Protecting Your Invention

Updated February 2016

It is vital to note that this is meant to be a generally informative discussion of protecting your invention. It is designed to be background information only and is not specific advice (legal or any other type) regarding your particular invention or circumstances. In all cases, you should consult with legal or other applicable counsel of your choice rather than relying only on this article, especially before disclosing your invention to other people.

Introduction

Now that you invented something that you believe that other people will want, your concern probably is making sure that you maintain ownership of your invention. It is good that you are concerned; patent lawsuits are expensive and not always fair. A company may find it easier to steal your idea and fight the matter out in courts rather than develop the idea itself.

By far the best way to protect your invention is to obtain a patent covering it. A patent is a government granted monopoly which allows you, the inventor, to exclude anyone else from making, using or selling the invention claimed in the patent in the country that issued the patent. The government grants this monopoly to help encourage people like you to spend the time, money and effort to invent new things that help benefit others. Be aware that even though the government grants the patent, it is your responsibility, not the government's, to enforce the patent.

Although the government grants this monopoly to allow you to profit from your invention, it is important to know that when your patent expires, your invention will be in the public domain. That means that anyone else can make, use or sell your invention without needing your permission or paying you anything. The government requires patents to expire because otherwise one person can control an entire industry if that person was the first to conceive of a type of product, to the detriment of the consuming public and the free enterprise system (imagine if only one company was allowed to use the internal combustion engine in perpetuity).

In the United States, patents are valid from the date of issuance until 20 years from the date of filing the patent application. There are some countries which issues patents with terms of other than 20 years (such as Taiwan), but you can generally expect that patents will last for 10-25 years in most of the world.

There are two very important limitations to patents that you should always keep in mind. First, remember the definition of a patent: A patent is a government granted monopoly which allows you, the inventor, to exclude anyone else from making, using or selling the invention claimed in the patent IN THE COUNTRY THAT ISSUED THE PATENT. A completely valid, in force, United States patent is enforceable only in the United States. Anyone else is free to use your invention in any country in which you do not have a patent and sell your invention in any other country in which you do not have a patent.

The second important limitation to your patent is in the patent itself; your patent covers everything in the Claim section of your patent, but nothing more. The claims are the section of your patent where you claim that "I invented the following, which should be protected by a patent issued to me." Writing your claims is beyond the scope of this article, but because your patent's claims define the scope of the patent's protection, it is the most important part of your patent.

USA is Now First to File Like the Rest of the World

In the not too distant past, inventors could claim patent rights if they could prove they were the first to invent. This led to concepts like mailing a disclosure of your idea to yourself, keeping dated written records, and filing Disclosure Documents with the US Patent and Trademark Office. Those methods of protection were dicey even when first-to-invent was the law of the land. Now, with implementation of the America Invents Act, what matters is being the first to file. That brings more clarity to the system.

The good news is that filing a Provisional Patent Application (PPA) is relatively inexpensive and complicated. The bad news is that you need to turn the PPA into a more expensive and more complicated Non-Provisional patent within one year. That means you need to think about timing your filings and be diligent about moving your invention forward.

Filing a Patent Application Before Your Invention is Finished

If you are torn between wanting to have your patent application filed as soon as possible, and a need that you perceive to do additional work to be included in the patent application, consider three possibilities. First, you could file an application covering certain aspects of your invention, and follow that with subsequent patent application(s). Second, you could file an application and amend the claims later to encompass all aspects of your invention. Third, you could file a Provisional Patent Application (PPA), which is another version of the second option.

A PPA basically is a detailed description of your invention, which clearly and completely describes how to make and use your invention, along with the accompanying paperwork. The PPA will be retained by the PTO for one year, but will be discarded after that unless it is referenced in a standard patent application in that time period. The PPA itself will not be examined by the PTO and will not become a patent; that process is reserved for a standard patent application. The value of a PPA is that it allows you to provisionally have your patent application on file as of the date that you file the PPA, while allowing you up to one year to complete your standard patent application.

If you want to follow one of these paths, it is a necessity that you consult with a good and experienced patent attorney or agent beforehand. There are various rules and regulations involved that must be followed carefully or you might be barred from adding to your original application or filing a foreign patent application.

The One Year Rule: Domestic Version

One final protection for your idea is about as easy as possible. If your invention is publicly disclosed, it is in the public domain, as mentioned earlier, and anyone can make, use or sell your invention and you have no rights in your invention. This begs the question, what is public disclosure? Much has been written and litigated over that issue, and that area is gray, but there are some loose guidelines. Showing the invention to a few friends or family is not public disclosure. Nor is showing it to a potential licensee with a non-disclosure agreement in place. But displaying it at a trade show, or in a published article, even if they have only a very limited audience, is public disclosure. And selling or even offering it for sale is public disclosure. A rough, but not infallible rule of thumb, is that if anyone in the public can access your invention, its been publicly disclosed.

So what happens if your invention has been publicly disclosed? Are you automatically barred from every obtaining a patent? The answer is no. In the United States you will have up to one year after that public disclosure to file your patent application. But after that one year elapses, you will have no right to file a domestic patent application. You may, however, lose rights in countries outside of the United States.

Although this offers some protection, you should think of this only as a last ditch safety net, you should never make it part of your protection armor. For one thing, even if you have the right to file a domestic patent application up to one year after public disclosure, you may be barred from filing foreign patent applications. Additionally, someone could copy your invention, file a patent application on the same idea ahead of you and then you would be required to prove that the invention actually was yours. Even if you are successful, it could cost you much time, money and heartache.

The One Year Rule: International Version

Once you file a patent application in the United States, you have priority and you may take as long as one year to file a corresponding application in any country that is a party to the "Paris Convention", which is an international intellectual property treaty. This one year period exists even though those other countries issue patents according to "first to file" rather than "first to invent" rule of the United States (however, as noted above, this one year protection applies only if your invention was not publicly disclosed prior to filing your U.S. patent application). Most of the more important countries in the world are parties to the Paris Convention, but you should check because some important countries, such as Taiwan, are not members.

This one year priority is very useful because it gives you a chance to see if your invention might be profitable enough to warrant a foreign patent application. In general, prosecuting a patent to issuance in the United States is much cheaper than in foreign countries. The United States is also the world's most important market for many items, so it is definitely the best bargain among the world's countries.

The one year rule is very useful, but it comes with some important caveats. First, even though the priority lasts for one year, don't wait for 364 days before deciding to file a foreign application. Notify your lawyer at least two months before the expiration of the priority so that you application can be filed smoothly.

Second, once the priority expires, you have the same rights as if the priority never existed. You still must file your patent application before any other applicant and your invention still cannot be publicly known. Note that if your U.S. patent issues, it is publicly known and you are forever barred from filing the same application in a foreign country (except in the unlikely event that your U.S. patent issues within the one year priority period, in which case you still have until the end of the priority period to file your foreign application).

Third, and easiest to live with, is to file your foreign applications after you receive the foreign filing license that the PTO automatically sends to you about two months after filing your application in the U.S.

As stated above, you cannot enforce a patent in any country unless you have a patent in that country. But because prosecuting a patent in foreign countries is so expensive and difficult, at least one expert has recommended not filing unless you expect either revenues of at least $500,000 or royalties of $50,000 a year in that country. Alternatively, if you think that a particular foreign country is a likely place where knock-off versions of your invention might be made, you may want to consider patenting your invention there to help protect your markets.

Think long and hard about following the advice of companies that advocate aggressively filing foreign patents. For most US inventors, 75% or more of their invention's sales will take place in the USA. Foreign patents are not only expensive to file, they are expensive to maintain. Some countries require annual maintenance fees of $1000+ to paid annually beginning a few years after the patent issues.

Protection Without a Patent Application

The above discussion has hopefully impressed upon you that this whole topic is to be approached with a great deal of caution. Only if necessity truly dictates it should you proceed without a patent application being filed. Remember, without a patent application being filed, it is impossible to receive the patent that is due to you.

But potentially of exceptional importance is "How can I disclose my invention to someone else, such as a someone who might manufacture the product for me, or someone to whom I might license my invention, and have protection that they will not steal my invention?"

Confidentiality Agreements.can sometimes be better than issued patents. But the strict answer is that the best way to protect your invention is to file a patent application.

Why might you want to disclose your invention to someone else before you file your patent application? For one thing, until you've built a prototype and refined it to some extent you may not really know what can or should be patented. Patenting too early can lead to a lot of wasted money. Maybe because you are eager to do business with that party or you are concerned that they might lose interest if you must wait until you have your application filed. Some ways to protect yourself before you file your patent application are:

1. Have your lawyer furnish you with a good Confidentiality Agreement. This Agreement would require the party to whom you are making the disclosure to maintain the disclosed material in confidence and not claim as its own any of what you disclose. This sounds good in theory, but in the real world, many companies (especially larger companies) will not sign Confidentiality Agreements or will require you to sign their version of the Agreement (which will be designed to protect them rather than you).
2. Take liberties with the truth. Tell the party to whom you are making the disclosure that you have already filed a patent application. This may discourage them from thinking that they can steal your idea without a fight. United States patent applications are private until an application either issues as a patent or is abandoned, so the other party will not be able to know if your statement is accurate (after a patent application issues as a patent or is abandoned, the entire patent file becomes available to them). This tactic is not recommended and should not be used. It is lying. Furthermore, it is violation of United States law to claim patent pending status when it is not accurate. But if you are determined to disclose your invention before filing a patent application, it might have some value if you believe that you have no choice. However, you should always bear in mind that parties that you lie to may believe that they can themselves disclose it to others (after all, you do already have a patent application on file, don't you?). Additionally, they will eventually discover that you lied to them because all issued patents list the date of application.
3. If the other party asks to see your patent application, ask them why they want to see it. If the answer does not satisfy you that they are only trying to find a way around your patent, don't show it to them. In any event, do not include the "Claims" part of your patent application if you show them your patent application.

As you see, the options for protecting yourself before filing the patent application all lack an important element. Most people follow step 1 to a certain extent and hope that the Confidentiality Agreement that they sign and the good will of the party to whom they disclose the invention will offer enough protection. Again, by far the best protection is to file your patent application.

Reference

Hopefully this article has proved useful. However, it is not exhaustive. There are many books and references available to help inventors. Two in particular are recommended: (1) the booklets discussed in the article published by the US Patent and Trademark Office regarding patents and document disclosures and (2) the book Patent It Yourself, written by David Pressman (a patent attorney) and published by NOLO Press, 4th Edition, worth double its price.