Protect your work
Written by: Douglas Robinson
Date: Mon Jan 31 2011
Jonathan Toker's recent article, "An Athlete’s Guide to Inventing," has a lot of very useful information. I have been a practicing patent attorney for 25 years now, and have been asked questions that Jonathan gives the answers to many times. This type of advice from someone who has been there and done that is invaluable.
Having said that, this article is meant to be an addendum from an Intellectual Property point of view.
The Athlete’s Guide to Inventing article sets forth the following steps:
1. Find a problem.
2. Solve the problem! Invent something.
3. Make sure the solution isn’t worse than the problem.
4. Surround yourself with the right people.
5. Don’t worry about what some people say, and don’t sell out.
6. Make a working prototype
7. Get feedback
8. Protect your intellectual property (IP)
9. Identify your core market
10. Surround yourself with the right people and companies
11. Don’t give up your day job
12. Price your products fairly
13. Sell your product.
To the extent the steps are intended to tackled in chronological order, I have a major recommendation. Step 8 (Protect your intellectual property) should be moved to no later than the 4th step. There are a few reasons for this.
First, it is very important to file a patent application prior to making a public disclosure. A public disclosure can include, for example, an article, an offer for sale, a public presentation, a meeting with a manufacturer, etc. Such a disclosure had major consequences. In the United States it starts a clock running. From the date of that disclosure you have 1 year to file a patent application. After one year, your own prior disclosure would be grounds for invalidating a patent you may obtain which issued from an application filed more than one year after that date. The consequences in other countries are even more severe. Patent applications must be filed before a public disclosure. The public disclosure is thus an absolute bar for ever getting a patent.
While the costs for drafting and obtaining a patent application can run into thousands of dollars, you can protect your idea for only a few hundred dollars by filing a provisional patent application. Provisional applications are not examined on their merits by the U.S. Patent and Trademark Office. The provisional application must be converted within a year into a regular utility application. During that year you can make public disclosures and work on issues such as production feasibility, etc. without worrying about losing your potential patent rights.
Second, consider step 6 (Make a working prototype). Since this step is listed before step 8 it might imply to you that a working prototype is required before you can file a patent application. Except for perpetual motion machines, the U.S. Patent and Trademark Office does NOT require a working prototype. You do not have to prove your invention works. Your idea must be novel, non-obvious, and described in enough detail that one of ordinary skill in the art can practice the invention. You must also provide the best mode that you are aware of at the time of filing the patent application.
In many instances the fact that a patent application has been filed provides you with leverage with other companies. I once worked on a series of patent applications for a group of recent college graduates where they were able to sell their fledgling company to a major corporation based almost entirely on the potential value of their applications. None of the applications had issued as a patent at the time of the sale, and there was no guarantee that they ever would.
Third, there are unscrupulous people in the world that might take your idea and start making it on their own, leaving you with nothing. Filing a patent application before telling anyone about your idea can give you a way to obtain just compensation for such activities.
Finally, to the extent you follow step 4 before step 8, make sure you have other people and companies sign non-disclosure agreements (NDA’s). Overall, Mr. Toker’s article is very valuable. I hope the preceding response is helpful. If you have questions please send them to me here at Slowtwitch as I am the new IP Editor here.
Having said that, this article is meant to be an addendum from an Intellectual Property point of view.
The Athlete’s Guide to Inventing article sets forth the following steps:
1. Find a problem.
2. Solve the problem! Invent something.
3. Make sure the solution isn’t worse than the problem.
4. Surround yourself with the right people.
5. Don’t worry about what some people say, and don’t sell out.
6. Make a working prototype
7. Get feedback
8. Protect your intellectual property (IP)
9. Identify your core market
10. Surround yourself with the right people and companies
11. Don’t give up your day job
12. Price your products fairly
13. Sell your product.
To the extent the steps are intended to tackled in chronological order, I have a major recommendation. Step 8 (Protect your intellectual property) should be moved to no later than the 4th step. There are a few reasons for this.
First, it is very important to file a patent application prior to making a public disclosure. A public disclosure can include, for example, an article, an offer for sale, a public presentation, a meeting with a manufacturer, etc. Such a disclosure had major consequences. In the United States it starts a clock running. From the date of that disclosure you have 1 year to file a patent application. After one year, your own prior disclosure would be grounds for invalidating a patent you may obtain which issued from an application filed more than one year after that date. The consequences in other countries are even more severe. Patent applications must be filed before a public disclosure. The public disclosure is thus an absolute bar for ever getting a patent.
While the costs for drafting and obtaining a patent application can run into thousands of dollars, you can protect your idea for only a few hundred dollars by filing a provisional patent application. Provisional applications are not examined on their merits by the U.S. Patent and Trademark Office. The provisional application must be converted within a year into a regular utility application. During that year you can make public disclosures and work on issues such as production feasibility, etc. without worrying about losing your potential patent rights.
Second, consider step 6 (Make a working prototype). Since this step is listed before step 8 it might imply to you that a working prototype is required before you can file a patent application. Except for perpetual motion machines, the U.S. Patent and Trademark Office does NOT require a working prototype. You do not have to prove your invention works. Your idea must be novel, non-obvious, and described in enough detail that one of ordinary skill in the art can practice the invention. You must also provide the best mode that you are aware of at the time of filing the patent application.
In many instances the fact that a patent application has been filed provides you with leverage with other companies. I once worked on a series of patent applications for a group of recent college graduates where they were able to sell their fledgling company to a major corporation based almost entirely on the potential value of their applications. None of the applications had issued as a patent at the time of the sale, and there was no guarantee that they ever would.
Third, there are unscrupulous people in the world that might take your idea and start making it on their own, leaving you with nothing. Filing a patent application before telling anyone about your idea can give you a way to obtain just compensation for such activities.
Finally, to the extent you follow step 4 before step 8, make sure you have other people and companies sign non-disclosure agreements (NDA’s). Overall, Mr. Toker’s article is very valuable. I hope the preceding response is helpful. If you have questions please send them to me here at Slowtwitch as I am the new IP Editor here.
Publisher's note: Douglas Robinson is a triathlete, a Slowtwitcher, a patent attorney, and is or new IP editor. He'll be writing from time to time about the IP landscape as it pertains to the events in which you might compete, the equipment you might use, the products you might ingest.
. As an addendum to Toker's piece, here's a bit of advice on protecting inventions. "Pin It")
Articles related to this one
An Athlete's Guide to Inventing
Slowtwitch science editor and SaltStick founder Jonathan Toker offers this guide for all the would be inventors who've had that "A-ha!" moment and were left wondering, "Now what do I do?" 1.30.11
Slowtwitch science editor and SaltStick founder Jonathan Toker offers this guide for all the would be inventors who've had that "A-ha!" moment and were left wondering, "Now what do I do?" 1.30.11
Comments
How to File Your Provisional Patent Application
Reviewed by: Dave Korpi, Jan 31 2011 8:57PM
All good info.. I'll bet a bunch of readers might want to know how to file a provisional patent application! Or, if it is even something they might want to tackle.. Check out this blog.. http://www.filepatentapplications.com/blog/ you will dee the top 10 reasons to file a provisional patent application, PPA... Right in line with your list! Anyway, the PPA is really a "gift" from the USPTO for the little guy and those with time sensitive ideas they need to get started on claiming the early filing date on their inventive idea..
