Conduct a Patent Search and Keep Quiet

You have an idea for an invention, but you really don’t know what to do next.

If you want to pursue a patent, there are a number of steps to take. The first two things we can suggest are to conduct a search and don’t tell anyone about your idea.

Do a search (i.e., ask)

Conducting a search on your idea is the best, first step to seeing where you stand. Many times, a search will reveal that someone has already thought of your idea. Try Google and, if you don’t find anything, try some keywords at the US Patent and Trademark Office (USPTO) website (http://www.uspto.gov). These cost nothing but your time and can save you a lot of cash and grief.

You can also try a search within the patent classification system. Patents are organized into groups based on their subject matter. You can find listings of the classes at the USPTO website here: https://www.uspto.gov/web/patents/classification/selectnumwithtitle.htm. Once you identify the classification(s) relating to your invention, you can conduct a search within the classification(s).

If you find that someone has patented or is using your idea, don’t despair. Many times, people come up with a concept, but don’t have the passion and/or commitment to see it through to a product. Perhaps you can connect to this person and propose to license and commercialize the invention. We will discuss this in later installments of this series.

If you don’t find someone already working with your idea in your initial search, that’s good. But, even if your search turns up nothing, you may still consider hiring a professional to conduct a more thorough “prior art” search. Sometimes things can be missed by using the limited resources (i.e., Google and uspto.gov) most of us have access to. A patent agent or experienced attorney can delve into the classification systems on patents and use other techniques for a thorough search. This could save you time and money in the long run.

Keep your mouth shut (i.e., don’t tell)

There are actually a couple reasons why you may not want to tell anyone about your idea.

In September 2011, President Obama signed a patent reform bill into law.[i] This law changes the granting of a patent from “first to invent” to “first to file.” That means you could invent something first, but the first person to file the idea with the patent office will get the patent protection (more about this in later posts).

Another reason is, if your invention is disclosed publicly (e.g., in an article, on a website, etc.) you have a one year window of opportunity to file, beginning with the date it was disclosed. The US Patent and Trademark Office generally will not allow a patent on an invention that has been “described in a printed publication . . . more than one year prior to the application for patent in the United States.”[ii]

So, it’s probably best not to tell anyone about your idea, if you can help it – at least until you are ready to file to protect your idea.

If you decide to approach a company or someone with a potential interest in your idea, consider first entering into a non-disclosure agreement (NDA). We will discuss NDAs in a future installment, but in the meantime, you can find out a lot about this by simply Googling it.

By David Walker, SBTDC

[i] http://macdailynews.com/2011/09/16/obama-signs-first-to-file-u-s-patent-reform-bill-into-law

[ii] http://www.uspto.gov/patents/resources/general_info_concerning_patents.jsp

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