Answer These Questions – the answers will be critical to if and how you file your application
Questions about Novelty
Was your invention described in any publication – printed, video, blog, on the internet or in any other way, anywhere in the world before the date you actually invented it?
Was a description of your invention published by you (including on the internet) more than one year before filing?
Was your invention known about or used in the U.S. before you invented it?
Has your invention already been patented anywhere in the World?
Were you publicly using your invention more than one year ago?
Were you openly selling you invention more than one year ago?
If the answer to any of these questions is “Yes” then you are probably not entitled to file a US patent and should not file an application. If you have any questions, you should contact a patent attorney. Note that as the inventor, you get a one-year grace period in the US after disclosing/publishing your invention to file your patent application. So if you have already published or publicly used or sold your invention, then you have exactly one year from that date to file an application. After that date you are not entitled to a US patent. A “publication” includes any form of public disclosure such as posting on the internet such as YouTube, websites, blogs etc, printed publications, public talks, or disclosure at trade shows or in magazines.
Questions about Ownership
Are you sure that you (and your named co-inventors, if any) own all the rights to the invention?
Is the invention related to your job or to technology that you work on as part of your employment? Do you have a contract with your employer covering inventions related to your work? If so you probably need to talk with them.
Was the invention created under contract with the US government or paid for by a US government grant?
If the answer to (1) might be “No”, and someone else may have rights to your invention, perhaps because they have paid you to design something, then before you file a patent application, you will have to discuss it with them and negotiate to get a written assignment of rights. Remember, this should always be in writing.
If the answer to (2) is “Yes” then your employer may have some rights to your invention, and you should certainly talk to them before you file a patent application.
If the answer to (3) is “Yes” then you simply need to state this fact in the patent application. We will show you how to do this in the instructional materials. You do not need to get permission from the US government to file the application.
Questions about Inventorship
Have you clearly identified all the inventors?
This can be a more complex question than it sounds, and it is very important. It is a legal requirement to name all the inventors on the application. An inventor is anyone who makes a contribution, even a small one, to a claimed invention. Each inventor has to have contributed to the “light-bulb moment” – the realization of the invention. Someone who simply follows your instructions to develop or build the invention is not an inventor. So make sure that you correctly identify and name all the inventors in your application. If you have any questions, you should contact a patent attorney.
Now that you have done the patentability questionnaire, don’t forget to do the prior art search. Once you have done both, select which option you want to go with – Option 1: No Review option or Option 2: Attorney Review & File option – and register. We will be here to help every step of the way!