FINDER'S FEE

  • Prior Art is any directly relevant patent filed or disclosure made prior to the current invention. Directly relevant prior art (patents or applications or public disclosures) has "priority" over, and therefore prevents any new patent from issuing.

    Before applying for a patent or design, a thorough "prior art search" is critical. The inventor must also decide on the jurisdictions where they intend selling their product, so that the searcher can direct their investigations accordingly.

  • Searching before developing a product preserves valuable time, energy and money! Thorough prior art searching tells the inventor who their competitors are, the risk that the inventor's product might infringe another's, and the background of their particular field.

    While you are probably an expert in the field of your invention & haven't seen your invention anywhere, that does not mean that a patent hasn't been filed somewhere, and may still be active. The normally high cost of the patenting process can stall the marketing & sales of a product.

    Another inventor may not have their product on the market, yet still have full rights to their invention. Without a search to ascertain the novelty of one's idea, an inventor risks an infringement lawsuit, loss of past sales income, and an injunction to stop making/selling the infringing product.

  • Data from a search is collated into a Patent Search Report (PSR), which evaluates whether to proceed with an application based on invention novelty & provides a thorough invention background to aid in writing provisional, utility or design applications.

    The information from a patent search can also be used by the inventor to more thoroughly understand their competitor's products, & maybe even discover a different approach to their own invention based on solutions implemented in earlier inventions.

    > View more complete details on the Documents page

  • A patent searcher is limited to the data only available when they are searching, so they cannot know about applications not yet posted publicly. It is the practice of patent offices to delay publication for 18 months (US) or up to 31 months (PCT) after initial filing.

    These are called "submarine" patents and may be lurking beneath the waves & risk surfacing on an inventor later in the application process. This unwitting infringement risk is present to all inventors and inventive companies, no matter how thorough the search performed.

    The depth of a search is determined by the complexity of the invention (# of unique elements), the number of directly relevant competing patents (active use/market share), and the plans of the owner (making, selling, licensing the product).

    Different kinds of searches are available: An inventor may want to know if they can get a patent (patentability); whether they can sell their product without risk of infringement lawsuit (freedom to operate); or if they might infringe on another's patent (infringement). [IS does the first two]

  • To avoid the liability of infringement & wasting time/energy/money, a thorough search of the prior art is needed before developing a product, or applying for a provisional, patent or design. The summary of this effort is a Patent Search Report [PSR].

    A comprehensive Patent Search Report [PSR] details searched keywords, lists relevant classifications, ranks relevant prior art discovered & includes copies of relevant original patent documents. Search algorithms are also retained if a search needs to be updated in the future.

    > View Sample PSR

    Patent Search Reports [PSR] also help the inventor determine the viability, objectives & terminology of their proposed provisional/patent/design application. PSR's show what language & concepts have been used by others, and this enables an applicant to demonstrate how their new idea is different enough in order to be patentable.

  • When a Patent Search Report (PSR) reveals that there are one or several patents directly relevant to a proposed patent application, the client may request a more detailed analysis and comparison of the claims of each patent with the claims of their proposed application.

    By this means, the inventor can make the most informed assessment of their risk of infringement, freedom to operate and likelihood of a successful patent application.

  • Narrow expertise in your invention may not be enough. You might miss a critical patent forcing you to forfeit application & legal fees when a patent examiner finds it, or find out when you are being sued for infringement while having your patent revoked.

    An inventor describes their ideas in their own terminology, which is then reinterpreted by a patent agent. Patent searchers must try to find all relevant patents, each of which have been described by another inventor & then recast by their agent.

    Patent searchers must be methodical & experienced users of search databases & be adept at parsing the nuances of technical & legal language in order to consistently focus on appropriate search parameters. Quality searches improve the likelihood of successful patent applications.

    Instead of winging it on your own, it is better to use an experienced, methodical, objective patent searcher. Early patent searching is a critical step that saves much grief & money if done properly. Patent agents often use interns for searches.

  • Before hiring a searcher, an inventor often may try their own search because it appears simple & they like to learn new skills. The quality of the results depends on methodical & thorough search habits & by selecting objectively relevant search parameters.

    You can help us do a faster and more thorough search if you record any relevant search data you have discovered on your own, and forward it to Inventive Solutions before the search is begun. Only relevant patent numbers are needed, not the entire patent documents.

    Given that an inventor is often an expert in the field of their invention, any information about any related competing products may also help the searcher quickly zero into the relevant prior art.

  • Provisional & utility applications should include drawings not because they are strictly mandated, but because they make it easier for an examiner to understand the invention accurately & thereby improve chances of a successful outcome.

    An application should be sufficiently detailed so that anyone with ordinary skill in the field could make the invention based solely on the disclosure. Drawings bring clarity that words often cannot, but only if comprehensive, relevant, distinct & logical.

  • The US Patent & Trademark Office (USPTO) used to be very strict about the quality and accuracy of drawings, partly because many engineers used to employ draftsmen to create them. Today, with CAD drawing programs the rules have become much easier to comply with, and less stringent guidelines are required. One may explore acceptable drawing practice by reviewing drawings in issued patents found on the relevant databases.

    Drawings required for provisionals/patents/designs should be line drawings showing and numbering all parts of an invention from all relevant sides & often include perspective or isometric views.

    Two very useful (but older) references on drawing practice are the relevant sections in the guides for filing Utility & Design patents issued by the USPTO:

    > Download "A Guide to Filing A Utility Patent Application"

    > Download "A Guide to Filing A Design Patent Application"

  • Drawings required for provisionals, patents & designs are simply line drawings that show all parts of an invention from all relevant sides. Inventive Solutions can create these drawings.

    While a line drawing is a 2-D representation of an invention, it can include perspective or isometric views, and these are most efficiently produced using a computer aided design (CAD) program.

    Inventive Solutions can generate new drawings or convert vector graphic CAD drawings into patent drawings that are completely sufficient to meet all drawing and disclosure requirements.

  • Due to the availability of rapid prototyping, product designers, and marketing agencies, inventors often already have access to quality drawings. There is no need to reinvent the wheel.

    Engineering drawings, marketing presentations, CAD prototypes, all can form the basis of patent drawings, as long as they are in a format that can be useful, such as vector graphic file formats. If drawings are not available, even hand drawn sketches can be useful if they show all the parts of the invention, and they can form the basis of new drawings.

    For inventors who intend to provide digital format drawings,

    > View our Patent Drawing Primer

  • Digital photographs can be taken on site, from which drawings can be drafted remotely.

    Drawings are usually the preferred method of graphical representation for provisionals and utility applications, but they may be used for design patent or industrial design applications.

    Photographs used for design applications must be of sufficient clarity to show all relevant visual attributes of the design, because the entire basis of the disclosure rests on these photographs, unlike the thorough written description that accompanies the utility patent.

  • A trademarked symbol can be used to identify a product, and it may be derived from the functional nature or appearance of the invention. When patent protection is no longer available, a trademark may still be used to protect the inventor's brand & product reputation.

    Inventive Solutions has a background in graphic design, and can help with the design of graphics related to a current invention project for the purpose of trademarking.

    Inventive Solutions does not file trademarks or provide trademark documentation, for which the inventor should consult a trademark agent.

  • A provisional application is a simpler low cost way to establish an early filing date, while allowing one to claim patent pending status a year early, but only as long as the full utility application is filed before the provisional year expires.

    With any public disclosures, one has up to a year to file a patent, referring to their provisional priority date. With no disclosures, one could file a new provisional after the old one expires, but they will not get the old priority date, and may lose priority to another filer if they have an equivalent invention.

    A provisional is usually filed as soon as prepared, but this depends on the intentions of the inventor, such as expected public disclosures, the state of product development, investor commitment & the risk that a competitor might file sooner.

    With an extra year of protection one is expected to keep their promise & file a full patent application on time. If a provisional expires & public disclosures have been made, an inventor will lose their right to ever patent this invention.

    An inventor must take all deadlines, payments & disclosure issues seriously. Note that some countries may not allow an inventor to patent in their country if there have been any public disclosures before a formal utility patent application is filed. (even with a provisional)

    A provisional is not examined during its year of pendency, but remains on file in anticipation of the formal patent application. When the latter is filed, the provisional is discarded & the examination phase of the application process begins.

    Provisional documentation needs to be comprehensive, accurate, thorough, understandable, and employ language & drawings that support the case that the proposed invention is original, useful & not obvious to one skilled in the same field.

    > View more complete details on the Documents page

  • It is recommended that a patent agent/lawyer draft the utility application as well as represent the inventor during the examination of their application. Patent practitioners are current in the law & use strategies that can prevent costly mistakes & enable the broadest patent protection.

    Unless the inventor is conversant with current patent practice and case law, it is often unwise to expect the best outcome by going it alone. The goal of the patent examiner is to restrict the scope of the claims (i.e. the level of protection) of the invention as much as possible.

    Non-practitioners are not allowed to represent inventors before patent examiners, but they can draft/submit applications under certain circumstances. A utility application can refer to a provisional including its priority date.

    Filing without claims can postpone an expensive examination for up to a year, but be warned that some countries may also deny applications that use provisionals, or those with any public disclosure before a utility application. Provisionals can also form the basis of PCT or international patent filings.

    > Review details on the Documents page

  • A utility patent protects how an article is used and works; its functional aspects. A design patent protects the way an article looks; its aesthetic qualities such as shape, configuration, pattern or ornament. An invention may include both aspects.

    For this reason, design patent applications are mostly a set of drawings, with no explanation, specification, claims, or elaborate examination phase. Either a design is new, or it is not, and if the disclosure is complete, and the filing fees are paid, the design registration certificate is issued in due time.

    Design patents are much simpler because aesthetic qualities can be demonstrated with drawings & photos. They are much less costly because there is no need for a detailed examination process.

    Normally, patents have a term of 20 years, while designs last about half that long and cost much less, but both require payment of maintenance fees during their term.

    Note: an applicant may not use a provisional application (US) as the basis of a Design Patent (US), or an incomplete application (CA) as the basis of an Industrial Design application (CA).

    In Canada, the Industrial Design application is equivalent to a US Design Patent application. It has similar requirements, such as drawings/photos only, a singular claim, lower cost & shorter examination than utility applications.

    > Review details on the Documents page

  • This section supercedes any related information on this website pertaining to online filing and payment of patent applications. New access restrictions enacted (2024) by US & Canadian government patent offices have made it much more difficult for non-practitioners to file applications, including US provisionals filed by service providers or applications filed by inventors.

    [US] The new rules established by the USPTO now limit access of inventors, require service provider sponsorship and require proof of identity before being permitted to file. Any inventors, service providers or practitioners wanting to file in the US are now required to physically submit notarized proof of identity and account registration forms before being permitted to login and file any applications on the USPTO Patent Center.

    [US] If you are a patent service provider seeking to file a US application on behalf of an agent or inventor, you are now required to be sponsored by a patent agent registered to practice in the US. If you are an inventor (from a permitted country) applying for any patent application for your invention, you are still required to prove your identity to USPTO and submit forms to open an account.

    [CA] CIPO now requires confirmation of identity, usually using pre-established credentials, but does not appear to restrict who can file a patent at present. Canadian patent fees are generally less than US fees, so there still is an advantage to filing a US provisional to postpone greater patent costs while proving out an invention in the market, then using the provisional as the priority document for a full patent filed in Canada.

    [CA] To file your patent application and pay fees online in Canada, you need a My Canada Business Account. This can be achieved by either creating a Government of Canada Key (GCK) account or by using a pre-established Signin partner which ports you to the signin pages of most Canadian banks and some, but not all credit unions. While Canadian filing appears to be less restricted, there is no provisional application system available to CA inventors.

    The new filing requirements do not invalidate the value of employing an experienced patent writer to draft specifications to be filed as normal or provisional applications. Nor do they remove the necessity of early patent searching to determine the novelty of inventive "ideas" before investing in the expense of applying for a patent.

    When a US provisional needs to be filed, it can be done by a local patent agent registered to practice in the US. Qualified agents are common in Canada, and while the price will now be higher when forced to use a local agent to file, the basic application can still be prepared separately. This process remains more affordable than paying up front for patent services when the value of a product has not yet been proven in the marketplace.

  • Mailing applications to the patent office has become an obsolete practice for many good reasons, namely delays, extra costs, extra paperwork, unreliability, and risk of losing priority.

    It can take over three months for a receipt of filing (establishes the filing priority date) to be returned to the inventor, and this still requires that they supply a self-addressed & stamped return envelope.

    Electronic filing is accurate, instantaneous, reliable, and filing priority receipts are emailed as soon as the fee payment is confirmed.

    e-Filing does require that all documentation be in a format (PDF) acceptable for filing, but any documentation prepared by Inventive Solutions will meet or exceed those standards.

    e-Filing also allows filing fees to be submitted by Inventive Solutions, for which the client will be invoiced once the exchange rate is determined.

  • To reduce application costs, an applicant can declare or certify their entity status as Standard, Small or Micro. By completing & submitting the proper forms, they can reduce most patent fees up to 80%. If their status changes, the US forms must be revised asap.

    In the US there are three categories of entity status. Standard means you pay full costs. Small entity means you must declare that you don't exceed income, company size & # of application limits. (-50%) Micro entity status includes SE declaration & must be signed & certified. (-80%)

    In Canada, there are only Standard full costs and Small entity status. To qualify for the latter, the applicant must submit a petition for the status, and be a small business not employing more than 50 people or be a university. (-50%) Qualification does not change if status changes after petition allowance.

    For international applications (PCT), entity status rules follow the country from which the application originates. If one chooses Canada to file a PCT application, the entity discounts of Canada apply. (-50%) However, any US or PCT(US) applicant can apply for Micro entity discounts, including Canadians who file a US provisional. (-80%)