David Pressman, Esq., author of Patent It Yourself, offers his advice about how to patent your idea. He covers performing a patent search, applying for a provisional patent, evaluating commercial potential, filing a patent application, hiring a patent attorney, common inventor pitfalls, and much more.

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Do you need more advice about getting a patent?
Read his book, Patent It Yourself.

What is a patent, and how does it different from a copyright or a trademark?

A patent is a document that is issued by the U.S. Patent Office (USPTO) that gives the inventor, or inventors, or any company that the inventor has transferred the invention to, a right to exclude others from making, using, selling, importing or offering the invention for sale for a limited period of time, which is 20 years from the date you file, usually. It used to be 17 years from the date the patent issued, now it’s 20 years from the date you file. A copyright is a right granted by the U.S. Copyright Office to an author, an artist, a programmer or someone like that who has written some document or program or dance routine or photograph and gives them a monopoly, or a right to exclude others from copying. The period of time depends on whether you are an author for hire or an author just working for yourself. If you’re working for yourself, it’s your life plus 70 years. If you work for hire, then it’s the straight 95 years. A trademark is a brand name for goods or services. One of the strongest is Kodak, that’s a brand of camera. In addition to a word, a trademark can be any other symbol, such as a Mercedes-Benz triangle or even a color, sometimes, or even a sound, like the NBC chimes. It’s any symbol that’s used as a brand name for a good or service. If you just merely use a trademark on some goods or service, you have rights in that and you can sue any infringer under your common law rights, that’s your judge made law rights, but it’s much better to register the trademark, and the trademark can be registered with a state trademark authority or the U.S. Patent and Trademark Office, but if you sell goods across state lines, then you should register it with the U.S. Patent and Trademark Office.

How do you know if your idea is even patentable? Talk about examples of what might qualify and what would not.

To get a patent, you have to meet four criteria. It has to be new and unobvious, that’s the main thing, but it also has to be in a statutory class, and it has to be useful. To give you an example, let’s take a centrifugal vegetable juicer that you stick a carrot in and it grinds it up at the bottom and then it throws it against the sides of a spinning drum, and the drum is perforated and it catches the carrot pieces and it lets the carrot juice go through. Well, this type of juicer used to get clogged up very quickly, so someone merely increased the slope of the basket so it sloped outwardly, and the carrot pieces would ride over the top and go out, so you could use it all day and it wouldn’t get clogged, so this was a great invention. That’s a very minor change and you can get a patent on it because it gives you valuable new results. The criterion is, is it novel? Any difference at all from what is known as the prior art, what has been done before, will suffice to show novelty. The next criterion is unobviousness. It has to be considered unobvious, which means that it has to usually give you some new and unexpected result, and here with the example of the vegetable juicer, you get the ability to use it continuously all day. That’s an unexpected result, so it’s novel and unobvious. The other two criteria, usefulness and in a statutory class, I’ll just cover briefly. You can’t get one for an invention unless it has some usefulness to society. It can’t just be some whimsical thing, and it’s hard to give an example of something that wouldn’t be useful even if for amusement. But there are occasionally things that really have no use. You might discover a new chemical, but if you don’t have a use for it, you can’t get a patent. The statutory class category, it has to be a machine, an article, a process, a composition of matter or a new use of one of those.


You think you’ve come up with an idea worth protecting. What are some things to consider before beginning the process of researching and applying for a patent? How do you know that the great idea you have has any type of commercial potential?

In addition to commercial potential, you need novelty. That’s why I recommend that all inventors follow RESAM. The first thing to do is R, which means record the invention, write a description of it, sign and date it, and get it witnessed. That way, you can prove you invented it and when you invented it. You can also file a provisional patent application, that gives you a year before rights under that will expire. After you’ve recorded it, the second step is E, evaluate the commercial potential of it. You can generally look for any serious disadvantages it may have, and if you find any, or it costs too much to produce or uses dangerous technology or technology that’s not yet perfected, that’s a serious negative so it doesn’t have that commercial potential. If you can make a survey and see if something like that would sell, and if it doesn’t sell enough to justify the cost of a patent, then you shouldn’t do it. So you should evaluate commercial potential carefully to avoid wasting your money. The S part is to search it. You search it for patentability, to see if anyone has known it before. We used to generally go into the Patent Office to make a search there, but you can make a pretty good search with Google Patents now and on the patent office’s site, and the European Patent Office has a site, too, so between the three of them, if you have time to spend maybe a day or so, you can make a pretty good search. Also, you can hire a searcher to go into the Patent and Trademark Office in Alexandria, Virginia, and make a search there if you want. But it costs about $500 generally to hire a searcher and go in there. So after you’ve made a written record, evaluated commercial potential and made a patentability search, if all systems are go, then you can go ahead, and for the A step, prepare a patent application and file that in the Patent and Trademark Office, and then the next step is to market it to try to get a licensee who will pay you royalties for making and using it, but the patent application’s a big step, so you should evaluate commercial potential and search it well before you go into that step.

Walk us through the process of filing an application for a patent, and what are the most common pitfalls people tend to run into?

The patent application shouldn’t be prepared lightly. It should be reviewed very carefully and it has sentence fragments at the end that we call claims that describe your invention in legal terms, so you should do it very carefully and take the time to do it well, and look at previous patents to see how it’s done. The main thing with a patent application is you have to tell how to make and use the invention, which means anybody who reads your patent application should be able to make and use it from reading it without the exercise of ingenuity or invention or a lot of work. You don’t have to give dimensions, generally, but you really have to give pretty good detail about how to make and use it. The reason for this is that when your patent expires after 20 years, you want to give the invention to the public so they can use it. So in exchange for the government giving you a monopoly, you have to tell the public how to make and use your invention. And the second thing, with a patent application, in addition to telling how to make and use it, you have to write your main claims, those legal sentences at the end of your patent application, broadly enough to cover your invention well. It seems paradoxical, but the less you put in the claim, the broader it is and the terms you use are important too. So you have to worry about describing the invention adequately and making your claims broad enough, and you also have to have the patent application in the correct format. Otherwise the Patent Office will reject it and you may not be able to correct the error.

So when prosecuting your patent, is the patent office going to try to make you narrow those claims?

Usually, they do. Sometimes they can’t find anything, but what they do is they will look at your application and make sure that it tells how to make and use your invention, and then the examiner in the Patent Office will read your claims, and see if he or she can come up with any prior art, that’s things that are published before you filed that show your invention and meet your claims, and usually they can find something, so they’ll reject your claims, and then you have to come back and narrow the claims, put some more terms in them or use narrower terms, and argue with the examiner to show that your invention is patentable over the prior art, and the way you do that is you first show it’s novel. You have some stuff in your claim that isn’t in the prior art, and then you also show that this novel feature gives you some new and unexpected result, in other words, it’s unobvious. We do that all the time, that’s the patent prosecution process where you argue and discuss your invention with the patent examiner to try to convince them that your invention is novel and unobvious.

What parts of the patent process can you do yourself, and when should you definitely hire a patent attorney or other professional to help you?

If you have the money, you can use a patent attorney but you have to be sure that they do a good job. A lot of patent attorneys will not claim your invention broadly enough or they may not disclose it adequately. You should monitor the attorney well. But attorneys will now charge, to file patent application on a simple invention, $5,000 and up, so you have to have a lot of money, and then in addition to this $5,000, you have to pay for prosecuting the invention, for arguing with the Patent Office, and that may cost another couple thousand dollars or more, and then the maintenance fees, so most people have trouble affording that. If you can write a detailed description of your invention in conjunction with drawings, you can do the whole job yourself, but you have to be the person who can sit down and get the drawings done and write a detailed description and follow detailed instructions, which I provide in my book. You have to be disciplined in order to do it yourself.

Talk about those ads you see on TV offering to help you patent your invention. What are they offering to do for you and are they scams for the most part?

Almost 100% are scams, I think. I’ve never found one that really is worthwhile. What they do is they advertise on late night TV or the radio, and they say, “inventors, do you have an invention that you want brought to industry? Come to us and we will help you get it commercialized.” But if you look at their track record, very, very few inventors make any money through these companies. Federal law now requires that all of these invention promoters or invention developers give you their track record — in other words, what percentage of their clients have made more money from the invention than they paid, and they’ll try and bury this and hide it and say it’s not important, but it’s very important to look at that. And also, invention developers can be criticized on the Patent Office’s site. If you go to the Patent Office’s site and look up invention promoters, you’ll find a lot of invention promoters listed there with the stories from inventors who have been scammed by these invention promoters, so if you’re thinking of ever going with an invention promoter, do two things: Number one, check their track record, about how many people have gotten more money back than they paid the invention developer, and also look them up on the Patent Office’s site. Also the FTC has a site where they have information about these invention developers.

Talk about marketing and licensing your invention. What advice can you give about that?

Most patent attorneys recommend that before you go to offer your invention to the industry, you file a patent application because you’ll have something to sell the company and they’ll respect you more. If you don’t have any patent application on file, most companies, when you offer your invention to them, will send you a form which we call the waiver form, where you have to waive or give up all of your rights, except your rights under the patent laws, in order for the company to look at your invention. When you waive everything, you want to have a patent application on file, so that if the company uses your invention, you still have your patent application to sue them. A lot of companies are disreputable, and they say that they will look at your invention and pay you if they use it, but they won’t and then you have no rights if you don’t have a patent application on file. So I recommend you file a patent application first, and then offer the invention to the company. What they’re interested in is how much money they can make from your invention and whether it’s worthwhile for them to make and sell it, so you have to convince them, and the best way is to make a working model if at all possible and bring it to them, and be prepared to discuss the advantages and answer any disadvantages that they have, so you sort of have to be a salesman. Some inventors decide to produce the invention themselves, and that’s a whole different story. Then you’re getting into manufacturing and you usually have financing with a venture capitalist, and it’s a whole different life than if you can just simply license your invention.

What are some good online resources to find patent information, and what forums and blogs can you recommend?

There are a lot of inventor groups online, InventorEd is one, it’s run by a friend of mine named Ron Riley. They have a lot of good information for inventors. Also the Patent Office site itself has a lot of good information, and every local area usually has an inventors group, which is good to go to to get advice about patent attorneys and patent agents and what to do. The Inventors Digest magazine sometimes has a list of them, and also if you find the local Patent and Trademark Depository Library (PTDL), they will let you know about any local inventors group. Every state in the union has Patent and Trademark Depository Libraries, which can give you information about local inventors groups.

Overall, what are some of the biggest mistakes that you see people make when they go through the patent process?

The biggest mistake is to go to an invention promoter or invention developer, and the second biggest mistake is sitting on your invention without exploiting it commercially. If you have the greatest invention in the world and you don’t do anything with it, you’ll never make a cent from it, so you’ve got to be prepared to go out and file a patent application. It takes a lot of work and money sometimes. You’ve also got to be able to promote it and sell it — it won’t sell itself. A lot of inventors think that they can put it on the desk of a company and they’ll grab it, but the companies are very skeptical and they’ll want you to sell it to them and prove that it works. The other things which I mentioned before, that in the patent application, you have to clearly and completely tell how to make and use the invention, you have to make your claims broad enough, you have to have it in the right form, but the most important of all is to persevere and work, work, work on your invention, and the harder you work, the better your chances of exploiting it and making money will be.

Dave, do you have any other advice for someone who’s thinking of getting a patent for their invention?

Follow the RESAM procedure — record it, evaluate commercial potential, search it for patentability, then file a patent application, and then try to market it. Read and learn a lot about the process before you dip into the water, and you’ll swim okay.

David Pressman, Esq. is a patent attorney and author of several books including Patent It Yourself: Your Step-by-Step Guide to Filing at the U.S. Patent Office.