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.


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