Thursday, October 27, 2011

New Inventions and Ideas: Decision Time - Part 4 in our IP and Patents Series

This is the fourth in a planned 20-part series of articles on intellectual property protection.  We will focus on patents, but we will have some limited discussion on trademarks and copyrights as well.  We will also explore licensing and commercialization of products in later posts.

You have an idea, you’ve conducted a preliminary search on Google and the patent office (USPTO) website, and it appears your idea might be original.  You have a written record of the idea, and you’ve even discussed it with some experts under an NDA.  You know you have to move quickly, so you’re ready to call the attorney.

But, before you do, you might want to consider the following final things:

Maybe just keep it a secret . . .

What is the reason you are doing this?  Now, 99 times out of 100 the answer is obvious – to protect yourself against those who would steal your idea and protect your technological and market advantage. 

However, there are some rare times when you might not want to file a patent.  Rather, you might want to keep something a trade secret.  The idea here is simple: patents are disclosed to everyone.  The secret formula you have protected through the patent office will be published for all to see, and could conceivably tempt your competitors to find ways around your idea.  It would likely even give them clues as to how to go about their nefarious activities.

But, if you kept your idea a trade secret instead, your competitors may have no idea how you maintain your advantage.  Also keep in mind that patents have limited lifespans (long - 20 years - but limited, nonetheless).   At the end of the term, the protection the patent afforded goes away. 

A trade secret, however, could be protected for as long as those who know about it keep their mouths shut.

And, before you dismiss the idea, consider that the formula for Coca Cola is a trade secret – and has been kept for over 125 years. 

Like I said, 99 times out of 100, it’s best to get the patent, but that doesn’t mean one shouldn’t consider the trade secret route.

Is there a product here?

Let’s say you received a patent for a method of growing fingernails on apples.  It may be innovative, and no one may have done it before, but is there a market for such a product?

If there is no market that you can see, perhaps there might be one in the future.   You need to think to yourself, how far in the future are you thinking about?  Remember, the life of a patent is 20 years.
Or, maybe you want the patent for other reasons – a feeling of accomplishment, for example, or to improve the perceived value of a company.  Then, it might be worth it to you to spend the time and money to acquire the patent.

How much?

If a patent is going to cost you $10,000 or $50,000 or more, you need to consider whether it is worth the expense.  Does the issuance of a patent provide more in its return to you than it will likely cost?  Will it mean enough of a market share to make it worth your while?  Or will it produce enough in gaining the confidence of potential customers to drive them to a purchase decision?

Once these considerations are dealt with, and the decision is made to apply for a patent, it’s time to scope out patent attorneys.

In part 5, we will begin to discuss the specifics of the patent process.

Thursday, October 20, 2011

New Inventions and Ideas: Notebooks, NDAs and Obama - Part 3 in our IP and Patents Series

This is the third in a planned 20-part series of articles on intellectual property protection.  We will focus on patents, but we will have some limited discussion on trademarks and copyrights as well.  We will also explore licensing and commercialization of products in later posts.

You have an idea, you’ve conducted a preliminary search on Google and the patent office (USPTO) website, and it appears your idea might be original, indeed!   Congratulations!

There are a few more things to consider before deciding it’s time to call a lawyer and start the patent process.  You should move quickly, however – and you will understand why after you’ve read this post:

Is it yours?

Do you really own the idea?  Many times, employers have policies that state that employee inventions are the property of the employer, not the employee who came up with the idea.

It's best to review your employer's policies, even if you invented the thing on your own time, in your own garage, and even though the invention may have nothing to do with your employer's field of operations. 

If your employer has a policy regarding ownership of inventions while you are employed there, and you feel that you should have ownership of this idea despite the policy, you might want to review your situation with a competent attorney before proceeding.

Did you have any help?

Are there others who might have contributed to the idea? If so, they may need to be listed on any patent and you will need to get their cooperation.

If there are questions of ownership, contact a competent patent attorney. And, when you speak with the attorney, be open, honest and tell them everything so you can get some good advice. Then do yourself a favor, and follow the advice the attorney gives.

Written record

Engineers are supposedly taught early on that they need to keep notebooks.  These notebooks are records of their efforts.   They are meant to record, in sequential time, the engineer’s ideas, inventions, experiments, and possibly their musings and other data. 

The notebooks should be bound so pages cannot be added, and pages should never be removed.  Whatever is written should be in ink and not erased.  Every page should be numbered and have the date and time recorded and any record of any invention should be signed and witnessed.

Having said that, I know of only a few engineers who actually do this.  That is sad, because properly keeping a notebook can be extremely helpful in a number of ways -- from simply staying organized to defending legal challenges to patents that bear the engineer's name. 

So, when you have an idea, write it down in your engineer’s notebook.  If you don’t have one, consider starting one.  At any rate, write the idea down, in as much detail as possible, and have someone witness and date it.  In addiiton, save receipts from purchases of things you bought to test out the idea. 

Now, proving that you invented something on a certain date has recently lost some of its power (as you will see later in this posting) but it can still provide multiple benefits.

A quick discussion about NDAs

As we mentioned in the previous post, there are actually some good reasons why you may not want to tell anyone about the idea, but to some degree, that’s just impractical.  This is why the lawyers have given us the non-disclosure agreement (NDA).

A NDA is an agreement between two parties: the disclosing party (i.e., the guy with the idea) and the recipient (i.e., the guy who’s hearing about the idea).  The NDA usually binds one or both parties from revealing the idea to anyone and can also be used to ensure that the recipient of any confidential information can only use the information for certain purposes. 

For example, let’s say you invented a better battery and you wanted to take your idea to Duracell to see if they wanted to give you a ton of money for it.  You might want to sign a NDA ahead of time with Duracell, making sure that the agreement stated that Duracell (the recipient of the information) could use the idea only to evaluate its business potential and could not use it to compete with you in any way.

You can find a lot of information about NDAs online, but when you reach the point where you will be discussing the idea with a company, it is always smart to hire a qualified attorney to review and/or provide an NDA ahead of time so you can be sure you are protected.  And you should do this whether you have a patent flied or not.

Thank you, Congress and President Obama

In September 2011, Congress passed, and President Obama signed, a patent reform act which, among other things, changed the procedure from “first to invent” to “first to file.”[1]   

What this means is, you may have an invention, but if someone beats you to the patent office, you are out of luck, even though you may have had the idea before the other person.

This was meant to help streamline the patent process (which has a lot of issues, as you may see in future postings), but many complain that the "first to file" law might harm small businesses and individuals who lack the wherewithal to quickly get patents on file and, therefore, run the risk of being beaten to the punch by corporations with more resources.

So, once you’ve decided to secure a patent, it behooves you to move quickly.

In part 4, we will discuss the things to consider before moving forward with the patent process.


Thursday, October 13, 2011

New Inventions and Ideas: Ask; Don't Tell - Part 2 in our IP and Patents Series

This is the second in a series of articles on intellectual property protection.  We will focus on patents, but we will have some limited discussion on trademarks and copyrights as well.  We will also explore licensing and commercialization of products in later posts.

OK – so you’ve developed a better mousetrap.  You have an idea – and it’s a great idea – but, speaking of ideas, you really have no idea what to do next.

Actually there are several things you will want to do.  Here are three of them – we’ll add some more in future posts:

Is it ready?

You don't have to have the idea in the form of a product yet, but it needs to be fleshed out enough so you can describe it suffuciently so that someone who is knowledgable in the area can make and use it.

Do a search (i.e., ask)

Conducting a search on your idea is probably the best, first step to seeing where you stand.  Sometimes, a search will reveal that someone has already thought of your idea and, thereby, save you a ton of time and money.  Try Google and, if you don’t find anything, try some keywords at the US Patent and Trademark Office (USPTO) website (  If there are other appropriate places you know of to search (e.g., industry websites, magazines, etc.), search there as well.

If you don’t find someone already working with your idea in your initial search, then you can feel free to continue.  However, even if your search turns up nothing, you will still need to hire a professional to conduct a more thorough search down the road, when you are ready to prepare a patent application.

If you do find that there is someone else that has patented your idea, don’t despair too much.  Many times, people come up an idea, but lack the passion, guts or commitment to see it through to a product.  Perhaps you can make a deal with that person to license and commercialize the concept.  We will discuss this in later installments of this series.

Keep your mouth shut (i.e., don’t tell)

There are actually a couple reasons why you may not want to tell anyone.  In September 2011, President Obama signed a patent reform bill into law.[i]   One of the things this law does is changes the grant of a patent from “first to invent” to “first to file.”  That is, you could invent something first, but the first person to file the idea with the patent office will get the patent protection.   

There is another reason as well.  If someone hears of your invention and describes it in a publication, you have a window of opportunity to file, and that window will begin to close with the date of publication.  The US Patent and Trademark Office generally will not allow a patent on an invention that has been “described in a printed publication . . . more than one year prior to the application for patent in the United States.”[ii]

So, it’s probably best to not tell anyone about your idea, if you can help it – at least until you are ready to file to protect your idea.  If you do decide to approach a company or someone with a potential interest in your idea, consider first entering into a non-disclosure agreement (NDA).  We will briefly discuss NDAs in a future installment, but in the meantime you can find out a lot about this by Googling it.

In part 3, we will discuss some additional, initial steps in protecting your idea.


Thursday, October 6, 2011

New Inventions and Ideas: Available Protection - Part 1 in our IP and Patents Series

This is the first in a planned series of articles on intellectual property protection and commercialization. We will focus on patents, but we will have some limited discussion on trademarks and copyrights as well. We will also explore licensing and commercialization of products in later posts.

You’ve created something new. Maybe it will save the world, or maybe it will just entertain people for a couple hours. But, it’s original and, therefore, worth something . . . at least, it’s worth something to you.

Congratulations! In many respects, our society is built on innovation.

The next thing you might want to do is contemplate whether to guard your work from someone who might want to steal, copy or otherwise use it and profit from it without your consent. You have some form of intellectual property (IP) and it probably needs to be protected.

That means you may need to make some decisions and take some action.

To know where to start, it’s best that we first understand some basics about IP types and how it is protected.

In the US, there are three kinds of protection available:

1. Patents – a patent protects the inventor from others who might make, use, offer for sale, or sell the invention.[i]   Patents have kept others from duplicating the Toyota Prius hybrid car, the Sony Blu-Ray high definition technology and balloon-expandable heart stents invented by Johnson & Johnson (although all three of these examples were challenged in some way in court).

2. Trademarks – a trademark protects a word, phrase, symbol or design that is used to distinguish one source from another. For example, trademarks keep Pepsi from naming its product Coke (and vice versa), they prevent Burger King from naming its hamburger the “Big Mac” (in case it ever wanted to), and they prevent some guy who builds custom cars in his garage from naming his enterprise “Ford Motor Company”. Trademarks identify and distinguish the source of the goods of one party from those of others.

Patents and trademarks are processed at the US Patent and Trademark Office. There is a ton of information at their website:

3. Copyrights – a copyright protects original works by one author from being copied by another. These include “literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture.”[ii]

Copyrights in books prevent outright plagiarism, as well as photocopying the work and using it without the permission of the copyright holder. This also applies to other forms of expression – not just the written word. As an example, the Happy Birthday song is copyrighted. Playing or singing the song in a public performance (private, not-for-profit performances are OK) can mean hefty fines – even the Girl Scouts were warned about paying a fee if campers sang it.[iii]

Copyrights are processed at the US Copyright Office. Its website can be found at

In part 2, we will discuss the initial steps in protecting your idea.

[i] At this link, you can find the following explanation: “The right conferred by the patent grant is, in the language of the statute and of the grant itself, "the right to exclude others from making, using, offering for sale, or selling" the invention in the United States or "importing" the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO.”