First, a parable. Like so many others, you’ve been pondering for years how to build the better mousetrap. Finally, inspiration hits you. You don’t have any of the particulars, but you know that with more thought, time, and resources, the invention is bound to take shape. With so many other inventors hot on your heels, you’d like to exclude them from your idea. Is now too soon to file for a patent? When should you ask the U.S. government to step in and help you protect your work by filing for a patent?
The answer depends: Generally, a vague idea like this, by itself, is not patentable. Although patent professionals often discuss the patentability of ideas, usually these professionals aren’t using the term ‘idea’ to mean ‘a vague mental conception’. They’re usually using the term as shorthand for the actual invention itself.
More than an ambiguous mental concept, the U.S. Patent and Trademark Office requires that an invention be reduced to practice before granting a patent. Although reducing your invention to practice may sound daunting, it really isn’t:
There are two ways in which inventions may be reduced to practice:
(1) by actually practicing the invention—for example, building or creating the invention, and (constructively)
(2) by filing a patent application
While option (2) may sound circular, successfully filing for a patent requires the inventor to tell the USPTO, in terms that a person of ordinary skill in the appropriate technical field would understand, how to practice the invention. The inventor must have turned that vague idea into a definite, explicit, workable concept, by thinking through all of the particulars of the invention—for example, the mousetrap’s structure, how it will actually work, etc.
If the inventor has both (1) failed to actually practice the invention and (2) can’t explain the invention to someone who should be able to understand, the time is not yet ripe to file for a patent.
As inventors know, much of the inventive timeline is erratic and fluctuating. Because it’s important to understand when the timing is right to file for a patent, the idea phase may still be a great time to talk with an attorney, especially as the invention begins to show commercial promise.
But, more important than knowing how early you should speak with a patent attorney is knowing when it’s too late. For more thoughts on this and on guarding your invention throughout the inventive process, stay tuned for Part 2.