• Home
  • About
    • Client Reviews
    • Patent Samples
    • Accolades
    • About Firm
    • Technologies
    • FAQs
  • Services
    • Patent
      • Utility Patents
      • Design Patents
      • Patent Application
      • Patent Defense
      • Patent Enforcement
      • Working with In-House Attorneys
    • Trademark
      • Trademark Search
      • Trademark Application
      • Trademark Enforcement
      • Trademark Defense
    • Licensing
    • Worldwide IP
    • Risk Management
    • Due Diligence
  • Industries
    • Browse Patent Samples
    • Automotive Patents
    • Construction Patents
    • Consumer Products Patents
    • Electronics Patents
    • Food, Beverage, & Other Culinary Patents
    • Manufacturing Patents
    • Medical Products & Devices Patents
    • Optics Patents
    • Software & App Patents
    • Tools & Equipment Patents
  • Learning Resources
    • First-Time Inventor?
    • Why Patent Your Invention in a Bad Economy?
    • Videos on Patents
    • Search 180+ Articles
      • Patent process
        • Overview of Patent Process
          • Patent process timeline and major milestones
          • Patent Process: Invention to Patent Granted (Simplified)
          • Patent process, overall steps and procedures
        • Overview of the examination process within the USPTO
          • Highs and lows of securing patent protection for your invention
          • What is the Patent Office procedure after filing a patent application?
        • Benefits of a Patent Search
          • What is a patent search and How to do it?
        • Patent attorneys, agents and the USPTO can help with the patent process
        • USPTO Website
      • Invention Agreements
        • What is an NDA and when to use them?
        • How to use a contract to protect your invention?
        • Working with others without losing your IP rights
        • Patent Assignments for Independent Contractors
        • Losing Invention Rights When Hiring or Collaborating with Others
        • Avoid Problems: Get an Invention Assignment Agreement
      • Protect Inventions
        • Misconceptions of Provisional Patent Applications
        • Do you need to get your patent attorney to sign an NDA?
        • Can a confidentiality agreement protect me like a patent application?
        • Four types of intellectual property to protect your idea and how to use them
          • Overview of Patents and Intellectual Property
          • Patent protection benefits and why every inventor should consider getting one
          • 8 tips to successfully protect your idea
          • Benefits of Patent Protection
          • Best uses for design patents
        • Reasons to only market your invention after securing patent pendency
          • Dangers of 1 yr grace period under first-inventor-to-file system
          • File a patent application before telling others about the invention
        • Risks and benefits of securing software patent protection
          • Strategy to overcome patentable subject matter rejection
        • Pros and cons of filing a continuation-in-part application
          • What is a continuation patent application?
      • How Patent Applications Work: the Basics
        • How to respond to an office action?
        • Request for non-publication of a patent application
        • Anatomy of a Patent Document
        • How to write a broad patent application?
        • Design patents: pros and cons
      • Patent costs
        • How much does it cost to get a utility patent?
        • Provisional Patent Application: Cheap Alternative?
        • Patent Cost Framework and cash flow
        • Provisional patent application: a cheap option?
        • Cheap provisional patent applications
      • Patent infringement
        • Basics of writing a patent claim for a patent application
        • Patent Marking: Everything you wanted to know
        • Avoiding Patent Infringement
        • Can I Copy My Competitor’s Product?
        • Can I Copy My Competitor’s Product? (Design Patent)
      • Worldwide patents
        • Pros and cons of securing worldwide patent protection and their steps
        • Foreign patent filing to secure protection in other countries
      • Responding to Office Actions
        • Overview of Office Actions
      • Trademarks
        • Trademark Registration: common law, state and federal
        • How to obtain a federal trademark registration?
        • How to select a trademark?
          • Protect your idea when pitching to an investor, potential licensee, or buyer
  • Schedule Consultation
  • Contact

Top-Rated Orange County Patent Lawyer | Helping Inventors in Orange County, Los Angeles County & Beyond | OC Patent Lawyer, Irvine CA

Orange County Patent Attorney

(949) 433-0900
You are here: Home / Lessons / Overview of the Seven Core Concepts

Overview of the Seven Core Concepts

April 11, 2018 by James Yang

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 for the 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 the 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. Read more about ownership: Who owns the patent? 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 patents 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 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 the expected costs of preparing, examining, and maintaining a patent.

Previous Lesson
Benefits to the patent owner
Next Lesson
Core Concept 1: Defining the Invention (Chapter 1)

Table of Contents

  • Introduction
    • Disclaimer
    • What you will find in this course
    • How to use this course
  • To Patent or Not To Patent (Section 1)
    • Purpose of the patent system
    • Benefits to the patent owner
    • Overview of the Seven Core Concepts
  • Getting Started: Seven Core Patent Concepts
    • Core Concept 1: Defining the Invention (Chapter 1)
    • Core Concept 2: Ownership–Resolving Ownership Issues (Chapter 2)
    • Core Concept 3: Conducting a Novelty Search (Chapter 3)
    • Core Concept 4: Different Ways to Protect an Idea (Chapter 4)
    • Core Concept 5: Three Bars to Patentability and the First-Inventor-to-File Regime (Chapter 5)
    • Core Concept 6: Preserving Foreign Patent Protection (Chapter 6)
    • Core Concept 7: The Overall Patent Process and Costs (Chapter 7)
  • Utility and Design Patent Applications (Section 2)
    • How to use this section on patent applications
    • Deciding what application to file: Design or utility?
    • Design Applications (Chapter 8)
    • Cost Considerations for Provisional and Nonprovisional Utility Patent Applications (Chapter 9)
    • Overarching Principles of a Utility Patent Application (Chapter 10)
    • Parts of a Utility Patent Application (Chapter 11)
    • Claims section
    • Writing Tip #1: How to write an application with the broadest possible protection (without breaking the bank) (Chapter 12)
    • Writing Tip #2: Be explicit. Don’t rely on inferences made in the patent application
    • Writing Tip #3: Using the word “may” versus “is”
    • Writing Tip #4: Preferred embodiments and using the word “substantial”
    • Writing Tip #5: Do not use the word, “invention” 
    • Writing Tip #6: Suboptimal embodiments
    • Writing Tip #7: Ranges
    • Writing Tip #8: Software Inventions
  • Patent Examination FAQs (Section 3)
    • FAQ #1: Patent Process Timing
    • FAQs #2-3: Patent Costs
    • FAQ #4: Duty to search v. Duty to disclose
    • FAQ #5: Review of Formalities
    • FAQs #6-7: Secrecy
    • FAQs #8-9: Nonpublication request and foreign patent protection
    • FAQs #10-16: Restriction Requirement
    • FAQs #17-21: Responding to Office Action rejections
    • FAQs #22-29: Broadening patent protection
  • Appendices
    • Appendix A: Trademark
    • Appendix B: Sample Utility Patent  
    • Appendix C: Sample Design Patent
    • Appendix D: Sample Trademark Registration
    • Appendix E: Entity Size 
    • Appendix F: Patent Laws

Popular Posts

Patent process overview
Patent process explained
How much does a patent cost?
Trademark process and costs
Patent process and costs

 

Services

Utility Patents
Design Patents
Patent Prosecution Services
Patent Defense Services
Patent-Law Counsel for In-House Attorneys
Trademark Prosecution Services
See All Services

Industries

Automotive Patents
Consumer Products Patents
Culinary Patents
Manufacturing Patents
Medical Patents
Optics Patents
Software & App Patents
See All Industries

Contact

James Yang
OC Patent Lawyer
2372 Morse Ave., Suite #178
Irvine, CA 92614
Tel: (949) 433-0900

Connect

  • Facebook
  • LinkedIn

Sitemaps

Sitemap: Pages | Sitemap: Posts

Terms of Use and Privacy Policy

By accessing this blog, you agree that no attorney-client relationship is formed except by a subsequent written retainer agreement. Also, you agree to not send confidential information unless directed by me to do so. The information posted on this blog is legal information and not legal advice.
Complete Terms of Use
Complete Privacy Policy

ADA Compliance

OC Patent Lawyer aims to ensure that its services are accessible to people with disabilities.
Accessibility Statement

Service Area

From our office in Irvine, California, we serve clients from all areas within Orange County and Los Angeles County, California.

© 2023 · James Yang, Your Entrepreneur and Mid-Size Business Patent Attorney