Patent attorney Ash Najafi on innovation (with patenting tips)

Each month we interview a different leader in innovation. This month: Q&A with Ashkan “Ash” Najafi, a Florida-based lawyer and member of AbsolutelyNew’s external patent attorney referral network. Ash is an engineer-turned-lawyer, so he’s able to approach each patent with technical and legal insight. A member of the Florida and American Bar Associations, he’s worked at a Fortune 500 company and at one of America's top intellectual property law firms—so when it comes to patents and innovation, he’s got depth and breadth of experience. Here’s perspective from Ash:

Q: What’s the value of getting a patent vs. simply starting to make and sell an item without pursuing a patent?

Ash: It is important to obtain a filing date at the U.S. Patent and Trademark Office (USPTO) before publicly disclosing or offering to sell an invention because most foreign countries have an "absolute novelty" rule that precludes an inventor from patenting his/her invention if any public disclosure has occurred prior to obtaining the filing date. Also, some manufacturers may be more willing to work with an inventor if the invention has a filing date at the USPTO.

Q: So, should everyone pursue patenting their new product ideas?

Ash: Not necessarily. An inventor should seek advice from a patent practitioner to determine whether the invention has a reasonable chance of obtaining patent protection. Ideally, a patent practitioner should perform a patent search to help the inventor understand whether similar products have been patented.

Q: Why is the patenting process so difficult and time-consuming?

Ash: The patent process is regulated by Congress and the USPTO, and they set many rules that must be followed when seeking a patent. These rules are complicated and full of nuances that most non-lawyers may have difficulty understanding. For example, a patent application must disclose, among other things, the best mode of the invention along with how to enable a person of ordinary skill in the art of the invention to make and use the invention. In practical terms, this means a detailed written description and patent drawings of the invention are often required. This is a time-consuming step, and it’s only one of many that must be completed. Also, the USPTO has a large backlog of pending patent applications; some dating back to 2003 or earlier. So even after you complete and submit your patent application, it typically takes the USPTO at least 2-3 years to evaluate it.

Q: What’s the first thing you do when you start to review an idea for patentability?

Ash: I ask detailed questions about the invention so I can understand all of the novel and advantageous features of the invention. This is absolutely necessary in order to conduct a patent search and provide a recommended strategy for a client.

Q: Does every innovative thinker need a patent attorney to pursue a patent?

Ash: No. An inventor can pursue a patent on his or her own. However, I recommend you seek advice from a patent practitioner before spending a lot of time and money on the patent process.

Q: What’s the #1 piece of advice you have for an inventor who chooses to patent without an attorney?

Ash: Visit the USPTO website (at www.uspto.gov). It provides a lot of helpful information to independent inventors.

Q: What’s one thing you think every inventor should know about the USPTO or patenting process, that experience has taught you many don’t know?

Ash: Be patient. The patenting process is time consuming and difficult. Don't be discouraged if you do not receive a patent—not all patent applications mature into patents. Also, be prepared to spend several thousand dollars during the patenting process; some for legal fees and some for USPTO fees.

Q: What’s your favorite invention of all time, and why?

Ash: I cannot think of a favorite invention. But, I have a two-year-old daughter so I tend to remember patents that cover children's toys and safety devices.

Comments

[Rod Romeo]

Hello,I have a utility patent on a multifunction cooler. i have developed the product on a small scale.Seems like exposure is my biggest step forward.Local tradeshows,giveaways to beverage co's etc. To really get my idea out there. Who could I partner with to get to this next level? Plesase see my product www.wheeledcooler.webs.com. Best,Rod Romeo

[Mike]

I need to get a patent search done. A patent attorney friend of mine (who did a patent for me several years ago) said he has access to people who do searches in Washington DC. He said you could name your price (ie $200, $300, $400) for your search and of course as the price goes up, you would get a more comprehensive search.

Can you give me a web address of a phone number so I can have one of those people do a patent search for me.

[Ruston Haughey]

I have a Great Patent 08/11/09

www.patentgenius.com/paten/7571681.html

I em looking for Selling opportunies I em allso open to all possabilitys. please contact me.

[L. Albin]

I have submitted a drawing and a brief description of how my idea for a device could be used to a representative of a patent assistance corp. I was told I would have to pay $1279 for a packet. This would include a search and some other necessary things to get the ball rolling toward a prototype for trade shows.I do not have this much money, and when I told the rep. he lowered the price to $979. I need this device, but it is going to have to wait til Spring. Any suggestions?

[cherie negrete]

i was regected from absolutely not i mean new so what good should i say about them but keep an i out for my invention cause some will have faith in me. thanks for the insperation.

[Donnie]

I've got a friend who is 80 yrs old that invented something for dry cleaning in the 1960's and didn't get a patent and the copany he partner with stoled his idea screwed the guy for lots of money so get a packet

[Gilbert Baez]

Am sure many people like me have great Ideas and can't do anything about it because financial set backs. I have a patent pending and looking for some one to help me put it in the market. I would love to see baby's, dog's, joggers and law enforcement be safer at night time. I would love to Illuminate the whole world so that everyone can be safer at night time. If I can just have a ANGEL come and help me live a life of abundance and joy.

[darren]

Have a envention that I want to patent.its called the ladder stage who would I contact to get this on the market and into the stores Thanks

[Dan Olson]

dear Mr. Ash. If you have young kids at home , check out my patented invention. at www mykneerider.com. Tell me what you think.

[KELLY PARKVOLD]

My style of inventing is supreme. I'm not your average inventor who thinks up one idea and kind of "lucks" out with it.. I've recognized that skill within myself to seek better ways of doing things in my everyday life.. And over the course of time I've realized that the most attractive and cost-effective inventions are those that are extremely simple to design yet solve problems that nearly everyone has in their lives.. for example, an interior door or driving a vehicle... So with this kind of awareness I have for inventing, I find that its quite effortless to think of cheaper, safer, more effective, easier ways of doing things.. whatever really.. I've been in this line of thinking for about 2 years now and have around 70 some IDEAS, some really good, some not so good but the key is that I have developed a core belief in it that is allowing me to be very smart about inventing .. No need to get all technical with it, keep it simple and everyone is happy.. However, I have no one to help me take the next step and would love to partner with someone I can trust. I have a life ahead of me still and as I am exposed to more life and new experiences, my inventing becomes more and more evident. I just think about things on a daily basis and how to improve something that already exists.. naturally.. its easy for me but to patent and get it out in the market, I'm clueless.. Would love to make business with somebody..!

[KELLY PARKVOLD]

I would love to speak with someone trustworthy, such as maybe Ash himself.. E-mail me back or call me at 1-306-280-8665 to speak with me.. anytime! Please and thanks! I'm excited..!

[Carlton J. Heaton]

I have an invention that had a patent pending unfortunatly that has expired. I didn't have the money to go any further, prototyping, manufacturing etc. Can someone please give me some advice on what i can pursue to make my invention a reality.

[coach sale]

We must have the patience to do anything, For example we learning English, we muat Relax! Be patient and enjoy ourseves. Learning foreign languages should be fun.!

[Air Yeezy]

some aritcles are very good,you said the word about you wants.we should live in our right styles.many times we usually say that u like style,and Air Yeezy I think you will like,too.link my name now to know them.

[air yeezy]

The human who likes smiling, his life is certainly happy and romantic!