Patenting: The Art of Parenting

— Gururaj B. S.

Nurturing an idea to the stage where you patent it can be an experience that is similar to raising a child. This article provides a high-level view of the steps involved in taking an idea from the drawing board to the patent office.

In this article, let’s explore the fine art of patenting. I’m no expert on this subject, but I have dabbled in it a little, so I can share a few things I do know. Are you still confused about the title of my article? You have all the reasons to, for as an inventor, you would not have craved for anything more than to master the art of patenting. Read on, and I am sure you will understand why I am comparing apples to oranges in this article.

“No idea is a bad idea!”

I heard my ex-boss say this to our team of writers about 2 years ago. It wasn't until my first introduction to a couple of inventors by my ex-boss that I became fully aware of what “No idea is a bad idea!” means. Then my first invention (still an idea) project was ready to get off the ground. Let me explain how this process works.

Give Birth to a Child

The cornerstone of any invention or patent is an idea. When you have an idea, write it down. Articulating the idea is one of the most important and difficult steps. Think more, and think clearly. Free tip: check out

http://health.ivillage.com/mindbody/mbmemory/0,,23km,00.html.

If another idea strikes you, see if the new idea supports your original idea. You must do a rock-solid study that leads to something more concrete. When necessary, voice your idea and defend it.

Understand the Child

Ask yourself the following questions when determining the patentability of your idea:

  1. What’s new in the idea?
  2. Does a prior art exist for the idea?
  3. How is the idea different from what already exists?
  4. What are the benefits of the idea?
  5. If the idea is not new, is the method or apparatus new?

If you have not thought about such things, I urge you to do so at this stage. These are some of the basic questions you will need to answer in order to progress to the next level of the patenting process. So it’s important that you understand these requirements clearly.

I used the term prior art in the second question. It’s not a patent-specific term. It reminds you that you should do extensive research on similar or related ideas, on the Web. Here is a bonus tip: you can search the U.S. patent Web site at the following URL to zero in on a prior art related to your idea.

http://www.uspto.gov/patft/index.html.

Name the Child

Your child needs to have an appropriate name. The name should reflect the type of your idea, classification (method, apparatus, or algorithm), and target area.

Here is an example taken from the U.S. patent Web site:
“Patent Number 6,411,758 - Method and apparatus for aligning a waveguide to a device”

Raise the Child
Go ahead and create a “document” with answers to the above questions. Some companies (typically product companies) have a standard template for this document. Use any kind of visual element (table, graph, flowchart, or dataflow diagram) in the document. Don’t write a story; write what is relevant to the idea. Review it as many times as possible. Some companies have patent coordinators or reviewers-usually a team comprising experienced patent holders or at least senior engineers who understand the patent process. Send your document to them for review. It’s very likely that they will come back with lots of questions, comments, and suggestions. In a way, these reviewers are playing the role of a proxy IP attorney. They help you prepare for more engaged discussions with the company’s IP attorney. The reviewers may even suggest that you develop a Proof of Concept (PoC) for your idea. Although it takes a long time to develop a PoC or prototype, I think it’s really worth it.

At this stage, your document is in fairly good shape. It can be called an Invention Disclosure. You then submit the document for review by a patent/legal/IP attorney. During the review, you may be asked to explain or defend your idea. As a parent, can you not talk about your child? I am sure you can.

As far as I know (I did say at the beginning that I am no expert on this subject), there are several types of invention disclosures:

Type
Description
A
 The invention is critical. A patent application has to be filed by the inventor or a sponsor, at the patent office within 3 months.
B
 A patent application can be filed within 6 months.
C
 A patent application can be filed within 9 or 12 months.
Publication (also referred to as defensive publication)
 A patent application will not be filed. Instead, the invention will be published as an article in a reputed technical journal. The invention becomes the IP of the inventor/sponsor, so no one else can file a patent on the same idea.

Wait for the Child to Succeed

While the patent office reviews your patent application, you have no choice but to wait. If your claims are valid, a patent will be issued. Your child gets a really cool certificate or plaque.

If your child is not successful, don’t worry. You have at least watched the first child grow, so you know how to raise the next one better.
About the Author

Gururaj B.S. works as a technical documentation manager at Adobe, India. He is the immediate past president of the STC India chapter, and he is the owner of Technical Writers of India (TWIN), a technical writers’ community portal and discussion forum. You can visit the TWIN Web site at www.twin-india.org. You can write to him at gururaj.bs@gmail.com.
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