Patent Attorney and Founder
You’ve seen one of these before, yeah, that’s what phones used to look like. Did you know that on February 14, 1876, Alexander Graham Bell applied for a patent on this—an apparatus that could transmit speech electronically, beating out his rival Elisha Gray by just two hours? Never mind that Gray’s design worked better; timing was all that mattered. When Gray later filed a lawsuit, the courts awarded the patent to Bell, who went down, of course, in history as the official inventor of the telephone.
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Hey, everyone! I’m J.D. Houvener, USPTO patent attorney and CEO and Managing Partner here at Bold Patents Law Firm. Today I want to talk with you about a couple of simple steps that you should take to protect your idea. So, instead of going through all the nitty-gritty detailed steps in this video today, if you want to learn it all, I wrote a 7,000-word blog article that covers this linked down below. I want to talk about the primary points today that you need to know to ensure your idea is protected.
On September 16, 2011, the American Invents Act was signed by Barack Obama. It switched the U.S. inventorship from first to invent to first to file system. The patent applications filed on or after the 16th of March 2013 forever changed the landscapes for inventors and businesses. So, the question is, how do you file first? What steps go into filing a patent application?
First off, you need to have an invention, and it needs to be patentable. If you’re unsure, make sure to look at some of my previous videos or articles where I dive into what makes an invention patentable and how to invent an idea in 10 easy steps.
The next step would be to do a worldwide patentability search. In fact, I’ve written a blog article about it linked below. So, if you have an idea, the key thing to think about here is making sure you don’t lose your rights. In the United States, there’s a one-year grace period from when you must file an invention. If you’ve disclosed your invention or sold it or even offered it up for sale, you only have a year before your rights are completely gone.
I hear this story often. I unfortunately have to break the bad news that if someone has launched a Kickstarter campaign and they’ve put down all their content on the website about their invention and more than a year has gone by, unfortunately, we can’t file a patent application for it. So, don’t make that mistake. Be sure you’re not gonna be a victim of this statutory bar.
The second thing to think about here is inventorship. As an inventor, you’ve got to make sure that you own this invention. That sounds silly, but many inventors are actually employed. Their full-time job during the day, and they’re working on their dream or building their invention at night. If those two are close, meaning if your job is related to your invention, you’ve got to take a careful look at your employment agreement to make sure that your employer actually won’t own this invention. You don’t want to get all the way down the road and start building your dream business if your company could make a mistake and own it without your knowing. So, inventorship—making sure you avoid statutory bars.
The last thing to think about is eligibility. Is your invention something that even fits into the patent realm? You’ve got this idea, but it’s still kind of rough. You want to know whether you could even seek patent protection for it once it’s brought to fruition. If it’s about a natural phenomenon or an algorithm or if it’s merely about a natural substance or content that already exists, meaning it’s part of the natural language or it’s part of the society or the market that’s around us, it’s likely not going to be patent-eligible.
If you’ve got to go to show that there’s an inventive step, something truly novel about your invention above and beyond what’s already been done before, you’ve got to get an opinion from a patent attorney to say whether your invention is eligible or not. But based on what I just said, you should be able to tell whether your invention is part of something that’s gravity or part of nature or it’s an abstract of something that’s already been done before. That would probably lead you to believe that, hey, look, you’re not gonna take a patent on it, but you can surely have success in the market. But get that opinion first.
So, you’ve got to make sure with your idea that you sit down and talk with an attorney about eligibility. Once you’re through these sort of initial barriers and you’ve cleared them all, the question now becomes, is it patentable? Could you get a patent on it, even if it were to be eligible? And so, you have to conduct a detailed patent search.
A patentability search consists of two main aspects—one is patent documents, okay, and non-patent literature. When it comes to patent documents, those are patents that have been filed for and published. That doesn’t necessarily mean we’re talking about granted patents here. And what’s interesting with the American Invents Act I talked about earlier, that Act means that no longer are just the United States patents that you need to consider, but it’s the entire world—China, Canada, Australia, Korea, I mean, you name all the big players in Europe. All those publications will act to potentially prevent you from getting a patent here in the US if they’ve ever been published before.
The examiner’s job is to make sure that if they award an invention a patent, that it’s truly the first of its kind in the world. So, before you spend tons of time, energy, and money preparing and filing for a patent application, you’re going to want to spend the time upfront doing the diligence of conducting a patent search, and allow us to do a professional search for you on these patent documents.
Now, this other aspect of non-patent literature, this works very much the same as if you’re gonna try to start a brand or a trademark and conduct your own natural language search. In the same way, do a natural language search on your own invention to see if there’s anyone out there in the market that is doing or performing the same type of functionality. You don’t want to go through and hire an attorney, pay an application fee, and get a year or two down the road if it’s already been done before. And not only are you not going to get a patent on it, but you might even be found to be infringing on someone else’s patent.
So, long story short, patent searching is huge, and it’s really the first part of how to bring your idea to market via patent protection. So, once you get through the patent search, now we’re talking. Now, this is a novel, patentable invention. Now, it’s a matter of just pushing the throttle forward and launching.
You get to follow what’s called a patent application, either a provisional or a non-provisional. I’ve got a separate video that goes through the details of what’s the difference between a provisional and non-provisional. I’ll save you that right now today.
Once you file your application, your
patent attorney will work with you very carefully to make sure that it’s structured in the right way. The scope of claim, meaning the written description, the drawings, and the claims are quite broad. We want to try to get you the most amount of protection possible when that gets filed and submitted to the Patent Office.
Now, the fun begins—the back-and-forth. The examiner will do their own search. They’ll confirm or maybe even deny the search that was done before, and they’ll come back with their own potential rejections or objections. It’s our job as your patent attorney to argue on your behalf, to come back with amendments or legal arguments to overcome those. Those are called patent office actions, and one or two are generally expected, but it could take three or four to get your patent all the way through to being granted.
Once your patent rights are granted, that is when you have the ability to prevent anyone else from making, using, selling, or importing that specific granted right into the United States. Now, we’ve also got a separate article I get into about international patent protection that again I won’t get into in this video.
But taking your idea all the way through patent search, application, office actions to patent granted is no small task, as you can understand. After this, of course, there’s the monetization—show me the money. And we have plenty of videos explaining how to make money with patents. I want to give you a brief highlight here today.
You can seek to enforce your patent rights, meaning start building, making, and selling your invention and preventing anyone else from doing the same. That’s the classic way of enforcing your rights. You can also make quite a good amount of money licensing your rights, meaning allowing another entity or two or several to make, sell, or import your invention on your behalf or using a royalty payment where they give you payments for every single one that they sell.
Of course, there’s a third option about outright selling your invention to someone to have full ownership and rights over, enforcing it on their own. So, hope this has been a great journey. I’m sure you’ve got an idea out there. I’m curious to hear what it is if you do. Get a chance, please put it in the comments below. Any questions you’ve got, I want to get back with you and share with you any of those open-ended questions, anything that’s still in your mind. I appreciate your time here today. I’m J.D. Houvener, patent attorney, and CEO here at Bold Patents Law Firm. Have a great day, everybody. Go big, go bold.