When faculty members at research institutions make discoveries, their next steps are clear: Disclose the innovation to the tech transfer office, where the idea will be reviewed before filing a patent application.
But outside of research institutions – for undergrad students and faculty at non-research colleges, engineers, physicians or the person on the street – the path from idea to patent may not seem so simple.
However, Lorain County Community College’s Office of Community Technology Transfer offers guidance and support– from conceptualization to commercialization – to inventors and entrepreneurs. We asked the office’s director, Russ Donda, to explain the typical steps to securing a patent and talk about common mistakes that inventors make along the way.
Q. What’s first step in taking an invention from idea to patent?
A. The first step is understanding how the prior art impinges your invention. Prior art refers to all relevant existing patents, patent applications and publications or public disclosures. Relevant, as used here, means the inventions described by the prior art are reasonably similar to your invention. As such, you might be infringing any such patent or they can serve to block the issuance of your planned patent.
Inventors often think they’re the only ones who have ever thought of their idea, but most of the innovations we see have already been conceived, and have patents issued or pending. The single biggest mistake that I see is that people don’t know how to research prior art, so they plow ahead with a patent application – which could cost $10,000 or more – and all the while, there was never a chance they would get a patent that provided sufficient protection from an actual product perspective.
Q. What makes an invention patentable?
A. For the U.S. Patent and Trademark Office to consider your invention patentable, it has to be three things: useful, novel and non-obvious. That last one is a major hurdle. If the patent examiner thinks that someone reasonably skilled in the art would have thought of your invention after looking at the prior art, then the invention is considered obvious and not patentable. Many patents fail to issue for reasons of obviousness.
Q. What hurdles might inventors face after receiving a patent?
A. The major issue in this regard is that many inventors don’t understand the competitive advantage a patent would—or would not—give them. Just because you have a patent doesn’t mean the resulting product will offer patent-protected, desirable features. There are many patents that, while not infringing one another, result in products that offer substantially similar benefits. Because such products are so similar, there’s no competitive advantage wrought from the respective patent.
We see “Inventor’s Syndrome” too often. This is when an inventor believes that, because he thought there was a need for his invention, everybody else would think so, too. Usually, though, that’s not the case. So, there has to be a substantive amount of market research to determine the real market needs. Inventors need to spend time talking to as many potential customers or users as possible. The patent application needs to be crafted with that knowledge while avoiding sounding the same as any prior art.
Q. How can the Office of Community Technology Transfer help?
A. We review innovations that are disclosed to us through our website, and if we believe it merits pursuing after conducting a patent search for prior art, we meet with the inventor to explain how we can help get to market and what our business relationship would involve. Once the inventor agrees to work with us, we promptly file and pay for a provisional patent application. Our Office (and GLIDE) establishes a vital structure for supporting the startup or for licensing the invention (a startup or licensing are the two forms commercialization can take). The ability to get structured help from seasoned entrepreneurs is priceless, yet there’s no charge for our services beyond our business relationship. This kind of community tech transfer work is not available anywhere else in the nation, as far as I know.