Editor’s note: First Person is an occasional series of stories from inventors, written by inventors. This story appears in our September 2009 issue.
By Mary Brock
I’ve spent months developing my invention and finally saved and borrowed enough money to get it patented.
And I was excited to seek a reputable invention-assistance firm to help me find a manufacturer for my device, the “doggie poop freeze wand” that chemically freezes dog waste for easier disposal or faster decomposition.
I recall all the problems I encountered getting the patent application done properly – the numerous times I had to re-submit the prospective parts of the application to the U.S. Patent and Trademark Office before the patent was finally granted, largely because I didn’t have the money to hire a patent attorney.
I felt if the Patent Office sent my application back for corrections so many times, it must have been trying to make sure my patent was well protected. I smiled to myself and said, ‘It was worth the trouble, if that’s what it takes to get it done right.’
My next thought was: “My idea is safe now. Yes! My invention is protected by a patent. I can feel comfortable talking to an invention-promotion firm or potential manufacturers about it.”
I was wrong.
Learn the Procedures
1) I filed a disclosure document in 2001
The USPTO keeps this document for two years. It serves as evidence of the date of conception of your invention. The USPTO destroys this document after two years unless it is referred to in a separate letter in a related patent application filed within those two years.
The two-year retention period is not a “grace period” during which the inventor can wait to file his or her patent application without possible loss of benefits. The date of its receipt in the Patent Office will not become the effective filing date of any patent application subsequently filed. It will not be published.
2) I filed my provisional patent application in 2002
This application is optional. It’s designed to provide a lower cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants. Claims and an oath or declaration are not required for filing a provisional patent application. It also provides the means to establish an early effective filing date in a patent application and permits the term “Patent Pending” to be applied in connection with the invention.
3) I filed my non-provisional application in 2003
This is the final and actual patent application. This application is published in the Federal Gazette after 18 months of filing for a patent. Anyone can see (and copy) your idea. The publication date is earlier, if there is reference to a provisional patent application. In that case, the publication date would be 18 months from the filing of the provisional patent application. This application does require a claim or claims as well as an oath or declaration.
4) My patent was published in 2004
It was published in 2004 because my non-provisional application referenced my provisional patent application date.
5) My patent was granted in 2005
I had to resubmit various parts before final approval. This meant the public had access to my patent information approximately one year before the USPTO granted my patent.
Soon after the USPTO posted my patent, marketing firms started contacting me.
I discussed my patent with each of them, with hopes that one of them would assist me in finding a manufacturer. The invention-marketing firms continued to bombard me. At the same time, I researched the field of my invention, potential competitors, and others who might be able to assist me.
Eventually, I spent what little funds I had and took a chance on a firm that said it could help.
Nothing positive resulted from that.
One day in 2007, I was browsing through a catalog that included pet-related products.
Right before my eyes was an ad depicting a product that bared the two most descriptive words in the title of my recently patented invention. It was a derivative of one of the claims in my patent application, and is used for the purpose described in my patent.
My heart pounded and my world crumbled. I became angry, yet eager to know more about this product.
I ordered it from the catalog. The packaging had a “Patent Pending” notice.
I searched for more information about this product, which hit the market in 2004. That distressed me even more, because I knew my patent was granted in 2005. I also discovered it’s sold in several countries.
I didn’t find a patent, but I did find a trademark for the name given to this product. I thought, ‘This company stole my idea and had the nerve to trademark the descriptive name so that I could not use it.’
That’s not all. I went to the company’s Web site and others where this product is advertised. They have thousands of sites advertising what should have been my product and are probably making millions of dollars.
Effects of Publication
Surprisingly, I also found complete copies of my patent on numerous other Web sites other than the Patent Office.
On one of these sites I found the actual words used in the other product name were highlighted on the display of my patent. This may be where the owner of the trademark got the information for their product from.
Further research revealed that in some cases when my patent name was typed in, the other product’s information also appeared.
Contact the Culprits
I did seek legal advice and tried to retain an attorney. I used Pre-Paid Legal Services, which sent a letter to the company whom I believed was infringing on my patent.
A company representative called to speak to my attorney in response to that letter, but the attorney was not available. Because Pre-Paid Legal’s services are limited, I phoned the suspect company myself. They tried to be intimidating and told me they thought the letter was a joke. They also stressed that they were a big company and would fight me to the highest court. I stated it was not a joke, and I felt that they were infringing on my patent. That conversation soon ended with them threatening me and my attorney with a lawsuit.
“Your Complete Claim Is Not Duplicated”
I wanted to make them pay for the alleged infringement. I have no money, because I am disabled and on a fixed income. However, with diligence, I found a legal firm that would represent me for free. Their investigation only revealed that although this company copied part of my invention, my Claims in my patent application were written in such a way that their product does not exactly duplicate any one of my claims completely, because I described other dependent parts in each claim.
It is a derivative of one of my claims. There is nothing I can do about it.
I’m telling this story because this could happen to you. It’s happened to many other inventors, and it’s still happening to new inventors, especially small entities and individuals on low incomes.
I was middle-aged when I conceived this idea. It took years of thought to come up with a useful development of the idea as a product.
By the time I was able to acquire enough money to pay for a patent, I was over 50, disabled and on a fixed income. This idea was the answer to my dreams of helping my family members who are in need, helping others in need and generating income that would take care of my spouse and me so that we would not be a burden on our children.
This dream was shattered because my patent application was published for all to see before the patent was granted. My idea was displayed on numerous Web sites, and I disclosed to inquiring marketing firms. Don’t let this happen to you.
Words of Caution
There’s no assurance that a patent adequately protects your invention. It’s best to employ the services of a USPTO registered patent attorney or patent agent. Both can legally prepare applications and conduct prosecution in the USPTO.
However, the patent agent cannot conduct patent litigation in the courts or perform services that the local jurisdiction considers as practicing law.
Anyone can view or get copies of your complete patent file information after it is published.
“An applicant may request that the application not be published, only if the invention has not been and will not be the subject of an application filed in a foreign country that requires publication 18 months after filing (or earlier claimed priority date) or under the Patent Cooperation Treaty,” so says the USPTO on its Web site, www.uspto.gov.
If you’re unable to hire a patent attorney or agent, remember to specify your claims in the patent application very carefully and make sure each and every part of your invention has its own claim.
Also, make sure you know the different types of claims. “It is the claim(s) that define the scope of the protection afforded by the patent. It is the most important part of the patent application.”
The procedure for filing an application for patent is complicated to a lay person. The steps described in this story seem simple, but there are specific rules and regulations for each step.
Detailed instructions are on the USPTO’s Web site.
“The preparation of an application for patent is an undertaking requiring the knowledge of patent law and rules, and Office practice and procedures, as well as knowledge of the scientific or technical matters involved in the particular invention,” the site states.
Most inventor-promotion companies know this. This is probably why one of them asked me, “Did you have the assistance of an attorney in filing your patent?”
That is the signal that there may be some way of stealing this idea and capitalizing on it, without fear of penalty.
Do your homework. Protect your invention.