Step 3: Protect Your Invention (First Stage)
There are several stages to protecting an invention. Most inventors consider the ultimate protection to be a patent. Which is sort of true, but the exceptions to that statement are like holes in Swiss cheese. What you need to know right now is that patents can be very expensive ($10,000+ in legal and filing fees is typical for simple mechanical inventions); they take a long time to issue (3 years is common); they cannot be enforced until after they issue; the patent holder pays for enforcement (serious litigation can cost upwards of $1,000,000); and you might lose.
The design of your invention is likely to change several times between the idea stage and commercialized product. Patenting the final design, the one that will be made and sold, is more important than patenting an interim one. As you develop your invention you need to talk to people for evaluation, advice and services. If you wait until a patent issues to begin such discussions you could easily end up waiting 2-3 years. While you wait the window of opportunity for market success may slam shut. If you have a hot idea the time to move is NOW (there are cases where waiting might be wise, but those exceptions are rare). No method of protection is perfect. Not even a patent. With that in mind, you should move ahead as fast as you can while being careful to minimize the possibility of being ripped off.
The following four low-cost steps are highly recommended:
1. Keep an Inventor's Journal. Cost $5. Buy a lab book where the pages are numbered and bound together. Any bound book with blank numbered pages will do. Enter all of your ideas and research into it, include everything. Make drawings and charts, enter details about market research, include summaries of telephone conversations. Date every entry and do not edit. This journal will help you in the development process and may also help you prove that you were the first to create your invention. This can be important if you end up in a legal dispute at a later date. Understand that the notebook does not protect your invention; it only helps to establish when you thought of your invention and what details you thought about. Being the first to invent still carries some weight, BUT being the first to file carries far more weight because it is now the law in the USA, Europe and most of the rest of the world. You can also use the notes when filing a Provisional Patent Application, which is a the best way to establish priority.
2. Use Confidentiality Agreements. Cost is from free to several hundred dollars: A Confidentiality Agreement (also known as a NDA, Disclosure Agreement and Non-Disclosure Agreement) is the inventor's most basic tool for protecting an invention. The agreement is a contract between you and the person or company to whom you are showing your invention (the Reviewer). The contract typically says that:
- The Reviewer will keep the invention secret for a period of 2-5 years,
- The Reviewer does not get any rights to the invention and
- Reviewer will be penalized if it steals the invention.
Sounds pretty good, and it is. But there is an important exception. Generally Confidentiality Agreements EXCLUDE anything already known by the reviewer prior to the disclosure. That exclusion includes information developed by the company itself, information disclosed by other inventors, and information that can be found in the public domain. The public domain is a big place and includes anything ever written and disclosed to the public since the dawn of time. Information in the public domain includes worldwide patent records for both expired and current patents – this is the same hurdle you will need to jump to get a patent of your own. If your invention has already been disclosed to the public domain, then a typical Confidentiality Agreement will not protect you. The ins and outs of these agreements are discussed in the Appendix (see "More About Confidentiality Agreements". A Confidentiality Agreement is a contract. It is wise to consult with an experienced and professional legal advisor to develop an agreement that suits your specific situation.
3. Keep Critical Information Secret. This sounds blindingly obvious but it bears mentioning. As you develop your invention you need to talk to people to get their help. Sometimes the possibility or feasibility to get a Confidentiality Agreement is impossible. Sometimes the limitations to the agreement will leave you uneasy. The only way to address this concern is to not reveal the critical details of your invention. Reveal only what people need to know and nothing more. You can ask manufacturers for quotes on various parts without revealing what the parts are being used for. You can describe your invention to potential marketing partners as being similar to products already on the market… but better because it is faster, less expensive, safer, more fun etc. There is a lot you can say that will be found meaningful and inspiring without giving away the details of how your invention accomplishes those details.
4. File a Provisional Patent Application (PPA) with the USPTO. A provisional patent is the best way to establish a priority date. It is a full and complete description of your invention but does not include patent claims. The filing cost is just $75 for micro entities like most typical inventors, but there are many pitfalls in doing it yourself. In particular you must be very sure to describe your invention in as much detail as possible, in every possible variation. More is better. Although editing and formatting and clarification are allowed when turning the provisional into a "real" patent, NEW MATERIAL CANNOT BE ADDED. And remember you'll have just one year to turn it into a real patent or you'll lose your priority date.
Be mindful of this warning from the United States Patent and Trademark Office:
"Inventors are reminded that any public use or sale in the United States or publication of the invention anywhere in the world more than one year prior to the filing of a patent application on that invention will prohibit the granting of a U. S. patent on it. Foreign patent laws in this regard may be much more restrictive than U.S. laws."
Like all things legal, the terms "public" and "use" have shades of gray. Showing your invention to your spouse in your home does not count. Offering product for sale at a kiosk in a mall certainly does. In between these two extremes there is gray space. Is it okay to show it to some close friends in a restaurant? Maybe. Maybe not. My own personal attitude - for my own inventions - this is NOT legal advice and do not hold me liable if you do as I do and lose money/rights as a result - is that showing an invention to friends and acquaintances is okay at a restaurant table/booth but not okay in the waiting area. In other words, if you choose to show your patent to someone, make sure no one else is around.
As you develop your invention you will need to disclose it to potential partners and customers. But note that under today's laws public disclosure will prevent you from being able to file a patent. Filing a provisional patent preserves your right to file a non-provisional patent for one year. and enables you to legally claim "patent pending" status.
More About Provisional Patents
If you are moving forward aggressively you should consider filing a Provisional Patent. The filing fee is $75 for micro entities, but that's deceptive. A Provisional Patent is a lot of work and takes time and experience to do well. A Provisional Patent gives you the right to say "Patent Pending." It is a foundation for a real patent and establishes a filing date. A patent filing date carries weight not only in the US but also in Europe and Japan. The provisional patent comprises a detailed disclosure of your invention without formal claims (claims are the things that actually protect your invention). It should include citations of prior art (inventions that are similar to yours). Writing a provisional patent is a lot like writing a complete non-provisional patent. A professional advisor or a book like Patent It Yourself is strongly recommended. That said, you could do a respectable job by using prior art patents for similar inventions as templates. Remember, in the provisional patent you don't need to write claims but you should try to disclose EVERYTHING you can think of - you cannot add new material later on. The provisional patent establishes a filing date that is valid in the USA, Europe and many other countries in the world. BUT… it also starts a clock ticking. The provisional patent must be turned into a non-provisional (real) patent within one year of its filing date – otherwise priority (and possibly certain patent rights) is lost. To learn more about provision patents click here.
Warning from the USPTO: A provisional application will not mature into a granted patent without further submissions by the inventor. Some invention promotion firms misuse the provisional application process leaving the inventor with no patent.
Including fees for an attorney (or patent agent) and for filing, $6000-$10,000 is a typical cost to acquire a decent quality US Utility patent for a relatively simple mechanical device. $20,000+ is a typical cost for more complex patents. Design patents can be had for roughly $3000 to $5000. From filing date to issue date the process can easily take 2-3 years. But patents offer uncertain protection. You can spend your money, have a patent issued and when it really counts discover that either a) the patent doesn't cover the key features of your invention so other people are free to copy it and pay you nothing or b) that your patent should not have been issued in the first place – patents can be revoked!
Do not worry if you cannot afford to get a patent on your own. If you license your invention the licensee will often pay (or advance) the costs of acquiring a patent for your invention.
Pending patents (including provisional patents), Disclosure Documents and the Inventor's Journal (and other methods for establishing priority) do not give you the right to sue or otherwise stop a copycat. Only an issued patent or a contract (as in a Confidentiality Agreement or Licensing Agreement) gives you that right.
The cost and the risk of the lawsuit are yours (unless otherwise specified in a licensing agreement). The Inventor's Journal, prototypes, calendar and other records of the invention process can strengthen the foundation of a lawsuit if the patent is based on information contained within them.
Patents are great and wonderful things. But they have many limitations. A patent should not be pursued until you are fairly sure your invention will make more than enough money to cover the cost. Even then, there are reasons why you might decide to go forward without a patent
As you develop your invention the things that you might want to patent often change.
If you file for a patent on each permutation you could run out of money long before getting to market. Moreover, in the spirit of conservative investing, you should feel pretty sure your invention will make you more than enough money to cover the costs of a patent before you invest in one.
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