McLaughlin & McLaughlin
Frequently Asked Questions



I have an idea. How do I protect it?

This is the most frequently asked question and, even though it is a short question, it necessitates a fairly long answer.

Before getting to the protection issue, the nature of your idea needs to be examined. A mere idea will receive no protection. An example of an idea that will receive no protection is the idea that there should be a device to do such-and-such. To be protectable, an idea must include details of how it is to be built or used. One does not necessarily have to have made an example, but enough details must exist that a knowledgeable person could build or implement the idea. Before I begin to discuss protection, I make sure that the idea can be implemented. I have no need to know what the subject matter of the invention is in order to be sure about implementation.

The next issue that needs to be discussed has to do with timing. Under the U.S. rules, an inventor has a year from the time of a public disclosure, sale, or offer to sell (or the like) and the filing of a patent application. The one year period is called a grace period. I have had potential clients who were found to have been selling a product for several years. In such a case, the time for patenting the product has passed and there is nothing I can assist with. Keep a written log of when you make, sell, test, or do anything with your idea. Do not approach a patent attorney just as the year is running out!

Until 2007, the Patent & Trademark Office (PTO) operated a "Disclosure Document Program," which was a very inexpensive program that allowed inventors to describe their inventions, which would then be kept on file by the PTO as good proof of when an invention was known to the inventor. Unfortunately, this program has since been discontinued.

Inventors might hear about so called preliminary applications. I usually will not prepare preliminary applications because they require as much effort to do right as a regular application.

In almost all cases, the only way to protect an invention in the U.S. is by receiving a patent for the invention. Patents are expensive, though much less so in the U.S. than elsewhere in the world, and slow. In recent years, it has become particularly difficult to receive a patent and recourse to the slow and expensive appeal process has become common. Either you do the whole process yourself or you seek the assistance of a patent attorney who lives near you (or who is a specialist in the area of your invention). You may search for patent attorneys by using the search tool found at http://www.uspto.gov/web/offices/dcom/olia/oed/roster/index.html.

Unless your invention involves a (so called) high-tech area, you are likely best to be served by working with a compatible, local patent attorney.

It might be tempting to use the services of an invention promotion firm. They advertize on television and in magazines. Be very careful. All of the invention promotion firms that have been brought to my attention by clients have charged much more than a patent attorney would charge and have provided few real benefits. In at least one case, the invention promotion firm published the invention, which caused the grace period to lapse and all patent rights to be lost. The FTC has a note about such firms at http://www.consumer.ftc.gov/articles/0184-invention-promotion-firms.



What are the chances of receiving a patent?

It depends. There must not have been a publication that describes your invention published anywhere at any time. There must be no combination of publications that suggest your invention. One must search the literature to find out what has been done in the past. Mostly that involves searching issued patents.

A couple of examples to illustrate some of the issues: If your invention has to do with fishing, you will have a difficult time receiving a patent because of the vast numbers of patents having to do with everything to do with fishing that go back some 200 years. Because of the vast number of fishing related patents, it is very difficult, and expensive, to know if your fishing invention is new, and thus to guess the chances of receiving a patent. The most realistic thing to say about inventions in mature and crowded arts is that it is unlikely that a patent will issue and it will be especially expensive to find out. On the other hand, if your invention has to do with compound bows (a technology that goes back only to the late 1960s) it is relatively easy to find past relevant art and one may make an estimate of the chances of receiving a patent.

Unless the invention is in an art that is very new (I have seen that only once), or in an art too crowded to allow an economic search, it is wise to perform at least a search of issued U.S. patents. Once, that was difficult. Today, it may be performed over the Internet. A tutorial on using the PTO's patent data base for searching may be found at http://www.lib.utexas.edu/engin/patent-tutorial/index.html.

Patents issued prior to about 1976 may only be seen as TIFF files, so you may wish to have a viewing program such as Quick View Plus. I encourage all independent inventors to perform their own searches. Not only does that save them money, but they will also become more familiar with the art and thus able to point out to their patent attorney the differences between their invention and the old art. Be sure to keep a log of what terms, classifications, or words were used in the search. Even when an inventor performs an internet search, I will do a minor search to reduce the chances of something important being overlooked.

Assuming a typical invention, a patent attorney can make an informed guess of the chances of receiving a patent from the results of a good patent search. Do not be surprised if the guess is less than enthusiastic. Too many unknowable things, such as patents not yet issued or published, can adversely affect the chances of a patent issuing on your invention. No patent attorney can guarantee results. Sometimes, after an evaluation of a patent search, an inventor will decide that it does not make economic sense to pay for the crafting of a patent application.



What is involved with a patent application?

Although some simple forms are used in the present patenting process, a patent application is very different from filling out a form. An application should make clear what the subject matter of the invention is (the art), and discuss the state of the past art making good use of the results of a patent search. It is wise to discuss patents that are found to be "close" to the invention. Such a discussion assists the patent examiner and provides the inventor with an early opportunity to tell why those patents do not describe and do not teach the inventor's invention. Usually, the major part of an application describes the invention (using drawings when appropriate), describes the invention's use, and particularly describes what the inventor believes is the best form of the invention. The application must be such that someone who knows about the art involved could practice the invention using the information in the application and little experimentation. The Constitutionally set out bargain involved with patents is that an inventor will have exclusive rights for a limited time in return for providing enough information so that others may use the invention after the patent rights have expired.

After an application is crafted, with the inventor and patent attorney making sure that it contains a full disclosure of the invention, the application is filed in the PTO. A fee accompanies the application. Then one waits. At present, it is usual to wait about a year or two 'till one hears from the patent examiner who is working the application. The preparation of responses to the patent examiner's objections and rejections is a significant part of the patent attorney's work and the patent's cost. With luck, a patent may be allowed. Issuance requires a fee to be paid to the PTO. Some months later, the patent receives a number, is printed, and is issued. Over the lifetime of the patent, maintenance fees need to be paid to the PTO.

The fees charged by your patent attorney depend on location, with the Midwest generally being the least costly, and on the complexity of the subject matter. Figure on several thousand dollars.



In what areas of technology do you have a particular interest?

Most inventions are mechanical in nature and thus most of my patent practice has involved mechanical inventions. My background is in electrical engineering with a particular interest in antennas, computer engineering, and electronics. Inventors in those arts who live outside of East-Central Michigan might wish to consult with me. In addition to being a patent attorney, I am also a professional engineer (P.E.) licensed in Michigan.



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Last modified February 18, 2013