Individual Intellectual Property

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IP Issues and the Inventing Process

In today's economy, inventors can make a substantial amount of money but are wise to be aware of certain intellectual property issues. The major issues to consider are:

  1. Premature Disclosure
  2. Adequate Disclosure
  3. Likelihood of being the first inventor
  4. Marketing
  5. Manufacturing

But first, what is a patentable invention and who is an inventor?

The patent system in the U.S. is designed to advance applied technology. In the U.S. an invention can be patented if the subject matter of the invention is a new and useful process, machine, manufacture or composition of matter or any new and useful improvement thereof. A process is a method of making or using a machine, manufacture, composition of matte, or material. Manufacture means a man-made article. Recent court decisions have included business methods under process and software under process or manufacture. Inventions not under the above categories are not considered entitled to a patent and the rights from having a patent. An invention is new if it is not known to the public. This is typically shown by a printed description that is sufficiently detailed to enable one of ordinary skill in the area to make, use and sell the invention. An invention is not obvious if the differences between the subject matter sought to be patented and the prior art (printed knowledge that is known or available to the public) are such that the subject matter as a whole would not have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. "Non-obviousness" and "obviousness" have been heavily litigated over the years and generally should not be determined by the inventor without confirmation by a registered patent attorney or patent agent.

An inventor is one who conceives an invention and reduces it to practice. If an invention can be conceived in sufficient detail that it will work without further experimentation then conception and reduction to practice is simultaneous and no working example of the invention is needed. More than one person may be an inventor of an invention if each makes unobvious contributions to conception or reduction to practice. A subsequent patent may be determined to be invalid if an inventor is fraudulently added or omitted.

 

Premature Disclosure

Several bars can occur with premature disclosure that will affect patentability. In the U.S., if the invention is used in public (even if hidden from eyesight), offered for sale (even if not fully described) or described in public (generally in writing but not always), a clock starts. A patent application or provisional patent application must be filed within one year of the premature disclosure or the inventor is barred from obtaining a patent. In addition, the inventor can 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 as few as one person. A confidentiality agreement, also called a non-disclosure agreement, can prevent a public disclosure from causing a clock to start. Also, disclosure to determine if the invention works, called experimental disclosure, does not cause a clock to start.

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Adequate Disclosure

Adequate disclosure is important in 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. Relevant prior art must adequately disclose the invention. Adequate disclosure means sufficient disclosure to enable one of ordinary skill in the art to make, use or sell your invention without an excessive amount of further experimentation. 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
    Provisional patent applications are less expensive ways of obtaining a disclosure date that eliminates from consideration later published references as relevant prior art. Provisional applications only have a life of 12 months. They must be replaced before then with an original patent application to have an opportunity to obtain patent rights. Provisional applications can consist of little more that a one page drawing or description of your invention. However, the protection against subsequently published references is only as good as the disclosure of the provisional. Thus, you are better off the closer the provisional application is to an original application. Such completeness also increases drafting fees of the provisional to that approaching those of original patent applications.

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Likelihood of Being First

An applicant is not entitled to a patent if the applicant is not the first person to invent. Thus, an applicant should perform a search for possible relevant references before an applicant pays up to more than $6000.00 for a patent application or possibly somewhat less for a provisional. Inventors can search the U.S. patent database on http://www.uspto.gov for free to see if they can find any relevant patents. Then inventors can have a professional search done in databases that usually includes European patents and Japanese publications and patents. A few relevant U.S. patents found by you sometimes can make a professional search even more productive. Costs for professional searches and subsequent analyses as to relevance to what is of interest to you can range from $300 to over $1000; a lot less that $6000 to learn from the patent examiner that you are not the first to have invented the invention.

The analysis is an important investment but you should be cautious before rejecting it out of hand because you thought a reference described you invention precisely. I have known some who paid money for a professional search. The searcher felt that there was still valuable patentable subject matter remaining. The inventors were sure that a reference described their invention and rejected the analysis. They later say two college students receive a patent for their invention.

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Marketing

The issue in marketing is protecting you. If you show your invention to a marketer for placement in their literature and you do not have a patent application on file, a provisional patent application on file or at the least, a non-disclosure agreement between you and the marketer, you are taking unnecessary risks of losing your potential inventive rights. If the marketer tells you that there is no market and later you see his publications offering your invention, likely made by someone else for the marketer, you have limited enforcement rights. You also likely have lost a chance to obtain a U.S. patent or patents in other countries because of a premature public disclosure.

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Manufacturing

The issue in manufacturing is 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 risk could be substantial that the invention may already be patented by someone else. In that case, the patent owner will more likely go after the manufacturer for patent infringement because the manufacturer typically has more money. To minimize that risk and increase your leverage in negotiating manufacturing costs, you are better off if you have filed an original patent application that is based on a professional search. As issued patent is better yet but that may take up to over 2 years to get after you r application is filed. It is a business decision, one of many you will be making.

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