How To Go About Getting An Insurance Patent
Part Four of a Series
Ask a New York City cabby with a sense of humor how to get to Carnegie Hall and hes likely to tell you “practice, practice, practice!” The same is true for patents. The process is straightforward, but getting a valuable insurance patent takes practice and maybe a little help.
The first step in getting a patent, of course, is to invent something. From the point of view of the U.S. Patent and Trademark Office (USPTO), an invention is made when the inventor(s) first describes both the invention and its “utility” (i.e., what its good for). There must be evidence of the date and contents of the description. A signed, dated and witnessed document is adequate evidence. The description must be complete enough so that another person skilled in the area can read it and make the invention work.
For insurance patents, a working model is unlikely to be required. The USPTO is only likely to demand a working model if “incredible utility” is alleged (e.g. cold fusion, perpetual motion, etc.)
Having made the invention, you ought to evaluate its market value and potential. If it passes your economic test, the next step is to prepare and file a patent application. The inventor can do this himself, but a patent application is required to follow a certain form and the language used has developed its own formal meaning. The experience of a patent agent or attorney can be very helpful in getting it right. You describe your invention to the agent/attorney, and they prepare a draft application for your review.
Patent agents and patent attorneys perform the same service in terms of helping clients get patents. They both have the same license to represent clients in front of the USPTO. Patent attorneys also have a license to represent clients in a court and can help, for example, in the enforcement of a patent if a lawsuit is required.
Before submitting a patent application, it is strongly recommended that the inventor search the “prior art” for similar inventions that have been made in the past. Prior art that teaches or suggests any aspect of the invention can cause some or all of the application to be rejected.
Only the first person to conceive of an invention (U.S.) or file an application (rest of the world) is entitled to a patent on it. If your invention has been publicly described by someone else or even yourself before your patent application is filed, then you are not entitled to a patent.
In the U.S., there is a one-year grace period for filing a patent application after it is publicly disclosed. In the rest of the world, there is no grace period.
A prior art search will help you and your patent agent determine what is new and what can be “claimed” in the patent application. A “claim” is a formal one-sentence description of what the invention is. Typically, there are many claims in a patent (sometimes 20 or more) each covering a different aspect of the invention. They are found in the Claims section at the end of the patent application.
An inventor who discovers a new and better way of underwriting, for example, might claim the method for underwriting itself, the types of insurance products that are enabled by the improved method of underwriting, the computer system that performs the underwriting calculations and even the database that is used to store the underwriting information.
The goal of the patent agent is to draft claims that are broad enough to cover all alternatives to the invention, diverse enough to capture all permutations of the invention and specific enough to withstand challenges to the patent that a competitor might bring.
Once the patent application is drafted, it is submitted with the appropriate fee to the USPTO for examination. If international coverage is desired, then a corresponding “PCT” application is also filed. PCT stands for the “patent cooperation treaty.”
A PCT application provides a relatively low-cost way to submit the same patent application to multiple countries. A patent application is required in each country in which you wish to protect your intellectual property.