Back to: Navigating the Patent System
The Seven Core Concepts are a collection of topics containing essential information that all inventors seeking to protect their ideas, inventions, and other intellectual property should know. With an understanding of the Seven Core Concepts, inventors can make informed decisions regarding whether to file a patent application, launch a new business, start a new product line, or how much time and money to invest in their invention.
I developed The Seven Core Concepts during my extensive experience conducting over 700 consultations with solo inventors and small businesses over a period of thirteen years. Each client approaches the patent process in a different way. One person may consider the patent process a necessary evil. Some may believe that the entire patent process is a waste of time and money, while others may understand the value of a patent. Another person may approach the patent process without any preconceived notions at all. Regardless of how one approaches the patent process, most clients have similar questions and concerns. I attempt to answer those questions with the Seven Core Concepts. They include important patent information and are educational tools for clients to make smart legal decisions. They may also help clients identify common pitfalls they should be aware of during the patent process. Although most clients ask similar questions to which there are technically correct legal answers, I attempt to discern and address the true concerns and goals behind their questions when offering responses. This is because the recommended course of action for any client depends on that client’s vision and values. I therefore include different possible courses of action tailored to businesses with different goals.
Early in my patent career, I had a cookie-cutter approach to client counseling. My recommendations were the same for each client: conduct a novelty search and file a patent application. This advice did not always yield the best results. My previous, standard recommendations did not take into consideration clients’ distinct visions and values. When I began taking these into account, I altered my recommendations and produced better results and therefore much happier clients.
Eventually, as I began to better interact with clients and understand their needs, I developed a more holistic approach by which I could uncover a client’s perspective and business goals. The legal services and costs associated with the patent process began to better fit their needs. To uncover a client’s visions and values, the Seven Core Concepts were used to examine the client’s financial and marketing constraints and to decide what the client might do when faced with various scenarios. During the initial consultations, clients and I jointly develop a plan of next steps to help clients achieve their goals. Using the Seven Core Concepts, I consult with clients so that, together, we can formulate collaborative, individual plans and so that clients understand each step and why it is desirable to expend funds at each stage of the process. The Seven Core Concepts are as follows:
Core Concept 1: Defining the invention
The purpose of this concept is identification of the point of novelty of the invention. Pinpointing its novelty specifies how the invention is an improvement over existing technology. Clients often come to my office with prototypes of their inventions. My job is to sift through all the information they provide and help inventors define the point(s) of novelty of their inventions. This could be one or more aspects of an invention, but the invention’s point of novelty is always related to its crux or essence—that is, the part of the invention that (1) makes the invention work and (2) distinguishes it from other existing technology. In Chapter 1, I will go into greater detail about the point of novelty and how to identify it.
Core Concept 2: Resolving ownership issues
To file a patent application, the client must own the rights to the idea or invention. In most cases, this is not a problem. However, in certain situations, ownership of the invention may be “fractured,” or divided between several people. For example, an independent contractor, co- inventor, or employee may own some rights to the invention despite not thinking of the initial idea and perhaps only contributing improvements for parts of the idea or invention. (That is, unless there has been an agreement to assign the invention to the hiring company or individual. See Chapter 2.) In Chapter 2, I will show how to identify common issues related to ownership as well as offer possible solutions.
Core Concept 3: Conducting a novelty search
A novelty search is a search for published documents (e.g., issued patents and pre-grant publications) to determine if the invention is novel and, in certain cases, if it is a significant advancement (i.e., non-obvious) given existing technology. In Chapter 3, I will cover the following questions: When is a novelty search necessary? What are its benefits? How reliable is a novelty search for predicting whether the invention is novel or non-obvious?
Core Concept 4: Exploring different ways to protect your idea
There are four main areas of Intellectual Property (IP) law useful for protecting ideas and inventions. These include: trade secrets, trademarks, copyrights, and patents. Each type protects ideas or inventions in different ways and provides a different remedy for infringement. The recommended course of action for protecting an idea or invention may include pursuing one or more of the four types of IP rights. In Chapter 4, I will explain each type of IP protection and cover the basics of each. However, I will focus primarily on protecting an idea with design and utility patents.
Core Concept 5: Bars to patentability and the impact of the first-inventor-to-file regime
In 2013, the United States transitioned from a first-to-invent (FTI) regime to a first-inventor-to-file (FITF) regime. This transition changed how startups and solo inventors needed to think about protecting their ideas and inventions with patents. In Chapter 5, I will go into detail about this significant change, explain its effects on the patent process, and describe the order in which marketing and filing a patent application should occur.
Core Concept 6: Preserving foreign patent protection
Seeking foreign patent protection can be expensive. Its value varies and depends on the strength of existing business relationships as well as the goals of the inventor. However, as I outline in Chapter 6, preserving your ability to seek foreign protection does not necessarily require a significant expenditure, and is often recommended.
Core Concept 7: Reviewing the overall patent process
The entire patent process can be very long and costly. In Chapter 7, I cover the major steps of the preparation of a patent application and the examination phase at the USPTO. I also outline the timing of major events involving the USPTO as well as expected costs of preparing, examining, and maintaining a patent.