As an Austin, Texas Patent Attorney I recommend inventors and start-ups do the following before speaking with a patent attorney.
1- Do Your Own Patent Search
While I recommend that companies obtain a patent attorney to complete a patent search and opinion, I do believe that companies should perform their own patent search before they contact a patent attorney.
This is especially true in this day in age when Google has introduced a new patent database that can be searched (google.com/patents). Yet, as of today Google’s database of patents is not complete and includes gaps in certain patent ranges. Companies should perform a key word search of the relevant features of their invention, just like they would enter a query for any other Google search.
By a company performing their own patent search, they will be able to determine the breadth of the prior patents in their subject matter, and may uncover a patent that is strikingly similar to their invention.
2- Do Not Publicly Disclose your Invention
Do not publicly disclose you invention. A company or inventor may publicly disclose their invention by blogging about their invention, posting Youtube videos about their invention, offering to sell their invention, have a press release discussing their invention, etc. By a company publicly disclosing their invention they have introduced their invention to the public domain. This started a one year clock on when they must file a patent or be barred from obtaining a patent. Furthermore, many foreign countries do not afford companies a one year period to file a patent after public disclosure, and have an absolute ban for obtaining patent protection for any invention that is publicly disclosed.
3- If You Do Disclose Your Invention, Record the Dates
If a company does publicly disclose an invention, it is important to record the dates that their invention was disclosed on. That is because the one year bar date is a hard deadline. If your company obtains a patent, it may later be invalidated if the patent was filed one year and one day after your disclosure date.
4- Do Not Submit Your Invention to An Invention Submission Company
Many invention submission companies that say they will evaluate your product and determine if there is a market base for your product and market your product for you are scams. These companies require large sums of money upfront, and they will more than likely not be looking out for your best interests. Moreover, by disclosing your invention to an invention submission company you have publicly disclosed your invention, and therefore starting the one year clock before you must file a patent.
5- Do Write A Full Description of Your Invention And Email It to Yourself
A Patent Attorney will desire you to fill out an invention disclosure form before they begin a patent search or draft a patent application for you. The invention disclosure form will be laid out similar to how a patent application will be drafted, including a background of your invention, a summary, and a detailed description of your invention. Also, by drafting a full description of your invention and emailing it to yourself, you have created a record of when you conceived your invention. Until March 2013, the United States operated on a first to invent system and not a first to file system for determining who is given priority of an invention. By emailing yourself a copy of a full description of your invention can be later used to show when you invented your invention.
6- Do Draft Figures/Flow Charts of Your Invention
Your patent application will include Figures, therefore it is important for an inventor to draft figures showing the most important features of their invention. The figures do not have to be professionally created, and may be drawn by hand, black and white pictures, computer assisted drawings, etc. If your invention is a software invention it is also important to include a flow chart illustrating the steps of your invention, and how, what and when is being communicated between different network components. Flow charts greatly assist your patent attorney to fully understand your invention, so they can draft you the best possible patent application.
7- Do Think of Design Arounds
For a company to obtain the most valuable patent possible, they should think of possible design arounds for their invention. The design arounds will be simple alternatives that other companies could use to make your patent. Your patent attorney can assist you with this and will help you draft your patent application as broadly as possible, but it is also very helpful for inventors to do this as well.
8- A Company Does Not Have to Complete a Prototype before Filing their Invention
The standard that an invention must complete before filing a patent application, is that they must “enable” another skilled in the art to make and use their invention. Therefore, a fully functioning prototype of a company’s invention is not necessary before filing a patent. As such, if you are designing a mobile application for your patent, it is not necessary to have the web application fully functioning or even segments of code before talking to a patent attorney. What would be necessary, is that another could write the code or reverse engineer similar code based on what is disclosed on your invention.
Similarly, if you are created a mechanical device you do not have to have a fully functioning protytpe before talking to your patent attorney. Instead, you may have simple drawings showing the different parts of your invention and how they interrelate.
9- Do A Brief Review of Differences Between Provisional And Utility Applications
Your patent attorney will describe to you the differences between a provisional (optional) and utility application (necessary) but it is important for inventors or companies to have an understanding of the differences so they can ask their patent attorney questions regarding the two types of applications, and the benefits of filing a provisional application before filing a utility application
10- Don’t Try to Draft Your Own Utility Application
As a patent attorney I do not recommend to my clients drafting a provisional application, but I certainly do not recommend my clients drafting a utility application. Utility applications contain certain formalities that are hard to draft unless you are an expert. Further, if you file a utility application by yourself and do not fully disclose you invention you may be barred from obtaining patent protection for your invention. Provisional Applications are not published unless they are converted into a utility application. Therefore, if a company drafts a poor provisional application and lets it go abandoned this disclosure cannot be used as cited art against them in future patents that they filed. This is unlike utility applications, which can be used as cited art against you.