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The Patent Journey -- Step 1 Documentation

Monday, April 12, 2010 8:21 am

“A journey of a thousand miles begins with a single step.”
Lao-tzu, Chinese philosopher (604-531 BC)

The journey to a United States Patent, which may seem like a thousand miles, begins with Step 1 – Documentation. Because the USA is a “first to invent country,” establishing a “paper trail” (or “electronic trail”) that meets Patent Office requirements of due diligence is vital for the preparation and prosecution of a patent application, as well as for the possible enforcement later of issued patent rights.

In our office, we find that most inventors seldom have proper documentation; therefore, Step 1 is to have a Record of Invention (ROI) form completed. Once the ROI is completed by the inventor, the form is date stamped and notarized establishing the start of the “paper trail.” Regular entries are then made to the record demonstrating regular progress towards completing the invention and filing a patent application. This regular progress is known as “diligence” and will be the subject for another time. Suffice it to say at this point that reasonably paced progress that is documented is necessary in order to maintain the viability of the “first to invent” date. When the patent application is ready to file, our patent practitioners insert a reference to the date established on the ROI form into the patent application.

Some inventors mistakenly believe in using a “Poor Man’s Patent.” This is where an inventor describes their idea in writing and with drawings, then places everything in an envelope before mailing it back to him or herself usually by registered mail. When the mail arrives, the envelope is kept sealed thus making it a Poor Man’s Patent. This is a waste of postage and provides no patent protection. Inventors that use this mailing scheme are making a futile attempt to circumvent the patent process and avoid costs by adopting a procedure sometimes used by Authors trying to claim a common law copyright. For an invention idea needing a patent, a common law copyright affords no legal protection or ownership rights.

A Record of Invention, also known as a Confidential Invention Disclosure, includes:
1. Identification of all Inventors with full legal names
2. A technically descriptive working name
3. Written description of how the Invention is made and how it works
4. A drawing, picture or schematic of the Invention
5. Status of a working prototype
6. List of the unique features and benefits
7. Any other pertinent information

Once the ROI is completed, it needs to be dated and signed by two witnesses who are unrelated but understand the invention. Alternatively, the form could be notarized instead of having two witnesses. After everything is completed and witnessed, the inventor should then place the original Record of Invention in a storage organizer where subsequent entries can be added to the record in a similar manner.

Thus, the first step on the journey to obtaining a United States patent begins with the documentation step, followed closely by diligence in completing the invention and filing a patent application that is likewise documented.

So the moral of the story is – once an invention idea takes shape, waiting to begin the documentation step will only allow someone else to get in line first. Unfortunately, there are no prizes for second place at the Patent Office.

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