IP Issues and the Inventing Process
Inventors make a substantial amount of money, but it's essential for them to be aware of major intellectual property issues. These include:
First, we need to talk about the specifics.
Who is an Inventor?
To put it simply, an inventor is someone who devises an original creation and reduces it to practice. If an invention can be conceived without requiring any further experimentation, then conception and reduction to practice can be done simultaneously. There is also no need for a working example of the invention.
More than one person may be an inventor of an invention if each makes unobvious contributions to its conception or reduction to practice. A subsequent patent may be determined to be invalid if an inventor is fraudulently added or omitted.
Major Patent Issues
Several bars can occur with premature disclosure. These will affect patentability. In the U.S., if an invention is used or described in public, generally in writing but not always, a clock starts.
A patent or provisional patent application must be filed within one year of the premature disclosure or the inventor is barred from obtaining a patent. The inventor can also be barred from obtaining a patent in most countries outside the U.S. as soon as the invention is described or made visible in public.
"Used in public" can be used merely in an area where privacy was not reasonably expected. "Described in public" can mean that the invention was used before by as few as one person. A confidentiality or nondisclosure agreement can prevent a public disclosure from causing a clock to start, as well as an experimental disclosure to determine if the invention works.
This means an invention should be sufficiently disclosed to enable someone of ordinary skill in the art to make, use, or sell it without an excessive amount of experimentation. This is important in these two areas:
Determination of Relevant Prior Art
Relevant prior art, generally a printed description of something similar to your invention, are descriptions available to the public before the date you file an application. They must adequately disclose the invention.
All printed descriptions of what seem like your invention are not necessarily a problem. Patent attorneys or patent agents can assist you in evaluating whether or not the disclosure is adequate.
Coverage Available from a Provisional Application
A provisional patent application is a less expensive way of obtaining a disclosure date. This eliminates later published references from being considered as relevant prior art.
Provisional applications only have a life of 12 months. They can consist of little more than a one-page drawing or description of your invention. To have an opportunity to obtain patent rights, a provisional application must be replaced before then with an original patent application.
The protection against subsequently published references is only as good as the disclosure of the provisional. This means you are better off the closer the provisional application is to an original patent application. This sort of completion also may increase drafting fees of the provisional to almost the same rate as original ones.
Likelihood of Being First
An applicant is not entitled to a patent if the applicant is not the first person to file. This means that an applicant should perform a search for possible relevant references before an applicant pays more than $6,000 for a patent application. The rate could be possibly less for a provisional.
Inventors can search the database on The United States Patent and Trademark Office’s website where you can find any patent relevant to yours. After this, you can do a professional search in databases that includes European and Japanese publications and patents.
Costs for professional searches and subsequent analyses can range from $800 for a patentability search to over $3000 for a freedom to operate (FTO).
Some licensors would require an FTO search. These are less than the $30,000+ you might spend marketing and manufacturing your invention that may not be patentable, and may be infringing on active patents.
This analysis is an important investment. You should be cautious before rejecting it simply because you thought a reference described your invention precisely.
I know people who paid for a professional search. The searcher felt that there was still valuable patentable subject matter to be evaluated. Because they were sure that a reference described their invention, the inventors rejected the analysis. They were surprised to find out that two college students received a patent for their invention soon after.
When it comes to manufacturing, the issue lies in protecting the manufacturer. If you ask a manufacturer to make your invention and you have not filed an original application or had a professional search done, the risks could be substantial. Someone else may have already patented your invention. In that case, the patent owner will likely go after the manufacturer for patent infringement since they typically have more money.
To minimize that risk and increase your leverage in negotiating manufacturing costs, it's better to file an original patent application that is based on a professional search. An issued patent is better but that might take more than three years to receive after your application is filed. It's an important business decision and only one of the many you will be making.
The issue in marketing is protecting you. There is a huge risk in showing your invention to a marketer for literature or video placement and not having a provisional patent or original patent application on file. If you do not have any of these, you may lose some or all of your potential inventive rights.
If the marketer tells you there is no market for your creation, that is an instant red flag. This may leads to their marketing your invention that was made by someone else. When this happens, you have limited enforcement rights. It's likely you will lose your chance at obtaining U.S. and international patents because of a premature public disclosure.
For any questions about my services, feel free to reach out to me. I'm more than willing to answer any of your inquiries.