Nine Costly Misconceptions About Patents
If life were like the popular board game Monopoly ��, obtaining meaningful patent protection would be as simple as buying up Boardwalk and Park Place. In the board game, you simply purchase the property you want, place houses or hotels on them over time, and eagerly collect a continual revenue stream from the successful venture.
The rules governing monopolies on ideas, however, are significantly more complex. As you mull over the unique features of your newly discovered invention or method of doing business, I want to dispel a number of common, yet potentially dangerous, misconceptions about patents:
Misconception No. 1: All of the good ideas have already been patented.
Fact: In 1899, U.S. Commissioner of Patents Charles H. Duell reportedly stated that “everything that can be invented has been invented.” His statement, as we all know, was followed by the invention of the airplane, television, radio, cars, computers, biotechnology, space travel, microwave ovens, cellular phones, digital cameras, the artificial heart, and the internet! The line of thinking that all the good ideas are gone is as wrong today as it was back then. Major pioneering inventions, such as the development of the internet, are being made on a daily basis and there appears to be no end in sight.
Misconception No. 2: It is necessary to include a working model of your invention along with an application for a patent.
Fact: This is a very common misconception. Working models, prototypes, or exhibits are very rarely required for most patent applications. Even the Wright Brothers had not flown when they applied for their groundbreaking aeronautical patents. Their famous Kitty Hawk adventure did not occur until March 23, 1903, a full nine months after the filing of their patent.
Although a working model is not generally required, the description of the invention in the specification and the drawings does have to be sufficiently clear and complete to permit the invention to be understood by someone familiar with the field of the technology.
Misconception No. 3: Mailing a description of your idea to yourself via certified mail will protect your invention.
Fact: There is a well-known myth that mailing a description of your invention to yourself will protect your idea. Variations on this theme include mailing via certified or registered mail. Some even advocate signing along the seal of the envelope in pen.
Regardless of how the description is mailed, you will obtain no exclusive rights to the idea, whatsoever, unless a patent application is subsequently filed. At most, the mailing may be used to show that you were in possession of the idea as of the date of the postmark. There are, however, far better ways of proving the date of conception of an idea, such as, for example, participating in the Patent Office’s inexpensive Disclosure Document Program ($10).
Misconception No. 4: A patent guarantees commercial success.
Fact: This line of thinking is similar to the “if you make–it they will come” syndrome typical of inexperienced entrepreneurs. Although a patent can prevent others from making or using your product or service without your permission, it does not guarantee that anyone will want to do so. In order for the patent to be valuable, there must be some pre-existing demand for the product or service.
Misconception No. 5: You can wait to file a patent application as long as you have evidence to prove that you are the original inventor.
Fact: Nothing can be further from the truth. For one thing, failure to file a patent application before disclosing an invention will result in the irrevocable loss of patent rights in most foreign countries. Even in the United States, you are required to file within one year of publicly disclosing or offering an invention for sale.
Another risk of waiting to file the patent application is that someone else may file first. The first person to file is presumed to be the inventor and any subsequent filers will have the difficult burden of proving an earlier invention date in an interference proceeding. This is not a good position to be in.
Misconception No. 6: If an idea is developed by an employee at work, the employer is the only one who can file for patent rights.
Fact: Assuming the company owns what an employee produces may be reasonable when employees are in a factory assembling widgets, but the rules of ownership of new ideas are not so simple. It is important to consider the facts surrounding the development of a new idea and whether or not an employee has signed an employment agreement assigning rights in their ideas to the company.
Misconception No. 7: Filing a provisional patent application is a less expensive alternative to filing a regular patent application.
Fact: Provisional applications are not examined and can never issue into a patent. The provisional application first became available in the United States in 1995, and simply allows an inventor to preserve their rights for a period of one year. In order for a patent to eventually issue, however, a regular non-provisional application must still be filed.
Once this is done, the costs to file both applications will be more than if the regular patent application were filed right away.
Misconception No. 8: If an idea is in use overseas but not in the United States, it can still be patented here.
Fact: A patent can only be issued to the original inventor. If you are simply using an idea that you have seen in use elsewhere, then you have not “invented” it. You cannot obtain exclusive rights to an idea simply because you happen to be the first one to “import” the idea into the United States. South Florida is often seen as the business gateway to the Americas and a number of international clients with offices in Miami have asked about patent protection in the United States for ideas originating elsewhere.
Misconception No. 9: The granting of a patent indicates that the patent office has verified that the invention works.
Fact: The patent office does not test inventions or verify that they will work as described. Nor does the patent office evaluate whether an invention solves a problem more effectively than prior attempts. The primary purpose of the patent office review is to determine whether the invention is sufficiently different from prior solutions to warrant the granting of exclusive rights to the inventor.