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
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.
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
• 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 onprovisional and nonprovisional patent applications see Nonprovisional.com.
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Not Just Patents LLC and its client. Past performance is no guarantee of future results.
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