A U.S. patent requires an invention to meet 3 criteria: it must be novel, non-obvious and useful. Those 3 criteria, the prior art search that tests them, and the 12-month provisional filing window set the order of the first steps for a new inventor. This is the sequence I lay out in my book Invent It and Be Your Own Boss, from the 10 U.S. patents and 6 international patents I hold.
Step 1: Write Down the Problem and the People Who Have It
My inventing began with a specific wish: a sauna with well-insulated walls that let me stand, sit or lie down in it. The near-infrared saunas I found in 2011 used heavy wooden light panels and canvas covers that failed to hold heat, and that problem became the Sauna Fix sauna tent. The Breathe Safe air purifier started the same way, on an airplane full of coughing and sneezing passengers, as an idea for a compact, battery-powered plasma air purifier for personal space.
Write the problem before the solution, with 3 answers: who has it, how often, and how they solve it now. My companion Invent It Action Workbook gives this 2 sections, The Problem Worth Solving and Customer Need and Focus Group Notes, with 3 deep interview cards and a log. A consumer focus group brings 2 or more people together to evaluate the idea, and the book uses their feedback to identify improvements so the final product meets the needs of a broad audience.
Step 2: Run the Prior Art Search Before You Build
A prior art search covers 4 bodies of existing work: patents, scientific literature, copyrights and trademarks. It answers 1 question: has someone already disclosed or patented this idea? Early in my career I skipped a comprehensive patent search to stay within budget, developed the idea, and found at the utility patent stage that similar ideas were already patented, which made the time and money I had put into development redundant.
A new combination of known elements can still be original, and the book’s example is U.S. Patent 8965032 B2, which integrates audio wiring into clothing: both elements were known, and the combination was granted. The workbook’s Bonus 4 is a Prior Art Search Log, and the book recommends hiring a patent search professional or attorney for a comprehensive search and a patentability opinion before filing.
Step 3: Test the Idea Against the 3 Patent Criteria
- Novel: no one has previously disclosed or developed the invention. Abstract concepts, laws of nature and natural phenomena are generally not patentable; the invention has to be a concrete, tangible thing.
- Non-obvious: patent examiners apply the “skilled person” test, asking whether a person with average knowledge and skill in the field would find the invention obvious. Unexpected results, and incremental advances that move the field forward, both support non-obviousness.
- Useful: the invention has a real-world application, can be manufactured or applied in a commercial setting, and works as intended, shown by a prototype, an experiment or a simulation.
The book turns the 3 criteria into 3 checks: idea screening, practicality assessment and functionality testing, and the 3rd check may require a prototype or an experiment. Every rejection from the patent office requires a paid response, which is why the book places these 3 checks before filing.
Step 4: Keep an Inventor’s Notebook and Control Disclosure
An inventor’s notebook records 4 things: sketches, prototypes, every change made, and the date of each entry, and those dated records serve as evidence of when the invention was conceived and how it progressed.
Keep the invention confidential until the application is filed, because under U.S. rules a public disclosure made more than 1 year before filing can jeopardize the right to a patent. Have 5 groups sign a non-disclosure agreement before they see the design: partners, manufacturers, investors, patent attorneys and prototyping subcontractors. The workbook’s Section 7, Confidentiality and Disclosure Plan, includes a disclosure log, and Bonus 2 is an NDA reminder checklist.
Step 5: Choose the Filing Path
The U.S. Patent and Trademark Office grants 3 types of patents. A utility patent protects how an invention works and runs 20 years from the filing date. A design patent protects the ornamental appearance of a manufactured item and runs 15 years from the date of grant. A plant patent protects a new plant variety reproduced asexually and runs 20 years from filing.
A provisional application costs less than a full application, secures an early filing date, and allows the “patent pending” label for 12 months. It gives no enforceable rights, and to keep its filing date a non-provisional application or a Patent Cooperation Treaty (PCT) application has to be filed within those 12 months. A PCT application holds the international phase open for up to 30 months from the priority date, after which a separate national application and fee are required in each country.
My sauna tent patents taught me the limit of a provisional application. Of the 4 countries that granted my sauna tent patents, only the United States allows an inventor to add claims and design features after the provisional, and my patent attorney did not explain that limitation before I filed. My sauna tent patents in Canada, China and Australia carry only the claims written in the original provisional. The PCT office also issues feedback on the patentability of the claims, which can be used to strengthen a U.S. application, and my Back Shaper followed that order: the PCT application was filed September 28, 2017, the written opinion of the International Searching Authority issued December 26, 2017, and the U.S. utility application was filed March 28, 2019.
Step 6: Interview 2 or 3 Patent Attorneys
The book recommends consultations with 2 to 3 attorneys before hiring 1, with 5 questions for each: years in patent law and experience with similar inventions, technical expertise in your field, success rate with similar clients, communication style, and fee structure. Bring 4 items to the first meeting: sketches, prototypes, research reports and the prior art search log. Workbook Section 12 has an attorney interview worksheet, and Bonus 3 is a patent attorney call-prep sheet.
A Filing Timeline From 1 of My Patents
The Plasma Air Purifier, sold as Breathe Safe, followed this sequence: provisional application filed July 17, 2015; PCT application filed July 23, 2015; a continuation-in-part; U.S. utility application filed July 11, 2018; and U.S. Patent 10881757 granted January 5, 2021, with patents also granted in China, Canada and Australia. That is about 5 and a half years from the provisional filing to the U.S. grant.
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This article is for educational purposes only and is not medical advice. It is also not legal or patent advice; a registered patent attorney or agent can evaluate your invention, its prior art and its filing deadlines.
