Patent Dos and Don’ts

Things to Do when Patenting a new Invention

Do Conduct a Prior Art Search Before you Apply for a Patent

It is important to know whether there is a reasonable good faith based belief that the claims being filed in a patent application are actually patentable. Find a good licensed patent practitioner (a patent attorney or patent agent) and get a prior art search and patentability study conducted. Knowing what else is out there is also very useful for writing good patent claims.

Do Contact a Patent Practitioner Early

Patent attorneys and patent agents are generally engineers or highly educated experts in special areas (arts). The engineer in us is what matters when it comes to patent applications. Chances are high that your patent attorney can help you expand and enhance your invention, plus the sooner we get involved, the easier it is for us to understand and appreciate the genius. We get calls, emails, and texts at all hours of the day, all days of the week from our inventors sharing new ideas.

Do Document your Creation Process (Inventor’s Notebook)

As the invention unfolds, don’t forget to take notes and make drawings. Even vague sketches on used napkins are better than nothing. The more notes that are written by the inventor, the better. We frequently find small details that are super valuable. Make notes about your invention in an inventor’s notebook.

Do Add Drawings to a Provisional Patent Application

If you are filing one or more provisional patent applications (PPA) for your invention, you need to be sure any drawings or figures that will be needed to support the later non-provisional claims are included in the PPA. Drawings and figures, or any substantive change to one, is new matter and will be given a new filing date upon submittal.

Do Make Sure your Patent Attorney Understands your Invention Completely

Don’t hide the “secret sauce” from your patent attorney – we can’t get you a patent for something if we don’t have the details. We tell all of our inventors that you cannot over disclose and that the inventor’s primary role when working with us should be focused on being sure you believe your licensed patent practitioner (a patent attorney or patent agent) understands how to make and use your invention. Read more about invention confidentiality.

Do Consider Protecting the Methods of Making and Using your Invention

Most inventors focus on seeking patent protection for the product that they created. Sometimes there are new and not obvious methods of making and using the product that can be, and perhaps should be, patented as well to ensure the best protection for the invention. Of course there is also the potential that your new machine that makes the product can be patented itself. Read more about patent application writing.

Do Put your Patent Number on your Product

Do put your patent number on your products. Marking your goods is often a requirement for damage claims. If you are issued a patent, failing to mark your product may prevent claims of damages for infringement. Read more about infringement in our article “What Does Infringement Mean?”

Do Include Intellectual Property Clauses in your Contracts

If you have work, development, or production connected to your invention, you should make sure that you have an appropriate intellectual property clause in your contracts to be certain that any new inventive steps taken are assigned to you in writing. Read more about who can be the patent applicant.

Things to Avoid when Patenting a new Invention

Don’t Tell Others About your Invention Before you Apply for a Patent

• Don’t publish or present before you apply for a patent. 
• Don’t broadcast the idea on social media before you apply for a patent.
• Don’t tell family and friends before you apply for a patent.
• Do Require Anyone who is not A Licensed Patent Practitioner to Sign an NDA

Any unprotected disclosure of the details of your invention may enable others to make and use your invention. You can only talk about your invention with a licensed patent practitioner (a patent attorney or patent agent) – with everyone else you may need an NDA. Invention disclosures to patent practitioners are covered by client controlled privilege. You are safe to talk about the details of your invention with a a licensed patent practitioner, because just like your confidential discussions with a lawyer about your contract or divorce, you are protected by legal requirements of the patent practitioner to not disclose any details of your invention without our permission.

Don’t File for a Patent Without Knowing if it is Patentable

Get a prior art search before you file a patent application, and get a patentability study from a USPTO Registered Patent Practitioner (Patent Attorney or Patent Agent). Importantly, only a licensed patent practitioner can prosecute a patent application for you. There are many imposters and posers out there, so be sure to check the patent license of the person you hire.

Don’t Ask for an NDA, Offer One

Keep an NDA with you, you never know when you will run into the right people. You can only disclose your invention to a licensed patent practitioner (a patent attorney or patent agent) without an NDA. Using an NDA with family and friends may not seem necessary, but we know from experience that the good ones don’t mind signing an NDA. If your invention really is that next big thing, we would prefer you not regret an early decision. Read more about NDAs.

Don’t Prepare Prototypes for the Application

In fact, the Patent Office will not generally accept prototypes. As the invention develops, we can amend applications and file divisional or continuation in part patent applications to add to an existing patent application. Contacting a licensed patent practitioner (a patent attorney or patent agent) as early as you can is the best bet to seek protection for a new invention or a new product from a new invention.

Don’t Focus on a Provisional Unless Disclosure or Timing is Critical

An advantage of filing a provisional patent application (PPA) is once filed, you can openly talk about your invention, however, NDAs are still a good idea.

Patents are based on a first to file system: the first inventor to file an application can get the patent. PPAs do not have claims, and importantly, they are not examined and expire after 12 months. A PPA is, in fact, paying for two patent applications wherein pursuing a non provisional may very well be the better decision. Consult a licensed patent practitioner (a patent attorney or patent agent) to learn the options available based on your invention and its circumstance.

Don’t Include Marketing Content in a Patent Application

You should not add any content or matter that is not actually part of how to make and use the invention to your patent application. Be sure to avoid marketing claims or “puffery” language in any patent application. Patents are about the claims for the product, process, method of manufacture, and/or methods of use and should not include any marketing content of any kind. Read more about how to write a patent application.

Don’t Claim your Invention Solves More Problems than it Does

You should not add any content or matter that is not actually part of how to make and use the invention to your patent application. Be sure to avoid extra or only hypothetical claims and language in any patent application. Patents are about the claims for the product, process, method of manufacture, and/or methods of use and should not include any unnecessary or speculative content of any kind. Read about what is a patent.