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WHEN
YOU HAVE AN IDEA; or "inventive concept", write down a complete description
of it, and draw as many sketches as possible to fully describe your invention. Obtain
signatures of two witnesses (unrelated to you). It could be notarized. Another good option is to file a Provisional patent
application, but only if the description is complete enough to enable someone to make or
use the invention. Keep records of any development work or improvements on the invention,
and have the improvements witnessed. The purpose of this documentation is to establish
proof of your inventorship as of a certain date. However, it does not grant ownership of
the invention, which is only provided by a patent, and it does not guarantee that you can
obtain a patent. Mailing a certified letter to yourself is worthless. Thus, proceed
expeditiously to the following steps.
DETERMINE MARKET POTENTIAL; Consult potential users and sellers of
the product, but do not test market it until you have applied for a patent. Many sellers
of products and services seem to ignore the basics:
·
What are consumers looking
for?
·
Does the product meet their
needs?
·
Is the price reasonable in
light of needs it meets for a large number of people or a select few?
OBTAIN
NON-DISCLOSURE AGREEMENTS from all parties to whom you disclose the invention.
APPLY
FOR INVENTION OWNERSHIP. If it has good potential, you may wish to apply for ownership
of the invention via a Provisional, Utility, or Design patent application. You would now
benefit from a patent search.
ORDER
A PATENT SEARCH. This is a search for prior patents and patent application
publications related to your invention
(usually limited to U.S. patents for practical reasons). The results of this search
suggest whether you are likely to obtain a patent, depending on how similar prior
inventions are to yours. You can do your own keyword search for both issued
and published applications at the USPTO
website www.uspto.gov. You can also search
issued U.S. patents at www.google.com/patents.
Or, you can
subscribe to a search engine service such as www.micropat.com
or Patent Cafe's patent search service at patentsearch.patentcafe.com.
YOU
CAN OBTAIN A PATENT if you invent or discover any new and useful process, machine,
product, or material, or a new and useful improvement to any of these, and your
invention is novel and non-obvious (as defined by patent law), compared to prior similar
inventions and conventional knowledge.
YOU
CANNOT OBTAIN A PATENT if:
·
The invention was known
before your conception of it, in any country, whether patented or not.
·
The invention was
publicized or patented anywhere in the world more than one year prior to your patent
application.
·
In the US, the product was
used in public, sold, or offered for sale more than one year prior to your patent
application.
·
You cannot obtain foreign
patents if the invention was publicly disclosed before your application for a patent.
Thus, you should apply for a U.S. patent (or at least a provisional patent) before any
public disclosure of your invention.
Do not publicly disclose
your invention until you have filed a patent application, if you want to preserve your
right to obtain foreign patents. See PARIS CONVENTION, below.
START MARKETING
efforts as soon as your patent application is filed. Some options include:
·
Assign (sell) the patent
·
Exclusive license (rent the
rights to one party)
·
Non-exclusive license (rent
to multiple parties)
·
Manufacture the product
yourself
You can find manufacturers by going to most
libraries and using the "Thomas Register". It lists manufacturers by type of
product, with their address, phone, and fax numbers. Do not send a disclosure of your
invention to a manufacturer until you have asked them if they will accept it. They usually
require you to sign a form stating that they owe you nothing for the invention unless you
obtain a patent. This form should also state that they will not disclose the invention to
others without your permission. If not, you can try to have them sign a Non-Disclosure
agreement of your own. It is best to wait until you file a patent application before
disclosing your invention to manufacturers.
Some people believe that marketing experts
are adept at explaining successes and failures but incapable of predicting either. Even
the staunchest defenders of market evaluation are unlikely to claim that it is a science.
Thus, inventors often have to make expensive choices in the face of great uncertainty.
Useful information is available at www.patentcafe.com
for making decisions on your intellectual property.
Specific strategies for controlling patent costs are discussed below, but first we should
compare patents with other options. For example, trademarks are valuable for protecting
goodwill after a product is marketed but they are not useful in preventing others from
copying products except to the extent the commercial source of the product is thereby
misrepresented. Trademarks and related protection aside, trade secrets and copyrights
should also be considered.
Rights in trade secrets protect commercially important
information from being used in breach of confidence and from being obtained, for example,
by bribing another's employees. However, trade secret law is not effective against
another's obtaining the information by reverse engineering (copying a product found in the
marketplace) or independent discovery.
For most inventions, copyright offers little potential because most
inventions fall outside the scope of its subject matter. Copyrights are nevertheless
valuable for software. Unlike trade secrets, copyrights can be used to stop others from
copying products acquired in the market. Still, they suffer serious limitations. First,
copyrights cannot stop others from selling very similar works that are independently
created. (However, the more widely a work is available, the more difficult it is for later
sellers to establish independent origin.) A more serious limitation is that, while
copyrights can be used to prevent others from copying or closely imitating software, they
cannot be used to prevent competitors from writing a different program to execute the same
functions or get the same result. Finally, copyrights are of little value in preventing
other from copying and using data no matter how
expensive it may have been to collect.
Utility patents. (Utility patents are what most people intend when
they refer to patents. Other possibilities such as design and plant patents are not
considered.) Patents are better than copyrights in most ways. Although of no use for
protecting data, patents can protect a much wider range of inventions and can be used to
prevent sale of works independently invented. Nevertheless, for inventions such as
industrial processes, patents may be difficult to impossible to enforce. For example, if
others can learn to practice an invention from reading a patent, but the patentee cannot
determine that the invention is being used, the patent will not be worth much. In such
circumstances, trade secrets may be preferred.
Costs:
Among those types of protection, trade secret rights also cost virtually nothing to
obtain. However, maintenance is a different story. Maintenance may require special
personnel; employee training; restricted access to plant, equipment and documents; the
need to get agreements from and to educate people with unavoidable access; and the need to
monitor disclosures through publications, conferences and trade shows. The costs of such
precautionary measures can be high. Also, university faculty whose reputations are tied to
publication in professional journals are apt to find anything that interferes, i.e.
secrecy, unacceptable.
Copyrights are least expensive. They arise
automatically upon creation of proper subject matter. Registration is necessary in the
U.S. only if one needs to bring suit; it is usually unnecessary elsewhere even for that
purpose. Yet, for all copyright owners, early registration confers important remedial
advantages in the U.S. The usual registration fee is $20.00, and the registration process
rarely warrants legal assistance.
Finally, patent protection costs thousands of
dollars in ever-increasing government fees alone. It is expensive to obtain, maintain and
enforce. For independent inventors, non-profit and and small business concerns, government
filing fee is $515 and the issue fee is $720. If the patent issues, maintenance fees are
due at 3.5 ($465), 7.5 ($1180) and 10.5 ($1955) years [January 2008 schedule]. Also,
most fees double for those who do not qualify as "small business concerns".
FOREIGN PATENTING broadens your market control, but is expensive.
You can preserve your right to file foreign patent applications for a period of time if
you do not publicly disclose, publish, or sell your invention before filing a U.S. patent.
Within 1 year after your U.S. application, you can then apply for international patents if
desired. Some countries do not allow the 1-year delay, and you must file in those
countries before any public disclosure.
INFORMATION DISCLOSURE STATEMENT (IDS) is a list of prior art
(prior technology related to your invention), with copies of each published item (patents,
articles, etc.). The IDS meets the legal requirement to disclose all known prior art to
the Patent Office which could affect the patentablility of your invention.
A
PATENT is one form of intellectual property granting ownership to an invention. It
must clearly describe and show the invention, and define the boundaries of ownership. It
gives you the right to exclude all others from making, using, and selling your invention
in a given country for a period of time. In other words, it gives you a legal monopoly.
You can assign (sell) or license (rent) this monopoly to others.
The term ``property'' refers to a bundle of
rights that permit, usually exclusively, the exploitation and control of some ``thing.''
All of these ``things'' have traditionally
been divided into two categories -- real and personal property. Personal property can be
further subdivided into tangible and intangible property; intellectual property is a form
of intangible personal property and a patent is a form of intellectual property.
Patents do not guarantee market success, but
they and other forms of intellectual property can easily be worth more than they cost.
Cost considerations are more important to some inventors than others. Employed inventors
usually need not be concerned; their inventions belong to their employers. Firms large
enough to hire professional inventors should have personnel and procedures to weigh
intellectual property options and select among alternatives. Inventors not so employed
need to do the same thing but often lack the capacity. This discussion is intended to help
bridge the gap.
Exclusive rights in innovative products may
be helpful for purposes such as serving as collateral for business loans or obtaining
royalty income. In most cases, the value of those
rights derives from their capacity to prevent others from free riding -- and it varies
widely depending on many factors.
·
On one hand, consider a
firm that faces no serious competition and makes a product in sufficient volume that
R&D costs account for less than 1% of its selling price. Such a firm could choose to
ignore potential intellectual property benefits, trademarks aside, without serious risk.
·
On the other hand, consider
a firm where R&D expense is a major part of its selling price. That firm would be
foolish to ignore intellectual property options; even if it has no present competitors, the product may attract
firms that could avoid the substantial R&D markup and otherwise make a much heftier
profit (or worse) than the innovating firm.
Small-volume firms must also appreciate that
large-volume competitors can often not only sell at lower prices but also receive higher
profits. In such circumstances, intellectual property rights can be the key to survival!
LAW: The
law of intellectual property provides certain rights for the exploitation of various forms
of intangible personal property, such as inventions, trade secrets and written works. All
of this property is the product of creative or intellectual activity -- hence, the
designation as intellectual property.
Intellectual property law, like other
property law, defines the circumstances under which persons or legal beings can be owners
of property and designates the duration of the ownership period. Like other property law,
it grants the owners certain rights which allow for the exploitation of what they own.
Unlike other property law, however, this right of exploitation is often non-exclusive.
That is to say, others are allowed to use the protected works, either through compulsory
licenses, doctrines such as ``fair use,'' or for limited purposes under the restraints
imposed by injunctive remedies.
The public, as well as many members of the
legal profession, does not perceive intellectual property rights as they do rights in
other forms of property. Thus, when intellectual property cases are argued in court,
owners must convince juries and judges that intellectual property, which the law regards
as protected, should be protected. This requires explanation and advocacy of the
underlying policy reasons by plaintiffs' counsel. In rebuttal, defense counsel will
advocate contrary policies that support the free use of intellectual property. Such a
debate simply does not arise in cases involving tangible property.
Under federal patent law, the owner of a
patent in a nonobvious, novel and useful invention possesses the right to exclude others
``from making, using, or selling the invention.'' There
is no protection for patents under state law.
A
PATENT CLAIM is a legal statement in a patent that concisely and precisely defines the
invention and the limits of your ownership. The value of a patent is largely determined by
the breadth of its claims.
PATENT
COOPERATION TREATY (PCT) is an agreement among most industrial nations. It provides a
procedure that preserves an inventors right to file in the member countries past the 1
year deadline of the Paris Convention. The procedure (a PCT Patent Application) must be
made within 1 year after filing in a member country (such as the USA) to obtain the
priority of the original filing date.
A
NOVELTY SEARCH is not required, but is advisable to avoid filing a clearly unallowable
patent application. It can also improve your patent application by teaching you of past
inventions in the field. The patent office performs a search in any case. However, you are
legally required to disclose to the Patent Office any information known to you which may
affect the patentability of your invention.
Searches are performed using U.S.
patent databases, or a search firm is hired. A report is provided to the inventor, along
with copies of the items found. Searches are not perfect, no matter what the cost, since
pending unpublished patents are confidential to the patent office, and because it is impractical to
search all publications, past and present, local and foreign. However, a reasonable U.S.
patent search is worthwhile. A searcher should send you copies of related patents found in
the search. Almost every search finds related patents, although they may not disclose your
invention exactly or prevent you from patenting it.
A
UTILITY PATENT is generally the strongest type of patent. It covers the mechanics,
function, and use of an invention.
A
DESIGN PATENT covers only the unique appearance or ornamental design of a product. It
can be strong if a particular appearance is unique and important in marketing the
invention. Some time periods are shorter for design patents than for utility patents.
A
PROVISIONAL PATENT APPLICATION is like a utility patent application without claims. It
never becomes a patent, but establishes a priority date of filing, which then allows you
to publicly disclose your invention without losing foreign rights (except in
non-Paris-Convention Countries). You must file a regular patent application, and any
Paris-Convention foreign patents, within a year. It is less expensive than a regular
patent application in the short run, and buys time.
THE
PARIS CONVENTION is an agreement signed by most, but not all, industrial countries,
which allows up to 1 year after filing a patent in one member country to file in any other
member country, despite public disclosure of the invention.
A
PATENT ATTORNEY is competent in patent law, can file patent applications for clients,
sue infringers if necessary, and provide other legal services.
A
PATENT AGENT is a patent application specialist who has passed an examination for
registration with the Patent Office (the same exam taken by patent attorneys), and can
file patent applications for clients. Patent attorneys and agents must establish
competence in physical science or engineering for admission to the examination. Patent agents cannot
provide litigation, licensing, copyright, or trademark services.
A
PATENT OFFICE ACTION is a letter from the patent office indicating their current
position on the allowability of a patent, and giving evidence and arguments supporting
this position.
PATENT
PROSECUTION is the negotiation between the patent applicant and the Patent Office to
obtain the maximum breadth of claims deserved. During prosecution, the patent is
"pending".
A
PENDING PATENT is a patent application that has been properly filed with the patent
office, but has not yet issued as a patent. "Pending" is an optimistic term,
since there is no guarantee that a patent will be allowed. However, competitors hesitate
to copy a product displaying this notice, since a patent may issue at any time, and halt
their production before recovery of tooling costs.
PRIOR
ART is any previous invention or technology which affects the patentability of the
invention. It is the duty of the Inventor and Agent to disclose all known prior art to the
patent office within 3 months after a patent is filed.
DON'T
MAIL TO YOURSELF a certified letter containing your invention description. This does
not establish legal evidence about your invention.
A
PATENT MUST NAME only the true inventor(s). One party cannot apply for a patent on an
invention learned from another party. The inventor's employer cannot be named as the
inventor. However, a non-inventor may own the patent, through purchase or employee
agreement. Such owner can be shown on the patent as the assignee if ownership is
established before the patent issues.
A
PATENT NORMALLY TAKES from 2 to 3 years from the filing date to allowance.
Enhancements to the invention, or complications in prosecution, may extend this time for
months or years. The first office action usually occurs in about 14 months, and establishes
the starting point for negotiations with the Patent Office on patent allowability and
breadth. Expedited examination can be requested for a fee.
A
PROTOTYPE OR MODEL is not essential to obtain a patent. However, it is
recommended that you build one if possible, in order to test feasibility. You will
probably think of improvements in your design as a result of building a prototype.
