Getting a Patent

The initial step of the legal portion is to conduct a professional patent search. The patent attorney that reviews the search can determine how much, if any, patent protection may be available and note the patentable aspects of the device that distinguish it from similar devices. You should use that information as part of your business viability assessment, weighing breadth of protection against the size of the market and analyzing barriers of entry in the particular market.

One alternative to undergoing a patent search, is preparing a provisional patent application that covers your invention and then testing it in the marketplace. Sometimes the best experts to tell you if you have a good idea are your competitors. However, this strategy will only work if your provisional patent application is competently prepared and covers what your would disclose in the marketplace.

I am not able to agree with the respondent who suggested filing a provisional patent application before doing a patentability search. Until you know what is in the "prior art," you can't effectively define what's new and nonobvious, and hence, what the patentable invention is. Although a provisional patent application doesn't need to have a formal set of "claims," it is required (by judge-made law) to include a "written description" of the invention. It's like trying to perform surgery without an x-ray, if you try to "describe" that invention without knowing the prior art.

Your question can be answered from another perspective as well. Whether or not an invention is "worth" getting a patent on is not the same as the question of whether the invention is patentable. There are lots and lots of patented inventions that have never made it in the marketplace. A patent is like a fence around a yard. If the yard is a beautiful garden, lots of folks would want to get in and would be willing to put a coin in a turnstile. But if the yard is not attractive in some way, the mere fact that there's a fence around it wouldn't mean that the owner could be assured of making money from owning it. Thus, I would agree that it can be a desirable strategy to file a provisional patent application (well prepared, with an understanding of how the invention is distinguishable from the prior art) and then test the market for up to a year, before a nonprovisional application (and any foreign counterparts) would be due.

I also disagree with the suggestion that you can get around a patent search by filing a provisional patent. The purpose of a provisional patent application is twofold: (1) test the marketplace for up to a year before filing a nonprovisional patent (for which you should get a patent search done, and note that the nonprovisional must be filed within one year of the provisional if you intend to keep the benefit of the filing date of the provisional; and (2) act as an emergency stopgap against the expiration of patent rights brought about by setting a statute of limitations in motion, such as disclosure or public use of the invention. That's it. Those are the good reasons to file a provisional patent application. Not getting a patent search done is not a good reason to file a provisional patent application.

Note that a provisional patent application is not examined, never matures into an issued patent, and expires one year after it is filed with the US Patent and Trademark Office.

So much for the patent lingo and the patent attorneys shooting each other in the foot as we respond to your question. Now let's discuss your question, which is actually more a marketing question than it is a legal question. I'll give you my thoughts on it, but understand that I'm a patent lawyer, not a marketing guru.

In your case, I might go ahead and file a provisional patent application; they are fairly quick to develop and generally cost a lot less in legal fees than do nonprovisionals. Then, once the provisional is filed, let the other surgeons in your hospital (or a similar-sized group of surgeons willing to test the thing) try out your device to see what they think. The provisional patent application negates the need for a nondisclosure agreement dealing with the disclosed device (protect any improvements you make with a solid nondisclosure/noncompete agreement that you get from everyone who will come in contact with your device -- that means the whole surgical team and perhaps the patient); your rights in the disclosed invention are protected as long as you file the nonprovisional within one year of your provisional's filing date. Give this trial run about 6-8 months to let your colleagues really get the feel of the device. If the surgeons testing the device like the thing, that's when you approach the patent attorney or agent who wrote your provisional application to convert it into a nonprovisional application with all the nonprovisional bells and whistles. Let the attorney/agent know that the provisional is in place, and the date it was filed (this is VERY important). Give the attorney/agent some lead time; DO NOT hit him/her with a device covered by a provisional application that will expire within the week!!!!!!! Disclose any improvements you've made to the device during the testing period; these must be added to the nonprovisional application (this is called the "best mode" requirement).

If your fellow surgeons don't like your device, you might think twice about going through with the nonprovisional application.

If I can be of further service as you develop your intellectual property rights, please feel free to get in touch. I attach a link to my firm's website, as well as a link to the US Patent & Trademark Office's website. The Patent Office's website has a plethora of information about patents and the patenting process.

Best regards.