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.
[i] http://www.foxbusiness.com/industries/2011/09/16/obama-signs-patent-reform-bill/
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