PATENTS et al"Your Gateway to Patent Protection" TM
Patent Law Offices
Joseph R. Birkner, M.E., Registered Patent Agent
4 Earley Road Peabody, MA 01960-1218
Tel: (978) 536-2864 E: 
Copyright 2013; 2005 and 2001 Joseph R. Birkner, M.E. Registered Patent Agent
Presented To IANE Members at M.I.T. on November 14, 2005 and on January 8, 2001 (edited 2013)

Overview Of The Idea Into Invention and The Patent To Marketplace Process "I-I-P-M" TM

1. IDEA>>>>>>2. INVENTION>>>>>>3. PATENT >>>>>>>4. MARKETPLACE


The Process of Inventing begins with an IDEA! This is the first step and not the final step as some may believe ie. (alpha not omega!). Example: Idea is a carburetor for a car that yields 125 mpg; "make man fly!!"..but I don’t know how to do it!! ..YET!! Invention is the solution to the suggestion or idea; ie. The "how to do it". Ideas are NOT patentable and people buy products NOT IDEAS or "black boxes"!! If your idea requires a "magic wand" to go with it (unless it is a magic trick)…go back to the drawing board and work out a solution!

Where and How to get ideas for possible inventions and What to invent: The age old adage of find a need and fill it still rings true. Work, play, hobbies, interests, needs ..anywhere. Automatic idea generating methods such as T&E (trail and error; Edison’s method); Brainstorming, (Alex Osborn 1939), SCAMPER; S-substitute; C-combine; A-adapt; M-modify,magnify, minify; P-put to other uses; E-eliminate; R-reverse; rearrange; Attribute Listing; state problem; list all attributes in column; alternate solutions in column; force connections for new invention and others. Invent for the marketplace by finding out what products are already selling; ie. A market that is already tested and proven. Example: scooters are hot! Try to see how to improve them or enhance them. This is better than trying to fit your random idea into a market that may not exist or be overcrowded with innovative inventions whereby your invention may not have a chance to make it. Learn from Thomas Alva Edison ..’never invent unless there is a market’. Write your ideas into an Inventor’s Notebook which you can have witnessed and understood by two non-relatives. Trash the unopened letter you mailed to yourself! It can be steamed opened or slit and glued to change contents ala Columbo TV episode. (The older PTO Disclosure Document Program has be replaced by a Provisional Patent Application (PPA). Consult with a registered patent agent who can advise you further regarding your next steps such as filing a provisional patent application or a non-provisional patent application. (see the article  AVOIDPPA   AVOIDING COMMON PITFALLS OF PROVISIONAL PATENT APPLICATIONS (PPA’S) ).

Before you convert an idea into an invention check stores, catalogs, web sites, etc. to see if your idea is "out there"; You can do this yourself FREE, and should do it before you go too far and spend any money. Sometimes a trip to your local store can enlighten you to either proceed or to invent something else. You may also want to run your brainchild by a trusted friend or a family member for a quick reality check. The path from Idea to Marketplace is a long and costly road and you want to be reasonably certain that your invention is worth doing. Your development costs may be trivial compared to what you can receive by licensing or by direct manufacture only IF you can make your product profitable and if you have a product for which there is a demand. Avoid scam marketers. Check out the FTC web for consumer information on invention marketing firms. 


Inventions are solutions to problems, needs, wishes, hopes, dreams and ideas. Once you have determined that your idea has merit, you can begin to evaluate various ways to make it operate in a manner that you envisioned. If practical, you may construct a simple prototype, although not necessary for patent purposes, but helpful to get a feel for what your invention would look like. Keep your thoughts and alternate design solutions, sketches and an on-going dialog of your development efforts in your Inventors Notebook. When you think you have a workable solution to your idea, you may want to do a preliminary patent search yourself at the Boston Public Library or at the Patent Office site . Alternately, a registered patent agent can perform a professional patent search for you and interpret the legal-eze and advise you as to patentability. When you have a sketch and a written description of your invention, you are ready to seek legal advice from a registered patent agent. If you only have the idea, then you have to do more thinking as to how to turn your idea into an invention.


If you believe that there is a market for your invention you may want to patent it otherwise invent something else. A patent is an exclusive property right to an invention granted by the Constitution of the US to authors and inventors under Article 1 Section 8 for promoting the progress of science and useful arts of their respective writings and discoveries. It gives an inventor the right to exclude others from making, using or selling an invention for a period of time (20 years from date of filing for utility/plant and 14 years for a design from date of issue). Three patent types: Utility, Design and Plant. Must be doable and workable. To be patentable an invention must be New 35USC 102 ie. never been done anywhere before; Unobvious 35USC 103 and Useful 35USC 101. Basically there are five (5) patentable statutory classes under 35USC101: 1. Process: methods of doing something 2. Machine: Devices for accomplishing a task 3. Manufacture "articles of manufacture" 4. Composition "of matter" 5. New Use: "for process, machine, manufacture or composition. To be patentable, your invention must fit into one of 5 statutory classes established by Congress. Classes can overlap: Manufacture can be Design or Utility. Always consult patent counsel for proper compliance. Not all ideas which are turned into handy "work savers" or other types of products, although are literally "inventions", are not necessarily patentable. Examples of non-patentable cases: ideas alone, laws of nature, illegal (great burgular tool), non working, perpetual motion machines, inoperable devices, Atomic bombs (cluster bombs Desert Storm). The inventor is encouraged to learn as much as possible from books about inventing; however, the field of patent law is a highly complex area and requires highly specialized knowledge. Numerous other laws and rules apply and are constantly changing; seek legal advice in patent matters to avoid problems and unnecessary expense. 
It is also pointed out that effective March 16, 2013, the US went to a first to file system as specified by the America Invent Act. 
What this means is that the first person to file a patent application could be awarded a patent, so speed in filing is important now
to prevent anyone else in the world from beating you to it.


Once you have your patent application filed (ie. patent pending), you can contact manufacturers and prospective licensees to cash in on your creative genius. If you have done your homework, you have already determined that a market exists for your patent pending invention. Sources of manufacturers can be found by reading the boxes and labels of similar products in stores, catalogs, web sites, phone books and from other resources available in your local library. Having the name of the manufacturer, you can look them up and write to them to determine their interest in your patent pending (or patented) invention. One useful resource is Thomas Register of American Manufacturers at also Standard & Poors and Dunn & Bradstreet Million $ Directory.

I hope that you have enjoyed this presentation and find this brief handout useful. If you have any questions about patent matters or if you need a patent search conducted, or a patent application filed or prosecuted before the USPTO, do not hesitate to contact me via email or call (978) 536-2864 for PATENT LAW.

"Don’t Just Sit There..INVENT!!"
Best Wishes for Inventing Success!
If you have an idea and don't know what to do next visit WHAT TO DO ABOUT MY IDEA
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