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Have an Idea?  What about a Patent?

Insight August 17, 2011

I’m a patent attorney. As a result, I get a lot of questions from people about patents. Questions like: "Do you think this idea is patentable?"; "Do I need to hire an attorney?"; or "How much will it cost to file a patent?"

I’ve always enjoyed interacting with inventors. They are often very excited about their ideas and love teaching others about their innovations. When inventors come to me with a great idea that has potential commercial value, I often encourage them to look into pursuing a patent.   

Preparing, filing, prosecuting, maintaining and commercializing a patent can be expensive. While it is possible to do most of this yourself, I recommend working with a patent attorney or registered patent agent because of the complexities in patent law. But regardless of whether you choose to work with an attorney or strike out on your own, there are some initial steps I usually suggest to save costs and go through the process more efficiently.

In order to reduce costs, I usually advise individuals to do a patent search first to find the most relevant prior patent or prior patent publications ([url=http://www.uspto.gov]http://www.uspto.gov[/url] allows free patent searching, as does Google’s patent search engine.) Relevant patents or publications are those that include descriptions similar to your invention. This search will allow you to (1) determine if your invention is patentable (in other words, confirm that no one else has already patented or disclosed the concept) and also (2) find close patents to use as templates or samples for your patent application, which will save money on fees.

The first reason for conducting this search is pretty straightforward - you don’t want to spend hundreds or thousands of dollars on a patent application that is easily invalidated or rejected because it’s not patentable due to a prior patent. You should also keep an eye out for any patents that include claims that may cover what you are planning to commercialize. If you cannot design around the patent or develop defenses against it, you may need to obtain a license from the other patent owner.

The second reason to conduct this search is equally important since many inventions are improvements of existing technologies. Your invention may be the next generation technology that builds on a previous technology (notice the patent cited below was issued in 2007 for “a better mouse trap”). Patents relating to the previous technology may be good templates for your application and you may come up with new ideas while reviewing other patents.

As a first step, I’d recommend searching on the USPTO.gov database using different combinations of keyword search terms (e.g., (mouse OR rat OR rodent) AND (trap OR catch)) and see what hits you get.

However, there are two problems with key word searching: (1) too many hits making it difficult to narrow and (2) too many synonyms which may result in missing some relevant patents.

Accordingly, once you find relevant patents, you can better focus your search by limiting it to the class/subclass the relevant patents should be classified in (see, [url=http://www.uspto.gov/go/classification/selectnumwithtitle.htm]http://www.uspto.gov/go/classification/selectnumwithtitle.htm[/url]). 

To do this, look at where the relevant patent is classified within the US patent classification system (for example, in the sample below, the patent is classified in US Classes 43/67 and 43/66).

Further, once you find a relevant or related patent, you can click the “[Referenced By]” button to find other patents that cite the patent you found in your search and are thus likely also relevant. Also review the prior patents that are listed on the patents you are reviewing. These are patents that were considered during the prosecution of the patent you are reviewing and may also be relevant.

In addition, try searching for patents owned by companies in the same field as your invention (e.g., AN/Microsoft).

Patents that are close to, but which still don’t disclose, your invention can be converted to Word documents and used as templates for writing your patent application. Writing such a draft application should save costs if you later use a patent attorney/agent to finalize the application for filing.

Good Luck!

Smart Download: 5 Tips for Finding a Patent Attorney


United States Patent 7,216,457 Hanning, Jr. May 15, 2007
Mouse trap
Abstract: The disclosure is directed to a mouse trap for insertion through the opening in the top of a pop can. The trap is formed of one piece stainless spring steel and includes a can-engaging element affixed to a can-engaging clip for engaging opposed surfaces of the pop can top. An intermediate element is affixed to the can-engaging element and to support element which, in turn, is affixed to a bait support element. The trap obstructs the can opening when the trap is in the release or sprung position.
Inventors: Hanning, Jr.; Robert Cooper (Long Lake, MN)
Appl. No.: 11/350,527 Filed: February 10, 2006
Current U.S. Class: 43/67 ; 43/66
Current International Class: A01M 23/08 (20060101)
Field of Search: 43/67,65,66,76
References Cited [Referenced By]