HOW TO PROTECT YOUR INVENTION THE LOW COST WAY

Jeremy Horne, Ph.D.

You are an inventor faced with the first-to-file provisions of the America Invents Act, taking effect 16
March 2013. Now you have to be the first to file a claim with the U.S. Patent and Trademark Office
(USPTO) saying you are the first to invent. Before, you could keep a notebook detailing your
discoveries under the old law, that said the first to invent would be the one getting a patent. You are
apprehensive about filing for a regular patent because of cost and the complexity. Yet, there is a low
cost way of doing the same thing while fulfilling USPTO first to file requirements and protecting your
creation.

The first-to-file provisions of the America Invents Act will take effect 16 March 2013. This means that
the inventor first to file a document claiming to be the originator of an idea will get a patent, providing
the application is in good order and the invention indeed is unique and otherwise meets U.S. Patent and
Trademark Office (USPTO) requirements. Prior to this, an inventor could keep a notebook as evidence
of being the originator of an idea. So, what to do. The following assumes you have done a
comprehensive patent search to see if your idea is novel. If you haven't and the patent examiner finds
that there indeed is another device like yours out there, chances are you will not get a patent.
The first word that probably comes to mind in filing is patent. However, this is the lat thing you
want to do. First of all unless you want a patent to say merely that you have one, thereby inflating
your ego - you don't know whether the invention is marketable. If no one wants it, your patent is
merely an expensive wall decoration. First, let's see what is involved with getting a patent. But, let see
what is involved, anyway.
Right up front, the cost is prohibitive, often amounting to several thousands of dollars. The initial
filing fee of $95 paid to the USPTO is not bad but only gets you into the door. If you have more than
three claims, there is another $125. A multiple dependent claim is $225. That is only the beginning.
The utility patent search fee is $310, with the examination fee being $125. Assuming you even get a
patent, its issue fee is $870. Then your fine for three and a half years, when you pay progressively
larger maintenance fees every few years. Keep in mind that these are fees just for small entities, such
as individuals or small businesses. The design patent has much lower fees but that covers only as the
words say a particular design, such a shape of an object, artwork, etc.
[http://www.uspto.gov/web/offices/ac/qs/ope/fee092611.htm]
Any patent application is complicated to fill out, with the description being most important. If that is
not complete or is unclear, then chances are you will not get the patent. Plus, all fees will be lost. It is
advisable to get one skilled in preparing patents, such as a patent agent or an attorney. This can be
very costly, amounting to several thousands of dollars.
Assuming you have obtained a patent, other problems loom. The world now knows of the invention
how it is put together, use, and so forth. A person attempting to market the device or find a
manufacturer to produce it is faced with the reality of that manufacturer being able to patent around
the patent. Especially if the patent is poorly worded, it is not much of an effort to re-invent the
device by improving what the inventor has done. The inventor may hear even after a non-disclosure
agreement is signed, well that is a great idea, but we are not interested right now. The truth is that

they may be very interested and proceed to improve on your device.

So, if getting the utility patent is not the best advice what is?
Since 8 June 1995, the USPTO has offered the option of filing a Provisional Application for Patent.
Often called the Provisional Patent Application, or PPA for $125 small entity status. There is no
such thing as a provisional patent, though. The application, as the formal title says, is provisional, i.e.,
depending upon one's applying for a non-provisional patent within a year of filing the PPA. The PPA
is never opened. After a year, it is discarded if not acted upon. No one ever sees the contents.
However, an inventor can get a patent pending status and put patent pending on the invention.
Within the year, the inventor either has to apply for a non-provisional patent or have the PPA converted
to one. Alternatively, if the inventor fails to do that, s/he can file another PPA. This can be done only if
the contents of the invention have not been revealed to anyone by publication, display, or sale.
To file a PPA, the inventor needs to fill out a cover sheet, provide a description of the invention, and
draw or diagram it No claims are required. These three parts are put into a PDF form and uploaded to
the USPTO website, along with the $130 fee for small entities. Regular filers pay $250. Lately, a
Micro-entity fee applies to those earning under $15,000 a year; this is half of the small entity fee, or
$65.00.
Besides its low cost the PPA has the advantage of still providing protection without revealing the
contents of the invention. When the inventor goes to a manufacturer s/he can talk generally about it
without revealing the details, as would be the case of the non-provisional patent. That is, it is harder to
invent around it.
While all this is well and good, the main obstacle confronting the inventor wishing to get a PPA is that
the description and drawings must be in good order. In reality, this was the problem with the old
workbook method. If the inventor wanted to challenge infringement on her/his invention, the
description and drawings had to hold up. If they were too vague, and if the one allegedly copying the
invention had a better description, then the first inventor might lose. The same applies to the PPA.
The acid test of whether the description is worth anything is that a person with an ordinary skill in the
field should be able to take the description and diagrams, create the device, explain how it operates, and
use it, all according to what the inventor intended. The should be doable without any assistance from
the inventor r anyone else. If the one using the documents cannot do this, the writer has not done
her/his job in providing an adequate description.
Many people will fail to get PPA and patents because of this. However, document preparation can be
costly. There is a low-cost solution. It is to have the non-profit Inventors Assistance League (IAL)
prepare the PPA. While it doesn't have the legal imprimatur, the USPTO assured IAL that a technical
writer's rendition of an invention would be fine. Of course, there is the option of submitting the
completed PPA to a patent agent for review. The cost of presenting a well drafted PPA to the agent is
much less than one poorly written. It is preferable to have an agent look to the document over, simply
because an attorney costs so much more. In addition, patent agents are qualified to practice patent law
(but only patent law), just as an attorney is.
So, it is time to act to protect your invention the low cost way, the PPA.
The America Invents Act requires an inventor to file a claim to originality for an invention. You can

do this and protect your invention the lost cost way. The non-profit Inventors Assistance League can
show you how. Call (818) 246-6542or visit http://http://www.inventions.org/ . We have been in
operation for over 50 years helping independent inventors protect and market their inventions.
Costs for PPA preparation by IAL's technical writer are $60 per hour.