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The Lone Inventor: Tutorials

[ Tutorials in progress | Information | Tutorials ]

Reducing to Practice
Tutorial published by: TheLoneInventor, on 2005-01-10
This will help you reduce your invention to practice. This is the single most important step in creating your invention.

497 reads |

Fast Navigation
1 - You Must Reduce Your Invention to Practice
2 - What is Reduction to Practice?
3 - Exceptions to the Rule
4 - You must show diligence in your reduction to practice
5 - How do I show due dilligence?
6 - Requirements to establish actual reduction to practice

1 You Must Reduce Your Invention to Practice

Reducing you invention to practice is the single most important thing that you can do to protect your right to it. The faster the better, because we also want to show due dilligence in the pursuit of the invention.

You must act now!

The longer you make your innovation wait to be reduced to practice, the higher the odds that you will never profit from it. The more time that elapses allows for competitors to get ahead of you. If the innovation is good enough, someone will be working on it. If not today, tommarow!

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2 What is Reduction to Practice?

Very simply put, it's making your idea work. Bringing your innovation from the realm of an idea into the realm of an invention. The most important step in invention.

You've got to make it work

A famous quote from Edison goes something like this, it doesn't just work to please you, you have to make the #$@% thing work. That is reduction to practice. A completed and working prototype of your design, even if it doesn;t work exactly as you had hoped is reduction to practice. Not your preferred embodiment which you hoped for mind you, just the one you produced, but it's something. Back to the drawing board and reduce your preffered embodiment that yields your preffered results to practice and you ahve done it.

You may wish to use prototypes, engineers, drafters and other tradesmen at this stage and if this is an economically viable option for you it would probably be a good idea. If however you have more time than money, become a prototyper, engineer, and draftsmen. You don't have to be the best around, it just has to work!

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3 Exceptions to the Rule

You can reduce your invention to practive constructively by patenting it

Yes you can patent your invention right away, and this is comsidered to be contructive reduction to practice.

Complete functional plans, which are what is required for a patent are sufficient to reduce the device to practice. Two points of consideration here though. One, the USPTO is unlikely to give you a patent for something that isn't useful, in other words something that doesn't work, so you had better make sure your drawings work. The USPTO is very good at deciding if a particular set of drawings will funtion properly, or at all for that matter. Two, potential licencies may want to see it work. They may not be able to understand your notebook, or your patent. For those people, nothing short of a functional prototype will do.

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4 You must show diligence in your reduction to practice

You must not dalley!

In court every day counts for or against your case. Once the invention is concieved you must do everything in your power to reduce it to practice as soon as possible.

You must be diligent

If you and another inventor go to a hearing to show your respective claims to rights over an intellectual property, it is diligence that will win out ever time. If you were not the first to concieve of the invention, and the other inventor has dates of conception that precede your own, you still may win if you can show that since your date of conception you have shown more diligence in reducing the invention to practice than the other inventor has, even if it has not been fully reduced to practice by either of you.

If you came up with it first, but didn't do anything about it, another inventor with the same invention a year later will not have to do much to convince the court that he should be the owner of that invention, because of dilligence on that inventor's part.

Even if another inventor reduces your invention to practice first, but you have the earlier date of conception, and have been diligent in reduction to practice, the courts will find in your favor.

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5 How do I show due dilligence?

Although easier said than done, simply working tirelessly toward the completion of your invention is more than enough to prove dilligence.

What's the catch?

You don't know if another inventor around the workd, or accross the street is showing more dilligence then you! You are fighting in a war against time, against other inventions and thier inventors, or nothing at all. You can't relly tell for sure, but if you want to be protected in court, some tireless effort everyday goes a long way.

I have even seen people advise that you should write down your doctors appointments, vacations etc. in your inventor's notebook as an explanation for not advancing your invention toward a reduction to practice. I'm sure many of us would find that usefull. It holds you accountable for the time you spend or don't spend on it, and many inventors need a little extra puch everyday in the right direction. Besides, ff the case is very close, and you and another inventor are neck and neck, surely a complete description of what exaclty kept you away from working on it could be almost as helpfull as a list of improvements, part purchases etc.

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6 Requirements to establish actual reduction to practice

Let's get is stright from the USPTO

What the USPTO says about actual reduction to practice.

"In an interference proceeding, a party seeking to establish an actual reduction to practice must satisfy a two-prong test: (1) the party constructed an embodiment or performed a process that met every element of the interference count, and (2) the embodiment or process operated for its intended purpose." Eaton v. Evans, 204 F.3d 1094, 1097, 53 USPQ2d 1696, 1698 (Fed. Cir. 2000).

The same evidence sufficient for a constructive reduction to practice may be insufficient to establish an actual reduction to practice, which requires a showing of the invention in a physical or tangible form that shows every element of the count. Wetmore v. Quick, 536 F.2d 937, 942, 190 USPQ 223, 227 (CCPA 1976). For an actual reduction to practice, the invention must have been sufficiently tested to demonstrate that it will work for its intended purpose, but it need not be in a commercially satisfactory stage of development. If a device is so simple, and its purpose and efficacy so obvious, construction alone is sufficient to demonstrate workability. King Instrument Corp. v. Otari Corp., 767 F.2d 853, 860, 226 USPQ 402, 407 (Fed. Cir. 1985).

You can find out more at the USPTO here: USPTO site reffering to reduction to practice

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