for-inventors.htm
Advice and instructions for inventors
ADVISOR ON INVENTING AND
INTELLECTUAL PROPERTY (IP)

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Advice and instructions for inventors

This site is designed to share my experience, knowledge, and techniques with new inventors and others. Additional material will be added from time to time.

It will show you how to protect your invention because I have found that many new inventors are afraid of having their inventions stolen and do not know how to protect their invention and prove the date when they have made the invention.

Much of this I have learned by experience in making inventions for companies and for myself. A number of corporate patent attorneys have also permitted me to learn by watching what they do. There is much related information in many books on inventing, but the vast material takes much time to absorb and understand. I will try to present the critical information and in concise usable form.

As time permits, this site will have additional suggestions added, including answers to some questions that are e-mailed to me.

A good, low cost, precaution in protecting your invention prior to filing a Pantent Application is to send a Disclosure Document to the U.S. Patent Office along with a check for $10.00, under the Disclosure Document Program.

This document should contain a description of the invention and will be held by the patent office for two years and can be cited in a subsequent Patent Application and can be used to prove the date of the invention. There may be prior notebook entries that, if properly witnessed, can prove earlier dates of the invention (if they contain satisfactory descriptions of the final invention). (Sending a description of the invention to yourself in a postmarked, sealed envelope is not recommended. It does not work well, and there are better, easy methods.)

Even after steps are taken to document the date of the invention, the invention should not be disclosed in non-confidence, otherwise the one-year clock for a formal Patent Application starts, and you must file a regular patent application within one year of non-confidential disclosure. Also foreign patent opportunities are immediately lost by non-confidential disclosure unless the invention is patent pending.

When the invention is offered for sale or is in commercial use it is considered as non-confidential public disclosure.

Note that diligence must be proven if requested, otherwise the rights to the patent may be lost. Diligence can include reduction to practice, or making tests, prototypes, and/or improvements. Written, dated proof of each diligent action is recommended.

Before you spend time and money on your invention you should try to determine if it is worth the effort. I will provide the following check list of a number of questions you should consider before you proceed.

CHECK LIST

1. Do you own the invention? Can it be patented for you because no one else has a patent, and it is not in public use. Was it invented as part of your employment, and owned by your employer? Are there others who participated in the invention so that it will make them co-owners?

2. Will it work? Have you built it or are you positive that it will work and that it does not violate the laws of physics?

3. Is there a need for it? Is there an existing market for the invention?

4. Is it better than what is already available?

5. Will it retain its advantage long enough so that it will generate revenue long enough to be worth the effort?



Filing a Provisional Patent Application, (PPA) or a Regular Patent Application (RPA) is considered as reduction to practice.

Note that currently, in the U.S. the patent (if issued) will go to the First To Invent, while in many other countries the patent will go to the First To File.

A Provisional Patent Application may be filed with the U.S. Patent Office in a much simpler form than a formal Patent Application. The filing cost for a small entity is only about $85.00 and changes each year. This simple application permits you to legally use the claim “Patent Pending” and is good for only one year if it is to be used in a subsequent patent application for this invention. In order to be valid, the application teaching must provide enough information so that someone skilled in the art may be able to make the invention without undue experimentation. This means that there must be full disclosure in the application.

In the provisional application, much material to be included in the actual application is not needed, including the claims, and this reduces the effort of preparation. Postponed to the actual Patent Application can be material such as the background, abstract and the claims. In general a formal patent attorney should write the claims because the wording is very important and must comply with the requirements of the Patent Office. Strong claims represent the major protective value of the patent.



Our basic material (including the above) which we will provide for use by inventors will be made available as a Free "Basic Concise Handbook for Inventors" at some time the future.

Also, at some time in the future, the basic handbook will be expanded into a more advanced version which will be an "Advanced Concise Handbook for Inventors". It will contain step by step instructions that inventors can use to inexpensively protect their inventions and to file Patent Applications.

Included will be copies of the non-disclosure agreements (NDA) that we use. One is a version that you use to submit your invention in confidence. Another is for mutual exchange of information in confidence, usually required by companies when you submit your inventions to them.

Included will be a check list for step by step instructions for the inventor to prepare and submit a low cost Disclosure Document (DD) to the U.S. Patent Office without using a patent attorney until later.

Also included will be another check list with step by step instructions for preparing and submitting a Provisional Patent Application (PPA), along with the appropriate forms for preparing and submitting the application. We also provide a copy of our suggested format and outline (which we personally use) for preparing the material to be included in the PPA. A patent attorney is probably not needed at this point if the instructions are followed completely.

When you are ready to prepare and submit a Regular Patent Application (RPA) you can use the included format which we have prepared and use for preparing a Regular Patent Application. The claims in the patent application are the most valuable and critical parts of the application, and special skill and experience is needed to obtain strong, valuable claims allowed by the patent examiner. At this point you might want to use a Patent Attorney to prepare the claims for your application. Because you have done much of the work in preparing the specifications, the work of of the Patent attorney will be easier and could be less expensive.

Watch for the "Advanced Concise Handbook for Inventors". The cost is expected to be reasonable, and you can use the handbook again and again for many of your inventions.




Important:  This information is not intended as legal advice and should not be used as legal advice. You should use a legal professional where necessary.


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INFORMATION

[diamond_green.gif] Providing Inventions And New Products
Invention devised "By Request", for serious companies and investors, at no cost or obligations.

[diamond_green.gif] Ten Reasons Why Companies Need New Products
In order to survive, prosper, and grow, Intellectual Properties (IP), particularly Patents, are becoming vital to many companies. Other companies with their own Intellectual Property can be a danger to your company.

[diamond_green.gif] See a List of Some of Our Inventions
This is a list of some inventions that are still available for licensing or purchase. Also included are some inventions that we have been thrown into the public domain so that no one else can patent them. They are examples of what has been lost because they are ahead of their time, or because there was no interest shown in licensing them.

[diamond_green.gif] Who We Are
Learn about our experience, background, and accomplishments. We are independent experienced inventors with many patents. We have advanced degrees, and with capability in many fields. Learn more about us.

[diamond_green.gif] How We work To Help You
Learn how we work using teams of inventors to meet your needs for new products.


Contact us if You Need More Information and Help


Sol Aisenberg, Ph.D.
International Technology Group
Inventions By Request
Tel: 508/651-0140 Fax: 508/653-0759
Mail to: itgplus@earthlink.net
The main index address: http://www.inventing-solutions.com/index.htm
Copyright ©2002-2003 International Technology Group
Permission granted to copy and distribute this file, but only with full attribution.

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