Conception Is Not Reality

One of the most interesting aspects of being a patent attorney is that I meet with a lot of brilliant people, the majority of whom have both some really great ideas and an unconventional way of looking at the world. This is as true of our individual inventor clients as it is of our corporate and government clients, and I think the ability to view a problem from a new angle is a fundamental and necessary characteristic of the type of people who conceive of new ideas and inventions. Conception however, is not by itself invention, at least not from the standpoint of patentability. To be patentable a conceived-of invention must also be reduced to practice. Conception is the mental part of the inventive process and occurs (in the words of the USPTO) when “a definite and permanent idea of the complete and operative invention is formed in the mind of the inventor.” Basically its when the inventor comes up with his or her idea. It can happen over time in a series of steps or in one “Eureka” moment (à la Dr. Emmit Brown’s vision of the flux capacitor after falling off of his toilet and hitting his head, or Archimedes stepping into his bath, depending on your preferred cultural reference point). Reduction to practice is the act of figuring out how to make the conceived-of idea into a reality. In many instances this means drawing and building prototypes, writing code or other R&D efforts to go from idea to the actual article or process. However, these steps are not strictly necessary and it is possible to mentally reduce an invention to practice and even to do so simultaneously with conception (as Dr. Brown did).

What’s the point? I sometimes sense some frustration on the part of inventors when I tell them that they’ve conceived of what looks like a promising idea but that they need to develop it further before they can seek patent protection. This happened just recently with an engineer whose biggest problem, it seems to me, is that he has more ideas than he can develop at any one time. I don’t want to discourage him from talking to me (or any patent attorney) at this point and, in fact, during the R&D process is an important time to be in contact with patent counsel. There are any number of ways to lose patent rights in the course of reducing an idea to practice and educating my clients on those risks is one of the most important things I do as a patent attorney. I can’t educate them if I don’t see or hear from them. I also can’t search the patent record to see what may have come before them, as we commonly do. This helps inform the R&D process by looking both at how others have solved the same problem and existing patent rights others may have already secured and which should be avoided in the course of developing the new idea. Sometimes a provisional patent application is appropriate, but not always. Every situation is somewhat unique and the only thing that is probably universally true is that good communication with your patent counsel now can avoid a lot of wasted effort and headaches later on.

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