Paul Horton: Invention Law

You don’t have to be famous to call yourself an inventor in today’s world. I’m telling you, as an intellectual property lawyer, most people who are “creatives” are inventors. I’m not kidding. If you like to create, then you can take your ideas and some perseverance can invent an amazing product or even some life-saving device.

Legal Invention Strategies

When brilliance strikes and you come up with a great idea, create a record of invention before going any further with it. The record of invention should be written down and should include things like a clear description of the idea, the date, your signature, and the signatures of two people you trust who have “witnessed and understood” your invention and the dates they sign.

Build a prototype as soon as you can to transform the idea into a physical object.

Be discreet. Do not talk about your invention with people who are not bound by a confidentiality agreement.

Have a qualified lawyer do a patent search for you. Keep a file for your invention that contains items and information you and your lawyer will need while you prepare your patent application. Work with an experienced lawyer who is licensed by the Patent and Trademark Office and does patent work for a living. Start exploring and thinking about how you will market your invention.

Keep good, complete, and accurate written records. A written lab book or log, kept up to date as you work on your invention, that documents each day you did something, describes the efforts you have made in taking your invention from idea to reality (including test results, experiments, modifications). You can also have two witnesses sign and date your record book stating that they have “witnessed and understood” the work you have done to build and test your invention. Keep copies of all correspondence- emails as well- and any receipts relating to your invention.

Will it sell? One rule to determine whether your invention will sell well is that the total sales will be at least twenty times the cost of inventing and patenting it. Include in your cost calculation the cost of filing fees, hiring a lawyer to help with your patent filing, and the person who prepares the drawings of your creation.

Assess whether you will be able to get a patent on your invention. What is the prior art, if any. If you are improving on something that has already been patented, is your invention a new physical feature, a combination of prior separate features, or a new use of a prior feature? Does your invention fall into one of the five classes of items that may be patentable? That is, is it a process, machine, an “article of manufacture,” “compositions of matter,” or a new use of any of those items? If you are improving something that has already been patented, is your invention not obvious? Does your invention produce a new and unexpected result? You must think through these things carefully. Talk to us if you have questions.