Rules to Follow when Getting a Patent: Part 1

The standards for a patent seem straightforward enough, but, as always, the devil lurks in the details. Follow these 10 rules to make sure you don't get tripped up:

Rule No. 1: Be prepared to prove paternity. In the United States, the first person to create something gets credit for it. Experts recommend keeping detailed notes in a lab notebook that are dated, signed, and witnessed by someone who understands the technology. Careful records will enable you to prove later that you are the proud father. You never know, there may be some other guy fooling around in his garage with the same thing.

Rule No. 2: Don't create on company time. Most engineers and R&D professionals give up ownership rights of anything they invent for their employer. In some cases, even inventions made on your own time may belong to the company (check your employment contract or employee handbook).

Rule No. 3: Do your homework. Existing patents, even expired ones, and relevant technical literature, together known as prior art, may reveal that your invention is not new or nonobvious. You can research patents using the government's online patent archives (www.uspto.gov), which date back to 1790. For more thorough searches, visit the PTO in Arlington, Virginia or one of the Patent and Trademark Depository Libraries located across the country. Better yet, hire someone (see Rule No. 4).

Rule No. 4: Hire a professional to help. Although you can do your own preliminary research, and even file a provisional (patent pending) application yourself, preparing a patent application is a job for an expert. Hire a registered patent attorney or patent agent to assist you. Full patentability searches can cost up to $1,000, and professionally prepared patent applications can exceed $10,000, but do you want to be known as a tinkerer or an inventor?

Rule No. 5: Assess the market first. Many inventors are great at making things, but lousy at estimating their market appeal. If your invention won't sell, there is no reason to go through the hassle and expense of obtaining a patent. Filing a provisional application (cost: $80) gives you a year of protection to test-market your invention before you have to file a full-blown patent application. Use the one-year grace period to contact potential corporate partners and venture capitalists who can give you a reality check, help you develop the product further, or provide funding. Watch out for invention promoters