Registered U.S. Patent Agent
15322 East Ritter Circle, Houston, TX 77071
Phone: (713) 686-7676    

The information presented herein is provided only as general background information
on the patent process and inventions; and should not be construed as legal advice.
Copyright © 2000-2016 Kenneth A. Roddy.  All Rights Reserved

Basic Patent Information
Music while Browsing? ......Click Here
Who Can File Patent Applications? - What is a patent attorney and a patent agent?

Types of Patents - What are the different types of Patents?

Patent Applications - What is a Patent Application?

Provisional Applications - What is a Provisional Application?

Decision to File for Patent - Reasons for Filing for Patent

The Patent Search - What is a Patent Search?

Determination of Patentability - What is Patentable?

Timing of Application Filing - Time limits you should be aware of

Prosecution of U.S. Application after Filing - What happens after the application is filed?

Amendments - What is an amendment?

Allowance and Issue - When will the application become a patent?

Protection During Pendency of Application - Am I protected during the "Patent Pending" stage?

Patent Infringement By Inventor Of New Invention

Conflicts of Ownership of  Invention - Conflicts on Ownership of Invention

Disclosure Document Program - Disclosure Document Program

Foreign Protection and PCT Application- Foreign Protection and PCT Application

Marketing of Inventions and Invention Scams- Marketing of Inventions

Record Keeping for Invention - What kind of Records Should You Keep For Your Invention?

My Background - (In Progress)


 Patent Information

 Services & Fees

 Helpful Websites
 for Inventors

 Patents Available

 Books for Inventors

 Posters of Famous  Inventors & Inventions

Other Stuff

 INVENTION EMPORIUM  Online shopping - Unique Products, New Inventions, Gadgets, Gifts

 Great Beaches - Some of my favorite beaches and vacation spots

 Beach Posters

 Beach Calendars

Click here to visit

Who Can File Patent Applications
While an applicant for patent may file and prosecute his own case, or may be represented by a patent attorney or patent agent, the Patent and Trademark Office usually recommends the use of an attorney or agent.  Although an inventor may prosecute the application,  lack of skill in this field often detracts from obtaining the maximum protection for the invention.  In most inventor-filed cases, the patent Examiner sees that the applicant is unfamiliar  with  the proper preparation and prosecution,  and  almost always urges the applicant to employ a registered patent attorney or agent to prosecute the application, since the value of a patent is largely dependent upon skillful preparation and prosecution. While the Examiner may  recommend hiring an attorney or agent, he never suggests any particular one.

In addition to being a qualified attorney-at-law,  a patent attorney is technically trained,  usually  having a degree  in engineering or in one or more of the sciences.  A patent agent is also technically trained  with a degree in one or more of the sciences  but  is not an attorney-at-law.  In order to use the title "Patent Attorney" or "Patent  Agent", the attorney or agent must satisfy the Commissioner of  Patents of his character and competence in both technology and law and be registered  to practice before the Patent Office, by passing a difficult examination on the preparation, filing and prosecution of patent applications.

Back to Top

Types of Patents

Patents  fall  into four general  types:  (1) Utility patents, usually referred to as "patents" without any further qualification, (2) Design patents which  cover the ornamental appearance of various products,  (3)  Plant patents  which cover asexually  reproduced varieties of plants, e.g. hybrid roses, fruit trees bearing new types of fruit, etc., and (4) Semiconductor chip masks which are not called patents but are handled by the Patent and Trademark Office.   For the grant of an ordinary, or utility patent,  the invention must fall into one of four statutory classes of invention, which are (1) a process,  (2) machine, (3) article of manufacture, (4) composition of matter, or (5) an improvement on an existing invention in one of those classes of invention.   A valid patent secures the right to its owner to exclude others from making, using, or selling the claimed invention in the United States and its territories and possessions for a limited period of time.

On June 8, 1995 the law was changed whereby the term of a utility patent filed after June 8, 1995 is 20 years from the filing  date, or if it claims "priority" of an earlier patent application, 20 years from the filing date of the earlier patent application.  On patents now in force or granted on applications filed before June 8, 1995 the term is 20 years from the filing date or 17 years from the issue date, whichever is greater.  Design patents, which are granted only on the basis of ornamental design,  have a term of 14 years from the issue date.

The Patent Application

A patent application consists of a written description of the invention or specification, together with illustrative drawings to disclose the invention, and claims.  The disclosure or specification of the application is required by law to be sufficient for one skilled in the art to which the invention pertains to be able to practice the invention.   At the end of the application or patent are a series of numbered paragraphs called "claims".  The claims define the scope, range or area of the invention.  The scope of the claims is interpreted from the disclosure or specification and technology existing prior to the filing of the patent application.

A patented invention is a piece of property similar in some respects to real estate.  In fact, a patent has certain legal similarities to a deed for land.  A land deed defines the property owned by "metes and bounds",  a precise statement of the length, breadth, and direction of the legal boundaries.   The claims of a patent define the boundaries of the invention.  In the case of land, a fence is used to enclose the property owned.  In the case of a patent, the claims enclose the invention and  determine  the boundaries of the inventive property.   You should keep in mind that it is not so important that you get a patent as it is that you get a patent with carefully drawn claims which express your invention broadly enough to prevent others from taking the essence of your invention by making minor changes and producing a product which is not covered by your  patent.   This takes a high level of  skill and experience in the attorney or agent who is preparing and prosecuting the patent application.

The preparation and filing of a patent application on an uncomplicated mechanical invention  normally  involves attorney's fees  from  $3,000.00.   More complicated mechanical cases and electrical and chemical cases may run higher and are usually estimated by using the attorney's  usual hourly rate.  In addition to the attorney’s fees, there is a charge of about $135.00  per sheet of patent  drawings  and  the Patent Office filing fee which, for an individual or small business (less than 500 employees), is half that of a large corporation.  The patent application fees are in addition to the charge for the patent search.  In the absence of suitable arrangements for credit,  patent application work is done on a prepaid basis usually requiring one-half of the estimated charge for the patent application in advance before work on the patent application is commenced, and the balance paid prior to the actual filing of the application.

The preparation and filing of a patent application requires one or two months after the search  results are in and reported, although this time may be reduced when the circumstances demand  it.  Also,  in rare cases, e.g., a close public use or sale date, where the client insists,  the application may be filed without a search.  This is not recommended and is undertaken only when the client is willing to sign a statement that the filing is being done at the client's request without a search.

Provisional Applications

A person may obtain an early "priority" date by filing a "Provisional Application" provided a "regular" application is filed within 1 year of the provisional. The provisional application does not require an oath or claims, but must have a specification and drawings which describe and show the invention in sufficient detail to enable one skilled in the art to practice the invention (like a regular patent). The government filing fee is $100 for small entities and $200 for large entities, and the attorney fees are about one-half the fee for a regular patent application.

The provisional application cannot mature into a patent, is not examined, and cannot claim priority of an earlier application, and will automatically become abandoned 1 year after filing. The "regular" patent,if filed within 1 year, can claim "priority" of the filing date of the provisional application for defensive purposes. The 20 year patent term does not start on the filing date of the provisional application, it starts on the filing date of the regular application.

A person may also file a regular application and then within 1 year convert it to a "provisional" by filing a petition and paying a fee and then file another regular patent within 1 year to extend the term to 21 years.

The provisional application has replaced the discontinued "disclosure document" program, discussed hereinafter. The advantage of a provisional application is that it would put the application on file and give the inventor 1 year to further develop the invention, determine marketability, or seek financing and licensing, under a "patent pending" status. The disadvantages are: (1) it does not not necessarily mean that you will be able to obtain a patent, (2) it starts the 1 year time bar running to file the "regular" U.S. patent and any foreign patent applications if you have sold or publically disclosed your invention, and (3) it prolongs the examination and issuance of a patent with inforceable claims. There is no protection during the period in which the provisional application is pending in the sense that action could be taken against another who copied the invention.

Decision to File for Patent

A patentable invention may be of value because it represents a piece of saleable property.  It may be sold or licensed to others to produce income or capital gain.  A patent may also be of value to protect a business effort against competition.  Finally, a patent may be an asset to a company, a value as a part of the technical literature, and the ego value to the inventor of having it known that he is the inventor of a patentable invention.   Therefore, the decision to file a patent application will usually be based not merely on patentability but also upon the commercial value or potential to the  inventor in terms of his entire business.

The Patent Search

The patentability search is usually carried out in U.S Patent databases and in the Patent Office public search room and in some of  the  foreign patents collected by the Patent Examiners.  The classification system is very complex and there are a substantial number of patents missing from the public search files and so even the best search is probably only 80-90% reliable.  By that, we mean that if a patent application is filed the Patent Examiner in 80-90% of the cases may find prior art which is better than that found by the patent searcher.  Relevant patents found on the search not only determine whether the invention is patentable but also are of value in enabling the attorney or agent to prepare a better patent application which has claims of maximum breadth without too much danger of being irretrievably rejected on prior art.  A skillful attorney or agent can point out the novel features of  the invention in a manner distinguishing over the references.

In the initial conference with the attorney or agent, the invention should be disclosed,  preferably with sufficient sketches or drawings and a written summary of the advantages and features of the invention.  To evaluate patentability, the attorney or agent, in most circumstances, recommends a limited novelty or pre-examination search.   The limited search and related  patentability opinion generally require some four to six weeks.  At a premium cost, it is sometimes possible to get a search done in as short a time as one to two weeks.

A fairly reliable patentability search and opinion costs about $500 on relatively uncomplicated  mechanical  inventions.  More complicated  mechanical  searches,  and  electrical  and  chemical searches may be more expensive because more time is required by the searcher and also by the  attorney or agent in preparing a patentability opinion.  The attorney or agent can give you a more accurate estimate of  the likely cost of your search.  For new clients without established credit,  prepayment  is  required for searches.

Determination of Patentability

An invention is considered to be patentable if it fits into one of the statutory classes of invention listed above, viz., (1) a process, (2) machine, (3) article of manufacture, (4) composition  of matter, or (5) an improvement on an existing invention in one of those classes of invention, and not shown precisely by the prior art or would not  be  obvious from the prior art.  In addition, the invention may not have been in public use or on sale,  in the United States,  prior  to the date of making the invention or more than one year prior to the filing date of the patent application.

Timing of Application Filing

As  discussed above, if you intend to obtain  patent  protection only in the  U.S.,  you  can have your invention in public use or on sale or in publication before  you  file  for  patent, but not more than one year before filing.  However, if you expect  to  file  any foreign patents, you must be cautious about early public use or sale of  your  invention.   In most of the world, except for the United States, any public use or sale of  the invention prior to filing for patent will invalidate the patent.   If it is your intention to file in foreign countries, it is recommended  that  you file your regular or provisional  U.S. patent application before any  public use or sale.

Prosecution of U.S. Application after Filing

Approximately three weeks after your application is received in the Patent Office, it will send back a return postcard mailing receipt showing the filing date and serial number for your patent application.   A few weeks later an official Patent Office filing receipt will be received which will indicate that your application has been assigned to an examining group specializing in the field of your invention and your application will be examined in turn in the chronological order in which they are received.  If you are manufacturing your product, you may mark it "Patent  Applied  For" or "Patent Pending", as desired.  However, the Serial Number of the patent application should not be used in such notice.

The Examiner assigned to your application will make a very thorough search of the prior art available in the Patent Office.  Their search  will include U.S. patents, foreign patents, periodicals, books, and any other publications that are pertinent to the invention which have been printed  earlier than one year before your filing date.   The Examiner will compare those references to  your invention to determine novelty, originality, and utility of your invention over the existing prior art.  He also determines if your application is in compliance with the Patent Office legal requirements and formal matters.  Depending upon the work load in the group and the complexity  of  the invention, this may take anywhere from three  months to a year or more.

Upon completion of the examination, you will be notified in writing of the Examiner's findings and initial decision on your case.  This is known as the first “Office Action”.  This first action will contain pertinent references and any reasons for rejection, objection, or mistakes in the  application.   The rejections or objections,  if any, may be based on prior art, or the concept itself.  Sometimes, the Examiner will allow some claims and reject others or object to the claim language.  In the event the Examiner finds no significant matter in the claims for objection or rejection, the claims will be allowed as filed.  This is known as a "First Action Allowance."

A patent does not issue until all claims are allowed.  You are not certain of obtaining a patent  until you are notified that at least one of the claims is allowed.   The prior art found by the Examiner may include a patent which is nearly identical to your invention, or is similar in function or construction.  Even if a single patent does  not contain all of the elements or features of your invention, the Examiner may combine various elements and features found in different inventions  and  based on the combination,  take the position that your invention would be obvious to those skilled in the art.  This type of rejection is sometimes difficult to overcome.

Since you know your invention better than anyone, the attorney or agent may ask you to review the references cited by the Examiner and assist in pointing out the novelty of your invention over the references.  Rejections are very common,  and you should not become   discouraged if your application is rejected in the first office action.   The rejection is often necessary no eliminate or clarify overlapping areas between an existing patent and the new application.  At this point, if there are rejected claims, a judgment must be made as to the validity of the examiner's position.


You will be given a three-month time period to respond to the action, otherwise the application will become abandoned.  The time for response may be extended for up to four  months by paying additional extension fees for each month extended.  To prosecute the application further, the attorney or agent prepares an answer to the Office Action which is usually referred to as an “Amendment”.  This answer may amend the claims to better distinguish the invention from the patents cited by the  examiner.   It always includes a discussion of the differences between the patents cited by the examiner and the applicant's invention, and it may also be necessary  to  include a legal argument as to why this particular application should be allowed.

At the time of filing a patent application,  there is no way of  knowing whether an Amendment will be required, and if one is, how much time and effort will be involved to argue the case.  There may be more than one action and amendment and possibly an oral interview with the Patent  Examiner, but usually the second Office Action is either a "final rejection" or the patent may be  granted.  If the Office Action is made final, all claims may be rejected or some rejected and some allowed.  If claims are rejected finally, a choice is presented between taking an appeal, submitting  an amendment, interviewing the Examiner or canceling the rejected claims.   An "Appeal" requires a lengthy legal brief before the Board of Appeals which includes reciting appropriate case law in an attempt to reverse the Examiner's decision after the Application has received a final rejection.   It  is  sometimes  necessary  for the attorney to appear before the Board of Appeals to argue the case personally.

The total time for prosecution of the application after filing may take as long as one to one and one-half years.  Most of that time lapse is spent awaiting actions by the Patent  Office.  The costs  of prosecution of the application are in addition to the original attorneys fees, filing fees,  drawings, etc. paid when the case was filed.  The attorney charges separately for the prosecution, usually basing his fee on his time and the complexity of the matters involved.  Some attorneys or agents may file a simple Amendment at no charge or a small fee to the client.   In  some instances, the case may  be argued at no charge unless successful.  On some occasions a trip will be made to  the Patent Office to personally interview the case with the Examiner where the expenses of the trip are shared among  several  clients.   In  some cases the cost of the prosecution could be nearly as much as the cost of the preparation and filing of the application.

Allowance and Issue

Once the Application is in order, and all rejections and objections have been overcome, the prosecution is over.  A "Notice of Allowance" will be mailed to the attorney or agent.  This again may take several months.  The Notice of Allowance also calls for payment an "Issue Fee" which must be paid within 3 months from the date of the notice or the case will become abandoned.  The  amount of the issue fee for independent inventors and small businesses is half that of large companies (more than 500 employees).  For an additional fee,  you may also order advance copies of your patent which will be mailed with the official copy of the patent when it is printed.  The  government fees fluctuate in accordance with the latest consumer price index (CPI) figures.

Several months after the issue fee is paid,  the attorney or agent will receive an "Issue Fee Receipt" which will give the Patent Number assigned to the invention and indicate the date on which the patent will be printed and issued.

Your patent is good for 20 years from the filing date, however "Maintenance Fees" will be due to maintain the patent in force for a set period of years.  No  maintenance fee is required on design and plant patents.  The first maintenance fee is payable between 3 and 3 1/2 years for maintaining a patent in force beyond 4 years; the second is payable between 7 and 7 1/2  years for maintaining a patent in effect beyond 8 years; and the third is payable between 11 and 11 1/2 years for maintaining a patent in effect beyond 12 years.  The fees for large companies (more than 500 employees) are double the amounts for independent inventors and small companies.

The maintenance fee must be submitted to the Patent Office within the time periods, or within  a  6  month  grace period accompanied by an additional surcharge.   If the maintenance fees are not so paid, the patent will expire on the anniversary of the grant date in the 4th, 8th, or 12th year after patent was issued.

By the time the maintenance fees are due, you will probably have a better idea of the value of  your  invention.   If the invention appears to be valuable,  you  may  want  to pay the appropriate fee to maintain the patent in force for the next four year period.  On the other hand, if the invention then appears  to be valueless, you can allow the patent to expire.

Protection During Pendency of Application

There is no protection during the period in which the application is pending in the sense that action could be taken against another who copied the invention. There is protection, however, against another who filed a patent on the same invention later than your effective filing date. The first applicant to file will be awarded the patent in about 80% of the cases. In the other 20%, the rival inventor was able to prove that he made the invention first. There are several procedures, e.g., petition to make special, interviews with the Examiner, etc., which may expedite the issuance of a patent application where there is an infringement going on.

The use of the "Patent Pending" or "Patent Applied For" notice is used to caution competitors that a patent may be issuing on the product in question. If a competitor manufactures and sells infringing products during the period of pendency of an application, he runs a risk of loss of the cost of his tooling-up for production, loss of the value of his advertising and loss of the value of his inventory on the date the patent issues, which date is normally unknown to him. Also, if he continues infringement after the patent is granted, there are cases holding such infringement to be willful and subject to punitive damages. For these reasons, the patent pending notice may be highly effective.

Patent Infringement By Invention of New Invention

Many inventors, and businessmen investing in new inventions, have the mistaken belief (1) that it is necessary to obtain a patent to put a product on the market,  and (2) the grant of a patent on an invention insures that the new product is not infringing any other existing patents.  Neither is true.

There is no requirement of law that one get a patent for a new invention.  A patent may be useful to protect your business against competition, or to sell or license, but there is no legal requirement to obtain a patent.  It is also possible to obtain a patent on an invention and, at the same time, infringe someone else's patent by the practice of the invention.  For example, the Patent Office grants patents on "improvements" and a patent on an improvement may be a valid patent, but the practice of the invention may infringe some earlier patent which has not yet expired.  Note that patents expire in 20 years (or sooner if the maintenance fees are not paid) and cannot be extended.

The ordinary patentability search does not cover all patents which the subject invention might infringe, also in some cases a patent may not be found by the patent Examiner during the examination process.  An infringement search is different and more comprehensive than a patentability search.  If an inventor, or businessman-investor, is contemplating a substantial investment in the invention or the use of the invention commercially,  a patent infringement search may be needed.  Infringement searches are considerably more expensive than patentability searches and can cost several thousand dollars.

Conflicts of Ownership

Sometimes in dealing with others,  it  is  necessary to prove just when the invention was made.   This may be when the inventor has submitted the invention to another for sale or licensing and he subsequently suspects that the invention has been stolen.  Sometimes proof of an inventor's conception and the date of his first disclosure to others may be required.

A copy of the disclosure, suggested above for submission to the patent attorney or agent,  may  be read and witnessed by a friend or patent attorney or agent capable of understanding it and used as proof of conception and/or disclosure of the invention.  It should be witnessed by signing and dating with some phrase such as "Read, witnessed and understood,"  each sheet of written description or drawing constituting the disclosure.   This material is only one item of evidence in the long and complicated procedure of determining  priority of inventorship between two or more parties.  Do not have such papers notarized!  You need a witness to the contents of the disclosure not a verification  of your signature.

If proof of invention is needed in the Patent Office, as where there is another patent application  on file claiming the same invention as yours,  you will need proof of  things done toward building and testing the invention.   An earlier conception date will almost never succeed against a rival  applicant for patent who has an actual constructing and testing of his invention prior to your filing date.  Consequently, all invoices for purchase of materials and parts used in the developmental effort, and other documentary evidence of the continuance and progress of the work on the invention should be preserved.

A person who is not an inventor or co-inventor should be asked to observe enough of the work, and all of the tests, to be available as a corroborating witness.  The  inventor's  or inventors' testimony is  not  acceptable in conflicts of this type unless corroborated.  If the corroboration of  the underlying facts of  the  invention by a witness other than an inventor or co-inventor and documents written by other than the inventor or co-inventor establish a diligence in working  toward building and testing the invention or getting it ready for filing a patent application, then the inventor may get credit for the date of his first disclosure to others in a conflict as to priority  of invention.

Disclosure Document Program

The U.S. Patent and Trademark Office eliminated its Disclosure Document Program on February 1, 2007. Previously, the Disclosure Document Program provided inventors not ready to file for a patent with an alternative method of establishing the "date of conception" of an invention. In the United States, priority for a patent goes to the person who is "first to invent" rather than to the person who is "first to file" a patent application. The "date of conception" is important in establishing who the first inventor is in the event another inventor applies for a patent for the same invention. The disclosure document was not a patent application and did not provide any benefits beyond establishing a conception date. Inventors not ready to file a full patent application are encouraged to file a "provisional patent application". The provisional application provides more benefits and protections to inventors than the disclosure document. A provisional patent application establishes a filing date and allows the term "patent pending" to be applied to the invention. See "provisional application" above.

Inventors are also encouraged to maintain conventional witnessed records, drawings, sketches, etc., as evidence of the date of conception of the invention.

Foreign Protection and PCT Application

U.S. inventors can obtain patent protection in virtually every nation of the world, except for a few underdeveloped countries. The attorney can advise you of the type of protection available in each country and handle the preparation and filing of applications in each country through his foreign associates. One should anticipate that each foreign country application will cost about the same as the U.S. application. There is no "international patent" available at this time, except for a group of former French colonies in Africa. The international Patent Cooperation Treaty (PCT) simplifies foreign filing by filing a PCT application. Also, if one wishes to file in Europe, there is a central European Patent Office, which simplifies filing but separate national patents are granted.

There is a simplified procedure for filing in foreign countries and also the U.S. under the Patent Cooperation Treaty (PCT). The PCT patent application is filed initially designating the particular countries you intend to file in (or all countries) during the "international stage". If the PCT application is filed within 1 year of the U.S. Filing date, you may claim priority of the earlier U.S. filing date for overcoming prior art. A PCT application can be filed after the 1 year period, provided the invention has not been sold or published, but cannot claim priority after the 1 year period. The Government filing fees for initially filing the PCT application designating all countries are approximately $3000 (not counting attorney fees).

Then 30 months from the PCT filing date or the priority date the PCT application will enter the "National Stage". At the national stage, the application is sent to each of the designated countries for national filing in each country including processing (translating and local filing fees). The cost usually averages about $2,500 per country. Foreign patent protection can be very expensive. Depending upon the number of countries, the total costs could be as much as $35,000 - $40,000. Foreign countries also charge an annual annuity starting from the date the application is filed in that country which runs about $250-$300/yr. Due to the expense, most clients do not file foreign patents unless they have a very strong market in those countries. The expense could be reduced by selecting only a few major countries.

Invention Scams and Marketing

Many individual inventors call or come into this office for information on marketing their ideas or inventions.  Often, they have just seen or heard a TV or radio commercial about a free “inventors kit” or have talked to a representative of a company named XXX Marketing,  XXX Submission Corporation, or a company having the words Product Development or Invention Development in the business name.

At the start, we tell them “Beware of Invention Marketing or Development Firms”.  In particular,  have nothing to do with such a firm if they will not give you references of inventors they have helped, and statistics as as to how many inventions they have handled over the period of years that they have been in business , and out of that number, how many of those were sold for more money than they charged for their fees.

If they say that they cannot or will not give you this information, they are fraudulent.  The law of the State of Texas requires that such information be given.  Also, beware of invention marketing firms that  require large, e.g., several  thousand  dollars,  front end payments.  When is the last time you heard of a real estate broker getting large front end payments?  Almost never!  The real estate brokers have just as much, if not more, overhead, labor, office expenses, advertising, etc., expense as invention marketers but they make their living from commissions only.

The Attorney General of the State of  Texas has closed down several of these "Invention  Marketing" firms for fraud and violation of Texas statutes and keeps a close eye on similar firms which advertise highly in Houston.

We generally advise inventors to look carefully at the invention they are trying to sell.  Is it protectable by patent or copyright or as a trade secret?   If so, it may possibly be saleable.  If not, it probably cannot be sold for any price.  Get a patent search first to make sure the invention has not already been patented and determine if it is a protectable concept.   Then get an unbiased evaluation from an invention evaluation service such as those at the University Of Houston Small Business Development Center.  The answers obtained will help one determine whether the concept is worth the money that it is going to cost to get it patented.

Record Keeping For Your Invention

There are certain records which you should keep with respect to your invention for protecting the invention prior to filing for patent and to assist your attorney or agent in preparing an application.  Such records, if complete, will always make the preparation of the application easier for the attorney or agent and perhaps less expensive for the client.

Complete written records should be kept: (1) showing the name or names of the inventors, (2) showing the date of conception of the invention, referring to witnessed drawings and written description, (3) engineering drawings and material specifications where available, (4) the ordering of materials for and description of the construction and operation of the invention, (5) any experiments carried out leading to the successful completion of the invention.

These records should be given to the attorney or agent for use in ordering a search and/or in preparing a patent application. You should note that a patent attorney or agent is bound by law to keep your invention confidential and not make any use of it for his benefit or disclose it to others except as required in representing you.

A good written disclosure to the attorney or agent for use in your case should include the following, to the extent such information is available:

    1. Full name and post office mailing address of inventor or inventors. Note that it is the inventor’s responsibility to keep the attorney or agent aware of changes in address. If the attorney or agent cannot reach the inventor during the prosecution of the patent application, there are many instances where the right to obtain a patent may be lost.

    2. If there are two or more joint inventors, indicate the contribution to the invention by each, if known.

    3. Note that mere contribution of financial support to an inventor does not make the investor a joint inventor. The investor can have an interest in the patent application assigned to him but cannot be on the application as an inventor. If the inventor has assigned the invention to another, or if his employer or other backer owns any interest in the invention, identify the name and address and interest owned by such other person.

    4.  Note the following important dates concerning the invention and attach pertinent information relating to:
         a. Any disclosure to the public by publication, offer for sale and actual sale of a device embodying the invention.
         b. Conception by the inventor, of each of the various significant new features which make up the invention.
         c. Disclosure by the inventor to another person of each significant feature of the entire invention.
         d. First drawing showing all significant novel features which make up the entire invention.
         e. Records of experiments and tests of the invention or parts thereof (especially the first actual successful use or operation of the invention), plus a brief written description of the test.

    5. The written description of the invention should include:
         a. general subject matter or field of the invention;
         b. note the particular problems which the invention solves and how solved;
         c. a drawing showing the best form of the invention and any suggested alternatives;
         d. a description of the invention shown in the drawings;
         e. reference to and/or copies of any publications or patents known to the inventor that describe the problem solved by the invention or disclose other efforts at the same function or result as that of the invention;
         f. a list of advantages which the invention has over comparable products, methods, compositions, etc. already known or in use for substantially the same purposes.

My Background & Interests

(To Be Completed)

[ Main Page ]  [Services ]  [ Patent Information ]  [ Patent Related Links ]  [ Beaches  [ INVENTION EMPORIUM Online shopping ]