Risk Manager
Protect an Invention with a Patent
That device or tool you've created may have commercial value.

BY JEFFREY D. WEINSTOCK, ESQ.

Eyecare professionals often invent. Because your invention could have real commercial value, it's wise to protect it by filing a patent application. This article will outline some of the preliminary considerations involved in filing a U.S. patent application.

Filing a patent application requires an attorney who's knowledgeable in the area of patent law. Get a recommendation from your personal or practice attorney. Don't go to the Yellow Pages.

AVOID COMMON MISTAKES

Before you even get to the step of applying for a patent, determine whether you're the proper party to make the application. You may be the inventor, but some employment contracts provide that if you create any inventions during your employment, your employer may own the right to obtain the patent.

And you may have seen advertisements for companies that will help you patent your invention. Although some of these companies may be legitimate, others charge you for only a portion of the patent process, such as performing a preliminary patentability search, and don't actually obtain a patent. Even if a patent is obtained, it's often so broad and skimpy that it provides very little protection. Therefore, retaining a reputable patent attorney is essential.

IT'S NOT A SIMPLE PROCESS

A patent application varies by the intricacy of the patent application's specifications and claims. Due to the heavy workload of the examiners, the patenting process typically takes 1-2 years to complete. The cost varies as well, but as a ballpark figure, a typical patent may cost between $7,000 and $15,000.

The cost can depend on the complexity of the patent, whether the application must be amended or modified based on the reviewer's comments, and the amount of work that your attorney must do to prepare the application.

There are however, things that you can do to limit the expense. Patent attorney Scott Horstemeyer of Atlanta says including very specific drawings and text that describe the invention and its functions in a detailed manner make it easier to prepare the application. This will allow you to save on legal fees.

If you're a first-time inventor, your attorney can direct you to examples of the required detail and specificity for a description on a patent application. In addition to reducing your costs, providing more detail will generally provide you with more protection for your invention.

Your attorney will advise you as to the possible patentability of your invention after making a preliminary search in the files of the U.S. Patent and Trademark Office (USPTO). Assuming the invention appears to be patentable, you can file a disclosure of the invention with the USPTO. This document isn't a patent, but the filing can be used by the inventor to prove when the invention was made and what the invention is.

OBTAINING THE PATENT

You and your attorney can then begin preparing the application, which requires detailed written and illustrative explanations of the patent claims. The application must be carefully considered because the disclosures on the patent application will affect the protection given by the patent when granted.

In addition to describing your invention, you must also disclose "prior art," which can be information you know about previous public disclosures relating to your invention. If an invention very similar to yours has been previously publicly disclosed, you may not be able patent your own invention. Your attorney can discuss this concept with you in greater detail.

It's important to remember that after you approve and file the patent application, the process isn't over. It's likely that while some of your patent claims will be allowed, some will be rejected initially. If this happens, you'll have to work closely with your attorney to prepare an appropriate response.

Jeffrey D. Weinstock, Esq., is a corporate/transactional attorney in Boca Raton, Fla.