Is It Time to Talk to a Patent Attorney?
When Do You Need a Patent Attorney?
The following discussion is for educational purposes only and should not be considered legal advice or relied on in any way for any purpose. If you think you’ve invented something, speak with an attorney.
It can be difficult to decide when it’s time to talk to a lawyer, especially when an invention is involved. Does there need to be a prototype? Are sketches required? How well does an idea need to be fleshed out?
To patent an invention, there are two key steps. Conception and reduction to practice.
What does it mean to conceive of an invention?
Conception has been defined as "the complete performance of the mental part of the inventive act" and it is "the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice…." Townsend v. Smith, 36 F.2d 292, 295, 4 USPQ 269, 271 (CCPA 1930). And to translate that: it means that an inventor has an idea in mind, and that inventor knows how they want to put that idea into practice.
So an inventor has an idea. That inventor has thought a lot about it a lot and is pretty sure they know how they will make it. Next comes reduction to practice.
What does it mean to reduce an invention to practice?
An invention can be reduced to practice according to a few different definitions: actual reduction to practice and constructive reduction to practice.
Actual reduction to practice: "requires that the claimed invention work[s] for its intended purpose." Brunswick Corp. v. U.S., 34 Fed. Cl. 532, 584 (1995). And what does that mean? According to the Manual of Patent Examination Procedure (MPEP), “[f]or an actual reduction to practice, the invention must have been sufficiently tested to demonstrate that it will work for its intended purpose, but it need not be in a commercially satisfactory stage of development.” MPEP 2138.05. In other words, if a prototype exists that isn’t quite ready to put onto store shelves, it may be the case that the bar for actual reduction to practice is already cleared, and it may be time to talk to a patent lawyer to protect the invention idea.
Constructive reduction to practice: "occurs upon the filing of a patent application on the claimed invention." Brunswick Corp. v. U.S., 34 Fed. Cl. 532, 584 (1995). This, in general, nothing needs to actually be build before filing a patent application. It’s enough for the USPTO that an inventor spent time writing a patent application that describes the invention to the satisfaction of the MPEP’s requirements.
What comes after that?
Next, it’s time to talk to a patent attorney to discuss whether and how to protect the inventor. A patent attorney will collect invention disclosure and prepare a patent application. This involves asking questions to get more information about the invention and asking for materials like writings, photos, sketches, CAD models, and so on. And once a patent attorney has enough disclosure collected, they can proceed with writing a specification and preparing claims in preparation for filing.
Once a patent is filed, the USPTO will issue an official filing receipt, giving the patent application an official filing date. If the patent filing is a utility patent application, then this starts the patent prosecution process, and if the patent filing is a provisional patent application, then this starts the one-year countdown to decide whether to file one or more patent applications that claim priority to the provisional application (e.g., a PCT application, a utility patent application, direct foreign filings).