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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