8 Important Considerations When Filing a Patent

A major consideration in the patent process is whether or not you have a working prototype to experiment with. ~ Jar Kuznecov


What is a consideration before applying for a patent?

To help you think about what goes into applying for a patent, we asked successful lawyers and entrepreneurs this question to get their best insights. From disclosing your product only if there is a nondisclosure agreement to creating a working prototype, there are several tips that can help you prepare for your patent application in the future.

Here are eight things to consider before filing a patent application:

  • Only disclose the product if a non-disclosure agreement is in place
  • Make sure your patent would have financial value
  • Determine the category of your invention
  • Ask a lawyer to complete your application
  • Check if your invention is patentable
  • Understand your deadlines and schedule
  • Search patent databases first
  • Create a working prototype

Only disclose the product if a non-disclosure agreement is in place

It is important to file your patent application before disclosing the product to anyone without a nondisclosure agreement. There are strict laws that prevent your application from being approved if you have disclosed the product (by selling, distributing or exhibiting) 12 months before filing the application with the patent and trademark office. So make sure that only people who are aware of your invented product are subject to non-disclosure agreements, as these prevent the 12-month window from starting.

Dan Bladen, Kadence

Make sure your patent would have financial value

Not all patents are created equal since some protect entirely new inventions while the majority cover incremental adjustments to existing inventions. As mentioned in the patent guide, this makes it difficult to assign a monetary value to a single patent. What is obvious is that not all patents have monetary value. Therefore, you must be certain that the profit potential outweighs the time, effort and money required to obtain and maintain a patent. You should also make sure that the protection offered by a patent will help prevent imitation in the markets you are interested in.

Kenny Kline, BarBend

Determine the category of your invention

Since not all inventions are patentable, the US Patent and Trademark Office will reject your application if your idea is not new and useful. Before filing your patent application, find out which category your invention belongs to. These include utility, design, software, and facilities, which guide the right type of patent, as patents can fall under provisional, non-provisional, or international patents. In addition, the invention must not incorporate ideas considered abstract, result from natural phenomena or have been published in any medium.

Ryan Yount, Luckluckgo

Ask a lawyer to complete your application

Two women examining documents; image by Freshh Connection, via Unsplash.com.

The laws are complex. Patent laws are outrageously complex. There are lawyers who specialize in patent law. You should always look to them and rely on their knowledge and advice before submitting an application. In fact, not only do you need to keep in touch with your patent attorney during the application process, but the attorney is also the one who completes the application. If you are an inventor or an engineer, you must explain every detail to the lawyer. Anything that remains open to interpretation in the application may work against the applicant. Everything must be explained precisely, which is the specialty of any accomplished patent attorney. Ultimately, make sure the lawyer knows what makes your invention unique. This must be explicitly stated in each patent application.

Alan Ahdoot, Adamson Ahdoot Law

Check if your intent is patentable

One consideration before applying for a patent is the patentability of the invention. The invention must be new, useful and non-obvious to be patented. In addition, the patent application must be complete and filed within one year of publication of the invention. When considering filing a patent application, it is important to first understand what a patent covers. A patent is a type of intellectual property that grants the inventor the exclusive right to make, use, and sell an invention for a certain period of time. To obtain a patent, the invention must be new, non-obvious and disclose the best mode of carrying out the invention.

Richard Morgan, Cyclone Computers

Understand your deadlines and schedule

One important thing to consider before applying for a patent is the list of time limits. The patent process can be quite complex with many different deadlines that must be met. Missing a deadline could set your patent application back by several months; or worse, it could be rejected altogether. Researching your application timeline will give you a clear understanding of what is expected before you begin your application process. This way, you’ll be ready to file the correct forms and provide the necessary information on time without worrying about missing a deadline or rushing your application.

Shaun Conrad, my accounting course

Search patent databases first

Before wasting a lot of time and money, I suggest searching patent databases on the Internet. This will help you determine whether or not your invention has already been made. It is also possible that after a patent has been granted, evidence indicating that your innovation was already known (known as “prior art”) will be discovered. If this happens, your patent will be rendered null and void.

Josh Pelletier, BarBend

Create a working prototype

A major consideration in the patent process is whether or not you have a working prototype to experiment with. This would allow for easier provenance of your concept and could lead to faster approval if it has been deemed innovative enough by government standards.

Jar Kuznecov, Water Softener Hub

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