Idea to Conception

An inventor must develop an idea into a complete description of a machine, part, process, or other acceptable subject matter (a patent cannot be obtained on an idea or suggestion).

Ideas may come from many people and places but the patent goes to the inventor(s) who takes the idea to completion and can describe the invention well enough that someone skilled in the art can build the complete and operable invention without much experimentation. “An inventor may consider and adopt ideas, suggestions and materials derived from many sources: a suggestion from an employee, a hired consultant or a friend even if the adopted material proves to be the key that unlocks the problem so long as the inventor "maintains intellectual domination of the work of making the invention down to the successful testing, selecting or rejecting..." Morse v. Porter, 155 USPQ 280, 283 (Bd. Pat. Inter. 1965).” MPEP 2138.04.


Having a sound strategy is important: Keeping the idea and innovation as a trade secret until the patent publishes may be essential to keeping a competitor from taking the idea (in case the patent does not issue), others use this the time after filing to promote their invention. See How to Keep A Trade Secret.



The America Invents Act changes the US  to a First To File country rather than a First to Invent. The Leahy-Smith America Invents Act (AIA), H.R. 1249, was passed by the U.S. House of Representatives on June 23, 2011, and by the U.S. Senate on September 8, 2011. President Obama signed the bill into law on September 16, 2011. See the text of the House Bill HR 1249 and the Section Summary from the USPTO.


A delay in filing an application can mean that someone else may be the first to file or that public disclosure may bar patenting. Under the America Invents Act, the 1 yr grace period exceptions in 35 U.S.C. 102(b) (to 35 U.S.C. 102(a))  are limited to disclosures by an inventor or another who obtained it from the inventor.


Patent Searches

Is This a Good Time to Patent Search? Why Search?

•   Before getting started is a great time to search, you may find ways to solve some problems or you may find an expired patent that you can use for this particular problem or application or you may want to incorporate some of the existing knowledge from yours or another field into your design.

•   Patent applications and issued patents are a wealth of information that is available in any technical field, much of it available for anyone’s use in the form of expired patents.

•   An experienced searcher who is knowledgeable in patent law will be the best searcher. U.S. patent law is constantly changing and what was patentable a few years ago (or in another country) may not be patentable now (or here). Prior art (all that is already public knowledge in the areas of science and technology) is not limited just to the references (patents and other sources) being applied, but includes the understanding of one of ordinary skill in the art including “the inferences and creative steps that a person of ordinary skill in the art would employ”. Further, “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 [applicable U.S. patent law] likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).

•   A search should involve more than just a USPTO patent search. Any product available in the world and any patent issued in the world may be applied against a patent application. Just because you are sure that no one has invented ‘this’ yet because you have never seen one doesn’t mean that a patent doesn’t exist that has the same elements. (See PatentSearchSteps.com for information on how to do a quick patent search and why it is important to go beyond that quick search)

•   Avoid infringing an existing patent with your new design.

•   Avoid a false start. If your invention does not meet the requirements of New Invention or Non-obviousness you may have to change your invention in order to patent it. The cost of doing a thorough search is considerably less than the cost of  re-engineering.

•   Protect your investment. A thorough search can reveal strategies for writing an effective application. A bad search can lead to a bad investment.


For more information on provisional and nonprovisional patent applications see Nonprovisional.com.



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Steps to a Patent    How to Patent An Invention

Filing Requirements for Patent Applications

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill  Abandoned Trademarks

Should I Get A Trademark or Patent?

Patentability Evaluation

Trademark Disclaimers   Trademark Dilution     Oppose or Cancel?

Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File   How to Trademark Search

37 CFR § 1.53 Application number, filing date, and completion of application

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Difference between Provisional and Nonprovisional Patent Application

Opposition Pleadings    UDRP Elements    Loss of Trademark Rights

How To Answer A Trademark Cease and Desist Letter

Shop Rights  What is a Small or Micro Entity?

Trademark Refusals    Does not Function as a Mark Refusals

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Acceptable Specimen       Supplemental Register  $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent Pending see also Patent Marking

Trademark Attorney for Overcoming Office Actions

Functional Trademarks   How to Trademark     Surname Refusal

Patent Drawings

Grounds for Opposition & Cancellation     Cease and Desist Letter


Valid/Invalid Use of Trademarks     Trademark Searching

How to Respond to Office Actions

What is a Compact Patent Prosecution?


Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion  DuPont Factors

Patent search-New invention

Color as Trade Dress  3D Marks as Trade Dress

Patent Search-Non-Obvious

Ornamental Refusal  Standard TTAB Protective Order

How to Keep A Trade Secret

Descriptive Trademarks Trademark2e.com  Likelihood of Confusion 2d

State & Federal Trade Secret Laws

Merely Descriptive Trademarks   Merely Descriptive Refusals

Chart of Patent vs. Trade Secret

Register a Trademark-Step by Step   Trademark Fixer

ID of Goods and Services see also Headings (list) of International Trademark Classes

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Geographically Descriptive or Deceptive

Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

What Does ‘Use in Commerce’ Mean?    SCAM Letters

Section 2(d) Refusals   ApplyToTrademark.com

Trademark Incontestability  TTAB Manual (TBMP)

Typical Brand Name Refusals  What is a Family of Marks?

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

TSDR Trademark Status and Document Retrieval

What are Dead or Abandoned Trademarks? Can I Use An Abandoned Trademark?  Can I Abandon a Trademark During An Opposition?

Published for Opposition see also Opposition Steps/Cancellation Steps

Counterclaims and Affirmative Defenses

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process

Zombie Trademark  Not Just Patents Often Represents the Underdog  

What Does Published for Opposition Mean?

What is the Difference between Principal & Supplemental Register? What If Someone Files An Opposition Against My Trademark?

Acquired Distinctiveness  2(f) or 2(f) in part

How to Respond Office Actions  DIY Overcoming Descriptive Refusals

Extension of Time to Oppose

Trademark Clearance Search   DIY Trademark Strategies


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