Patent process lengthy, costly for aspiring inventors

Perciful’s invention, an impact shovel, came right out of a difficult hole in the rocky Missouri soil. He figured there had to be a way to get more force to a shovel using impact, like he had seen when driving fence posts. A few hours in the workshop with some added bicycle parts, and the impact shovel was born. A slide along the shovel’s axis lets the user apply hundreds of pounds of force down the length of the shovel.

With his idea in hand, Perciful contacted William Sharp, a patent attorney in Miami, Mo., to help him sort out the legal process.

Three years and more than $25,000 later, Perciful has a patent on a versatile tool that he can’t afford to manufacture on the scale required to make it profitable. All told, he spent nine years on the invention, and three to get the original patent.

“If I had known all this to start, I might not have gone through with it,” Perciful said. “It’s one of those things that once you get started, you either go all the way through with it or you drop it and take a loss.”

Attorney Sharp is used to working with excited inventors. He said he spends a lot of time educating inventors about the patenting process and making sure they have realistic expectations.

“They shouldn’t get involved in this process if they don’t have the money to lose,” Sharp said. “It’s like investing in a highly speculative stock. If you don’t have the money to lose, you shouldn’t do it.”

Written into the U.S. Constitution, patents protect certain kinds of novel inventions from theft, assuring that inventors retain control of their creations for up to 20 years. Something can only be patented once, and after the 20-year patent term, the knowledge becomes part of public domain and is freely available.

Getting started

The first step of the patenting process is generally an evaluation by a patent attorney and a patent search to see if the invention already exists. Perciful said this step can cost between $2,000 and $4,500, and according to Sharp, many inventors don’t get any farther because many good ideas already are patented.

“The most common misconception is that they think if it is not on the market, it has never been invented,” Sharp said. “Everyone says the same thing; then I find the patent from 1899.”

Patents can be obtained on three broad categories of subject matter. First, a process for making or doing something is patentable. This includes medical or sports techniques, manufacturing processes and so on. Second, machines, devices or apparatus, like Perciful’s shovel, are patentable. Finally, articles of manufacture, such as medicines or manufactured products can be patented.

There are several kinds of patents that can be acquired as well:

• Utility patents cover structures, steps or utilitarian features of the patented subject.

• Design patents cover design features and elements that comprise the look or style of the patented item.

• Plant patents cover designed living organisms that aren’t found in an uncultivated state in nature.

Provisional protection

Once it’s been determined that no patent for an invention exists, completing a provisional application is generally the next step. According to Springfield patent attorney Jonathan Bay, a provisional application can be applied for quickly, before a lot of detailed work has occurred.

“That’s the advantage of the provisional,” Bay said. “You can get an application on file right away.”

The provisional application has a $150 fee, but Perciful said costs at this stage can run up to $1,000 for professional assistance.

Still, there are four distinct benefits to provisional patents.

First, patentability is evaluated based on the date of the provisional filing. Second, the provisional patent establishes an earlier date on record for the eventual full patent. Third, when used strategically, it can extend the life of a patent by the full 12 months of the provisional patent life. Finally, it allows the use of the phrase “patent pending” in conjunction with the device.

According to the U.S. Patent and Trademark Web site, one potential downside or danger to the provisional patent is in failing to file a full patent application within the year. If that happens, the provisional application becomes abandoned. If the item or product is “in use” or “on sale” during the provisional patent period and the period expires without a full patent application, the inventor could lose the right to ever patent the invention.

An expensive final step

Once an inventor secures the provisional patent, it’s time to prepare a full patent application. Perciful said this is the most costly step, with expenses that can run between $1,000 and $15,000, depending on the amount of research, engineering or specialized expertise needed to prepare and document the patent.

For example, illustrations are required for devices such as Perciful’s shovel, which earned an honorable mention in the History Channel’s 2007 Modern Marvels Invent Now Challenge.

Patent illustrator William Denning of Stockton has illustrated everything from a heart-shaped hearth on a fireplace to golf jewelry and wart removers.

“It all depends on what line of business the inventor is in,” Denning said.

Patent illustrators use a specialized form of drawing and must know the rules and guidelines of the U.S. Patent Office. “If you can look at something and be able to draw it based on examples, photos, blueprints or anything the client gives you, that just satisfies a lot of people,” Denning said.

Illustrations are very important in design applications, which are based on the design elements of the object.

“Using the shading, you give it characteristics such as its roundness or the material, say it is glass, or if it is stippled,” Denning said.

Precision is required in the words as well. Not only does the patentable material need to be described, a defense of its patentability must be constructed at the same time.

“It takes a tremendous amount of thought to do it right,” Sharp said. “If someone tells (inventors) otherwise, they are not being truthful.”

This is what makes the language used in the patent application and the patent office so complex to laypeople.

“What they are doing is writing in extremely precise language,” Sharp said. “They are writing so it can’t be attacked.”

After the application is submitted, there can be several rounds of revisions requested by the Patent Office and more fees for the patent attorney or other specialists to produce the required material.

Finally, there is an issuance fee to grant the patent if it is approved. Perciful said this fee runs between $750 and $1,000, and according to Bay, Patent Office fees for small businesses or inventors are generally half of what they are for large corporations or organizations.

Continuity

After a patent is granted, its holder must pay maintenance fees on the fourth, eighth and 12th anniversaries of the patent, and for individual inventors, those fees are $500, $1,200 and $2,000, respectively. Once the 12th anniversary fees are paid, the patent is good for eight more years.

“I’ve seen that one third of the patent owners pay their 12th anniversary fees,” Bay said. “In my experience, well over half of the corporate owners do so.”

Sharp sees a similar story. It is simply hard to bring an invention to market successfully.

“The odds are long that any inventor is going to make it,” Sharp said. “It takes perseverance, sometimes years worth of perseverance.”

What Can’t Be Patented?

Inventions useful only for making atomic weapons cannot be patented under the Atomic Energy Act of 1954. Interpretations by the courts have said the object of the patent must be useful, and they extended that description to include “operativeness.” In other words, the invention has to actually work in order for a patent to be granted. Interpretations by the court have further held that the laws of nature, physical phenomena and abstract ideas are not patentable material. Finally, mere ideas or suggestions cannot be patented. A complete description of the machine or other subject matter is required to obtain a patent.

Source: U.S. Patent Office Web site, www.uspto.gov