An inventor can file a patent application immediately after conceiving an invention. That does not mean the inventor should immediately spend the money and time to prepare and file the patent application. How does an inventor know when is a good time to file a patent application?
I had an opportunity to talk with Cara Martin, Chief Operating Officer at Optimized Thermal Systems, Inc. (OTS) about filing patent applications. Cara explained that more than merely understanding an invention goes into deciding whether to file a patent application for the invention.
OTS has filed national and international applications, provisional and non-provisional applications, and claimed in-house developed and partner-developed inventions. In all cases, OTS compared financial risks to financial gains. They researched whether the invention had the potential to be a business game changer to aid in their decision to file a patent application for the invention.
Cara suggests performing a patent search early in the decision making process. Patents are issued on novel and useful inventions. If someone files an application to patent an invention similar to your own, the United States Patent and Trademark Office (USPTO) may reject your patent application as not satisfying the novelty criteria. A patent search looks at other inventions claimed in patent applications or issued patents. The results of a patent search may suggest that the USPTO will reject your patent application based on prior filed applications and issued patents. Google Patents is a good starting point for a patent search, and can be found at https://patents.google.com/. Cara explains that with patent search results, OTS can then assess “at least, the low hanging fruit” meaning “is this going to work, is this a new idea, is this something worthy of being patented?”
Cara also suggests evaluating product viability and paths to commercialization. An inventor may make initial evaluations of product viability with bench testing. These small scale tests may provide insight into usable or incompatible materials and product design. OTS leverages bench top testing, in combination with market and industry experience, to decide whether filing a patent application makes business sense.
When have you done enough research? As Cara says, OTS does enough research to “make us feel comfortable that it’s enough of a unique combination and concept that it makes sense to push forward.” You may have collected enough data to decide whether to file a patent application if you can answer the following questions:
- Have you tested the idea, not just thought about it?
- What kind of calculations or processes have you done in order to vet the science behind the idea?
- Who are you working with and what partners do you have in order to make your invention viable?
- Is there a path to commercialization, and is that path realistic, tangible, usable?
These questions help drive research into product viability and paths to commercialization.
The decision whether to file a patent application must further consider an inventor’s grace period. Under the law, an inventor must file a patent application within 12 months of public disclosure or sale of the invention. After the 12 months, without filing a patent application describing the invention, the invention is considered part of the public domain. In other countries, an inventor must file a patent application on the same day or prior to a public disclosure or sale. An inventor may lose an opportunity to gain patent rights in an invention if the inventor is unaware of the grace period.
Thanks to Cara Martin of Optimized Thermal Systems, Inc. for meeting with me to discuss the patent application process. Timing is very important – timing to research, timing to market, and timing relative to disclosures. As you see, at least novelty, business considerations, and the law factor into deciding whether to file a patent application.
Optimized Thermal Systems, Inc. provides consulting, software, and testing services for thermal systems, including support on new product design and prototype development. To learn more about Optimized Thermal Systems, Inc., please visit https://www.optimizedthermalsystems.com/.
Hutchison Law, LLC has experience with patent searching and the patent application process. To learn more about how we perform patent searches and draft patent applications, please contact us at 410-978-7287 or firstname.lastname@example.org.
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