Patent Myths

The following guest post is by contributing editor Heather N. Schafer, a patent attorney in Chicago, Illinois.  Heather specializes in representing university startups and entrepreneurs in the fields of biotechnology, alternative energy, and consumer products from kitchen gadgets to golf shoes and beyond.

The internet, your friends, your family, and maybe even your corporate lawyer are full of “helpful advice” about patents.  However, much of this advice may be misinformed, incomplete, inaccurate, or just plain wrong.  The following are five common patent myths.

Patent Myth No. 1

For example, your friends may say:

• “You should patent your idea” – FALSE

Ideas are not patentable.  To earn a patent, you must have an invention.  There are two steps to creating an invention, conception and reduction to practice.

When you have a terrific world changing idea, you are typically at the “conception” stage.  An example of a conception is: “wouldn’t it be great if my cat litter box was self cleaning?”  At this point, you do not have an invention.

Why Not?

To have a patentable (legally protectable) invention, you must reduce the invention to practice and file a detailed patent application with the Patent Office.

Reduction to practice may happen in two ways: (1) by constructing a working prototype of a self cleaning litter box, (2) by creating detailed drawings and a detailed description of a self cleaning litter box.

“Detailed” means that you could hand your drawings and description to your colleague and she could follow your instructions and make your invention.

Patent Myth No. 2

• You can secure a “poor man’s patent” by mailing your idea or invention to yourself – FALSE

You receive NO legal protection from mailing your “idea” or invention.  The reasoning behind this myth is that the post office date stamp will prove your date of invention.  However, the postal system is not the Patent Office.

The only way to be confident that you have secured your date of invention is to file a patent application meeting all of the statutory requirements with the Patent Office.

Patent Myth No. 3

• Patent application = patent – FALSE

A patent application merely proves that, on the date that you filed, you were in possession of the invention that you disclosed.  The application doesn’t turn into a patent until years later – after being thoroughly scrutinized by the Patent Office.

There are many reasons that you might not receive a patent for your application.  Chief among those reasons are that someone else invented it first.  For example, someone else is already selling your invention, or filed a patent application for your invention, or wrote an article about your invention in a magazine.

Patent Myth No. 4

• A provisional application is a “cheap patent” that gives you time to shop your idea around before making the “big” investment – FALSE

This myth is such garbage that it deserves (and will receive) its own post.  Suffice it to say for now, if you hire an online patent filing service, an unskilled patent attorney, or a patent mill to file a provisional application for you, you will likely waste your money.

Worse, a badly drafted provisional may compromise your future patent rights.  A provisional application is a foundation document.  What you put into the application, and what you leave out, may come back to haunt you later both during prosecution of your patent application and during litigation.

A good provisional application takes time and attention and often costs as much to prepare as a non-provisional application.  In many circumstances, particularly in the high-tech industry, a provisional patent application might be a bad idea.

Patent Myth No. 5

• You don’t need a patent application – you can disclose your invention to potential investors if you have a non-disclosure agreement (NDA) – FALSE

Most “investors” will laugh if you show up with an NDA.  In fact, they will likely hand back to you what I call an “anti-NDA.”  The “anti-NDA” will state that you cannot tell them anything that they don’t know and if you think you have something new, you are wrong – they have been working on your invention for years before you were born.

The attitude is “you need us, we don’t need you.”  If you want to play, you have to trust that they won’t steal your invention.  If your invention is something that only you can do, it might be a good risk.  If your invention is something that your potential investor can hire someone else to figure out – file a patent application!

If you think you have a patentable invention, you should . . .

Treat your invention with the same respect as your plumbing.  Unless your mom, bartender, or best friend is a plumber – don’t take her plumbing advice.

A patent is an investment.  Along with your other IP; it is the “plumbing” of your business.  Talk to a patent attorney, maybe even two or three patent attorneys.  Most patent attorneys do not charge for initial consultations.

Don’t blow potential patent protection by believing patent myths.  Learning accurate information about patent law can be critical to preserving your invention’s value.

Heather can be reached at  [at] gmail.com.