2. The Inventor's First Steps to Protecting His Invention

Soon after you conceive of an invention which you believe has market potential, I strongly recommend that you consult with a registered patent practitioner (an attorney or agent). The initial consultation is often provided without charge, so you have little to lose. And because patent rights can be very fragile, you may have everything to gain from a visit-- if you don't know the law, you can lose your rights--it's that simple!

Why are these rights fragile? The patent laws have provisions which require that you take action to secure your rights to patent protection in a timely manner. In Europe, for example, a properly prepared patent application must be filed in a Paris Convention country (the US, Europe, and most industrialized nations) BEFORE making information about the invention "available to the public" as defined in the European Patent Convention, Article 54. "Making available" includes providing information about an invention to a potential manufacturer or any one else, without it being understood that your disclosure is a confidential disclosure. Fortunately, if all you seek is a U.S. or Canadian patent, the patent laws of these nations give you a one year period in which you can file the original patent application. In any case, the laws are complex and it is easy to misinterpret them. Therefore, again, you should see a professional patent practitioner as soon as possible!

Note: the remainder of this Patent FAQ deals exclusively with United States Patent Law, unless otherwise stated.

Under U.S. patent law, it is equally as important that you document your invention thoroughly. If you haven't already done so, I suggest that at your next available opportunity you sketch the major elements of the invention in a notebook, as well as write a detailed description of its operation, followed by a discussion of its purposes and the advantages. A witness (two are better than one) should then sign your description. The witness should be (1) trustworthy, (2) willing to agree to keep your invention confidential, and (3) unbiased (e.g., not be related to you). If the invention is highly technical, it is important that your witnesses have a working knowledge of the technical field of your invention so that they will be able to understand its operation. Further, I suggest that you ask your witnesses to sign each drawing page, under a statement which reads somewhat like that shown below:

Witnessed and understood it. Date: _______________

____________________________
Witness's Full Name

_____________________________
Witness's Full Name

The witness may hand write the above statement in the margins of each page. Notarizing the drawings and written descriptions is not necessary--neither is sending a copy to yourself via registered mail. However, if you wish to do this, or you have already done so, it certainly cannot harm you. I suggest that it is better that you mail copies of your description to the Assistant Commissioner for Patents of the United States for archiving under the Disclosure Document Program. For a $10 fee, the Commissioner will store your description under lock and key for a period of two years. If you refer to it in a subsequently filed patent application, he will store it indefinitely. Be sure to include a letter with your description, addressed to the Commissioner, asking him to store the documents under the Disclosure Document Program. Send the description, the letter, and the check to: Box DD; The Assistant Commissioner for Patents; Washington, D.C., 20231. U.S.A.

Provide the Commissioner with two copies so that he may stamp and return one confirmation copy to you. No document may be larger than 21.6 x 28.0 cm. Feel free to use the following sample in preparing your cover letter, whether you reside in the U.S. or abroad (the Patent Office will mail a confirmation to you, wherever you might reside):

Date: ____________
Box DD
Assistant Commissioner for Patents
Washington, D.C. 20231

Re: Disclosure Document Program

Dear Sir:

Please receive the enclosed papers into the Disclosure Document Program. I have also attached a [signed credit card authorization*//check//money order] written for $10 fee under 37 C.F.R. 1.21(c). I understand that you will store these papers for me for a period of two years, and, if I refer to this deposit in a U.S. patent application which I file in the next two years, then you will store this information indefinitely. I ask that you send the filing receipt to the below address:

[your name and address here]

Thank you.

Very truly yours,
Signature

printed name

I have attached _______ pages of disclosure and _____ drawing sheets.

*The Patent Office's credit card authorization forms are available here.

Although this procedure is simple and inexpensive, it is worthless unless you are sufficiently thorough and clear in your description of your invention. In its publication called "General Information Concerning Patents", the Patent Office states that...:

the benefits afforded by the Disclosure Document will depend directly on the adequacy of the disclosure. Therefore, it is strongly urged that the document contain a clear and complete explanation of the manner and process of making and using the invention in sufficient detail to enable a person having ordinary knowledge in the field of the invention to make and use the invention. When the nature of the invention permits, a drawing or sketch should be included. The use or utility of the invention should be [clearly] described, especially in chemical inventions.

In addition, the Patent Office warns that the Disclosure Document Program "should not be considered a grace period during which [you] can wait to file a patent application without possible loss of benefits." The Patent Office warns that you must show diligence for the period of time after filing the disclosure document up until the time you build a working model or file a patent application; otherwise you may not be able to show that you have "priority of inventorship" over a competing inventor. "Priority of inventorship" is a term of art which identifies the winner in a challenge between two inventors claiming to have invented the same invention. Priority equals the sum of: (1) the earliest date of conception of the invention, plus (2) diligence, plus (3) building a working model or filing a patent application on the invention. Therefore, under the patent laws, you don't win by simply showing you were the first to conceive the invention.

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