You have a great idea. Is patenting the best way to protect it? How much do patents cost? How do you find out if your idea is patentable?
Robert M. Hunter Registered Patent Agent Robert M. Hunter, Ph.D.

Registered Patent Agent
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by Robert M. Hunter, Registered Patent Agent

This checklist is intended to help you disclose your invention to the patent practitioner who will arrange for your novelty search and/or prepare your provisional patent application. Please mark the page(s) containing each of your answers with the question number. Also, please date and mark each page "CONFIDENTIAL INVENTION DISCLOSURE". If you write well, presenting your answers in the format of a provisional application may reduce your costs. Write in the present tense.

If you want to patent a plant, here is a plant patent checklist.

I suggest that you first take a look at some issued U.S. patents in your field to gain an understanding of the general level of detail I need and scope of the document I will be preparing. You can do that by performing a Quick Search (by keyword) of the patent database at the USPTO website, if you have not performed a preliminary search already.

1. What are some suggested titles for the invention?

2. Who thought of the invention? For each inventor, please provide full legal name, post office address, residence address, telephone number and citizenship and, if available, fax number and e-mail address.

3. What is the technical field (i.e., field of technology) of the invention?

4. What technical problem(s) were you trying to solve with the invention?

5. How have others solved the problem(s) that the invention solves? Include citations to and copies of relevant publications and patents, if available, that illustrate the state of the art before you made your invention. (Note that your own activities, e.g., a publication anywhere, a commercial offer for sale or public use in the U.S. that occurred more than one year before you file your U.S. patent application, must be disclosed to the USPTO and can be a bar to patentability. You can determine when a web page containing a disclosure was published, i.e., indexed so it could be found, by entering the URL into the Wayback Machine.)

6. How have the solutions of others failed to completely solve this problem?

7. What is the nature of the invention? Describe the invention in 25 words or less. What is the essence of what you claim you have invented?

"I have discovered . . . "

8. What are the essential (i.e., absolutely required or key) elements of the invention? These are the elements of your invention that have to be present for the simplest version of it to work.

9. How is the invention useful?

10. Why is the invention better than the solutions of others?

11. How would you describe the drawing(s) that depict the invention?

"Fig. 1 is a plan view of a preferred embodiment of . . . ."

"Fig. 2 is a perspective view of . . . ." etc.

Provide a numbered listing of each and every element of the structure of the invention and each and every step in the process of the invention. Skip at least one number between each element or step and about 10 numbers between drawings (so we can easily insert others later). Remember that the same number must be used for the same element or step when the element or step appears on a different drawings and that no number can be used for more than one element or step. That is, each element or step must have its own number and no other number. Do not number elements or steps that are not shown on the drawings.

12. How would you describe the structure of the invention (and/or process steps) by reference to each and every (numbered) element of the invention shown on the drawing(s). Use a sentence format that is similar to the patents you have reviewed above. Use names for the elements that are typically used in your field, if possible. How do the elements interact? Describe each version (embodiment) of the invention you want to protect (even versions with disadvantages that you do not like much), not just the version you consider best now. How might the invention be improved in the future? (If you want your patent to cover such improvements, you must think of them now.) Submit and describe any technical or marketing documents you have written about your invention.

13. What is the best or most preferred way to make and use the invention? Are any preferred materials or manufacturing operations involved that allow your invention to perform optimally?

14. How does the invention work? Or how is it operated? Refer to the elements shown on the drawing(s) as necessary. Describe how to install it, start it up, operate it, etc.

15. What are the structural and/or functional differences between your invention and the solutions of others? Focus on structure (e.g., the physical details about each part and how they interact), not advantages.

16. Why do you believe your invention would NOT have been obvious to another inventor working on the same problem at the same time in the light of the existing solutions of others? What is it about your invention would be surprising to others in your field? Do you have evidence (dated documents, etc.) that the invention (as you want it claimed) produces critical or unexpected results, that it has been a commercial success, that others are copying the invention, that it satisfies a long-felt but unsolved need, that others have failed to solve the problem, that experts have been skeptical that the problem could be solved, etc.?

Please destroy any draft versions of this document to prevent confusion should the draft be discovered during any future patent infringement or validity lawsuit. Keep the final version in a safe place.

If time is critical, please submit a check for half of the estimated cost when you submit your invention disclosure, so I can start work immediately.

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