More of this Feature • Part 1: Avoiding Patent Infringement • Part 2: Fighting Patent Infringement • Part 3: Marketing and Licensing Choices • Part 4: Defeating Patent Infringement

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More Articles by Ronald J. Riley • Pressure on the American Patent System • How I Learned to Become a Successful Inventor

Related Resources • Definition of Patent Infringement Filing A Utility Patent Application • FAQs • More Advice and Expert Articles

Patent Infringement on the Web • Patent infringment issues • Rocker docket - patent infringement • Patent infringement issues • Avoiding patent infringement PDF • Patent Infringement - Is It Better to Fight or Switch?

By Ronald J. Riley

Acquiring a patent should be approached the same as an engineering project. Documenting your idea is the first step in the process. It is necessary to thoroughly plan to minimize both costs and the time required to get the patent.

You must file your U.S. application within one year of the first disclosure or commercial application of the idea. Either disclosure or sale (including an offer to sell such as a quote) will start the one-year clock. Most foreign countries require that you file before any public disclosure or commercial application.

You may safely disclose information and not start the one-year clock, by having each and every person and company that you give information to sign a non-disclosure agreement. The following is a partial list of things you might do, which could start the clock or at least create a gray area that an infringer would try to exploit to avoid paying damages. This is an area that is evolving in the law and you should seek counsel before any disclosure.

1. Tell a customer or others about the invention.
2. Distribute a data sheet.
3. Distribute price sheets or quotations that don't clearly state that the product is not yet available and that it is experimental.
4. Give a paper or publish information about the invention.
5. Sell the product at a profit, you may be able to supply free samples or samples at cost without starting the clock.

There are many organizations that aid inventors but a few stand out as the best. I strongly suggest that you join Inventors Awareness, which has almost single handily brought down a host of disreputable marketing organizations. Contact them at: Inventors Awareness Group, Inc. (IAG), 1533 East Mountain Rd, Suite B, Westfield, MA 01085-1458 TEL: 413-568-5561 FAX: 413-568-5325

A clear write up of the idea and neat detailed sketches will help convey the proper information to do a prior art search. I recommend that you not have the same attorney do the search and the patent. While most patent attorneys are honest, having the search and prosecution done by different parties helps keep them that way.

The search is the second step to determining if your idea has merit. The search if performed by an attorney will take one to three months and cost less than $1000.00. You may go to a service provider that does searches and get one for between $150.00 and $450.00 depending on their rates and the amount of work involved. You do not have the benefit of an attorney's advise when using this approach.

It is difficult to come up with ideas that are broad in scope in areas that have well-established technologies. The most valuable patents cover the basic idea of a process. Those that are 'improvements' are not as valuable unless they are critical to the commercial success of the product. A patent on a specific circuit will not have much value if it is easy to design around that circuit and there is not much cost or performance penalty associated with the alternative circuit.

If you are involved in an area that is ripe for development consider all the other methods that could be used to solve the problem. It is important to build a fence around your main idea, locking up as many of the possible solutions as possible. This is necessary because a competitor could use a solution that you consider inferior. If his marketing is better than yours is, you could still lose the market. A good example of this is the VHS videotape standard winning the market over BETA.

A fence built with multiple patents also acts as a deterrent to infringers, because it will usually cost them at least $500,000 per patent they attempt to invalidate. The uncertainties of prevailing when they are facing multiples make it more likely they will negotiate a settlement.

Carefully study the results of the prior art search to determine if your idea is unique before proceeding to the third stage, which is filing for the actual patent. Your attorney will work with you to draft the actual application. Expect this to take three to six months and to cost between $5000.00 and $10,000.00.

Once the application is filed you can expect to wait one to three years to receive the patent. If anyone infringes on your idea during this time you can notify him or her that you have filed for the patent but you cannot sue until the patent is granted. The infringer is liable for damages starting from the latter of the time you filed and the time when they were notified. This is the most frustrating part of the patent process.