and a half ago, “Bold Ideas: The Inventor’s Guide to Patents.” This has got all the essentials that you need to help understand what’s the difference between a patent and a trade secret, patented a trademark. This is it. Grab your free copy, downloadable PDF version on our website at boldip.com today.

After you’ve figured out whether your invention is eligible or not, the next step is, okay, which inventors should I indicate? This can sort of be coming out of left field, but if you’re not the only inventor, you’re actually obligated to include all the inventors in the application. So when does someone actually become an inventor? Great question. Generally, an inventor is someone that’s added to the conceptual idea, right? There’s a foundational principle. Some people get confused and think that someone who manufactures a product or helps with the prototype should be listed as an inventor, and that’s not true. Someone can be the architect, the designer, known as the inventor, and say, “Please make this per this plan.” The person that makes it, sure, well, they’re well in their craft and good at their skill, but they didn’t actually invent and come up with any aspects of it. So if you have any more questions about inventorship, again, please give us a contact. And if you’re getting good value out of this video, we’d love to get this out to as many inventors as possible, so please give us a like or thumbs up, share this video with someone you know that could really use this information. We want to be able to help all inventors reach their visionary dreams.

Alright, so once you’ve kind of identified who the inventors are, it’s next important to understand the ownership. Sometimes employees are also inventors, right? You’ve got day jobs, and so something to really make sure you’re clear about is that if you want to own this invention on your own, you’ve got to do so on your own time, and that includes using your own resources. So if you’re using a computer, using a 3D printer, and if you’re using some sort of CAD system, you’ve got to understand your own resources need to be used, and it can’t be related to the job you have. So another deep dive inquiry—if there’s sort of a gray area, maybe you were on the clock, maybe you were even assigned to a project, and it’s related to what you’re trying to seek patent protection for—get with us right away. We need to make sure it’s clear who’s going to own this thing. The last thing we want to do is end up taking your money and have the patent owned by your business. Okay?

Alright, so after inventorship and ownership are cleared, the way to get a patent is to make sure you’re clear about what your goals are. Your goals—business goals. Do you want to own this thing long term and have a business created around it, and make this a really long-lasting business? Or is it your goal to really just license and sell it, get it done? If it’s the latter, you’ll want to work directly with us as patent attorneys and just get your patent packaged up so that it’s most lucrative, most valuable to someone looking to license and sell it. If your goal is to start a new business, I mean, good on you, right? That’s how this country was founded, that is what entrepreneurs are all about—they love serving them. But know that we are just a part of the professional sphere of the people you need to get a hold of to make this dream happen. So we do our best to refer you to the people that we have trusted over the years to help our clients out succeed in business. So let us know up front, work with an attorney to make sure they’re clear about what your goals are so you can get referrals to the people that you need to get help with down the road.

The next thing to take a look at, and this goes back to my social media question right at the beginning, is okay, if you’ve talked about your invention and shared your invention, there is a one-year statutory rule. One year, that’s 12 months. If you have disclosed your invention online, talked about what your invention is, showed a video about what your invention does to get feedback, put it up on Kickstarter, or even sold your invention, which includes even making an offer for sale more than a year ago, you are ineligible for patent protection. Okay, I know that’s tough to hear. So there are some workarounds. So if you are under that category where you’ve actually disclosed your invention more than a year ago, it could be, right? It could be that you’ve invented, you’ve made some improvements on your invention since you posted that. So you could get protection over just those improvements, and we could certainly talk about that at a free consultation with one of our advisors and move forward to help you with getting in touch with the patent attorney today.

Alright, so the next thing to think about is the patentability. So as you get down this path, you’ve explored eligibility, inventorship, ownership. Now you’ve passed the statutory bars; you’re not going to be barred, you haven’t disclosed your subject matter, you’re not at issue there. Now, is your invention patentable? You have to show three things: novelty, non-obviousness, and it has to have utility. Those are the three biggies. So without those three, you can’t move forward. Novelty just means it has to be new—new in the world. It has to be non-obvious, not an obvious version of another prior art that’s already out there. Prior art is a fancy word for any reference, technical or otherwise, patent document, or non-patent document that’s talked about the industry, talked about your type of technology. If it’s out there in the market, the examiner will find it. That’s what you’ve got to know upfront. If you’ve got an obvious iteration or something that’s already been done before, utility means you have to show that there’s some benefit, some entertainment value, even some financial benefits, some economic benefit, or mechanical leverage and so on. Those are all great utilities to show.

Alright, so the second piece of whether you move forward or not is looking one at patentability, but the other one is marketability. Don’t forget your end goal should be to make money and to be successful in business. So not only do we want to look at, hey, can we get you a patent on this, but will this succeed in the market? So you’ve got to take a look at both of those pieces as a business owner, as an inventor moving forward to make a sound business decision.

Now we’re at the phase of being able to prepare your application for filing. You’ve got all this work behind you, working with your patent attorney. How do you move to the next stage? You’ve got to put together the written description, what’s also called a specification. The spec talks about every single part of your invention and how it is coming together. Right, the how, the details. This explains through words how to build it, how it functions, what the inputs and outputs are, and in the end, will provide the basis for what you’re claiming is yours, in which you invented. So when you submit the written description, the claims, and the drawings to the patent office, you do so most effectively by electronically filing it. The electronic submittal will actually save you some money. The USPTO has done a lot lately to help move things in the right direction and moving toward a paperless environment.

Well, there’s one final thing to think about when you file your application in the U.S is to not be short-sighted, think big, right? So think about international protection. Get with your patent attorney to think about what it might take to get your patent filed in other countries. There’s a fantastic mechanism called the Patent Cooperation Treaty (PCT). That’s what allows you to file in as many countries as you want, and it’ll also give you time up to a year and a half to decide when to file in which country. Stay tuned for more; we got a separate video on the Patent Cooperation Treaty coming up.

It’s been so fun talking with you here today about how to get a patent, what the fundamentals are all the way through in this all-step process. If you have any questions at all, we love to field those questions. Give us a thumbs up, like and share this video with anyone you might know. And again, I’m J.D. Houvener, the CEO and managing partner at Bold Patents. It’s been my pleasure talking with you here today. Go big, go bold.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at https://boldip.com/contact/