Protect Your Idea
You should also read Intellectual Property Basics Protection for the Individual Inventor
First you have to decide what you mean by "protect your idea."
A manufacturing business with competitors and a significant size may need to manage intellectual property protection and security much differently than an individual entrepreneur. Since the business's needs will almost always require some special analysis and systems, these notes are geared more to the small inventor. Dave Brezina and his firm have helped good sized manufacturing businesses with intellectual property audits and management systems, so please call if this may fit your needs.
General protection is available depending on the subject of your idea and its current form.
Specific forms of protection depend on your goals and the limits imposed by the law based on subject matter, the common law and the Constitution
- As long as you are the only one who knows your idea, and you tell or show no one, you have absolute confidentiality.
- Confidentiality can be preserved by contract.
- This is only effective with someone who will sign a contract with you.
- Contractual rights give you the right to sue in court for a breach of contract
- A number of people think "NDA" is a magic term. Non-Disclosure Agreements are contracts like any other. Their terms vary and they can be negotiated between parties willing to negotiate. Be very careful to read and understand all the terms. Strictly speaking, a "non-compete" obligation is something more than "non-disclosure" or confidentiality. Non-compete obligations can have specific requirements from state to state.
- Proving the value of an undeveloped invention is very difficult
- Registered Patent Attorneys and Attorneys generally have automatic obligations of confidentiality once you become their client. Nonprofessionals, such as investors, consultants, invention brokers, toolmakers, designers do not have automatic confidentiality obligations. Be sure you clarify any professional relationship.
Start of "Protection" -- Inventorship and Authorship -- Patents and Copyrights
Inventors own their inventions and authors own their writings or artwork once each is sufficiently perfected.
- An invention that can be adequately described in writing and drawings is typically legally perfected for the inventor.
- If 'ready for patenting' the best protection is to apply for a patent application.
- Authors own copyrightable subject matter -- a right against copying only -- once a work is fixed in a tangible medium of expression.
- Copyright is in many ways more limited than patent, but it is much less expensive to obtain a registration. It is best to register within three months.
- There is a good chance you may do a simple copyight application yourself with forms from the Copyright Office You can organize the information you will need to register a copyright in a computer program by answering the questions in the Computer Program Copyright Application Checklist
- Utility patent applications are much more difficult to do completely. While there is no legal prohibition on filing your own patent application, your efforts are probably better spent on your business plan, research & development and marketing and have a patent attorney assist on the application. You can get a wealth of information on patents from the US Patent & Trademark Office
- Trademarks are different. You can have a common law trademark by putting the mark on a product and selling it in commerce.
- Registration, particularly Federal registration, strengthens your trademark rights, but although you may file an Intent to Use application, registration will not issue until the product is on the market.
Protection of Priority
To graphically see the way different patent applications and their priorities interrelate, you can view a patent application timeline. Types of patents are described in detail in Intellectual Property Basics Protection for the Individual Inventor
- Until a patent or copyright registration issues, you cannot enforce it.
- What early filing does is protect your priority -- especially significant for patent applications which may take years of prosecution.
- If your application is 'patent pending' then no one can beat you to the Patent Office because you are already there.
- There are exceptions to most every rule -- someone with a prior pending application has their own priority -- they already beat you to the Patent Office.
- In US Patent practice "first to invent" is only the rule for the few remaining pending cases that predate the America Invents Act.
- For these old applications, if you documented your invention and have two witnesses, you may be able to predate someone else's priority.
- Of course someone else could "swear behind" your priorty as well.
- Avoiding these uncertainties was a reason the America Invents Act was put into effect. The rule is now "first inventor to file."
- The US changed from the only significant "first to invent" country to "first inventor to file" when the America Invents Act was enacted.
- The "first inventor to file" rule applies to all applications filed on or after the effective date of September 16, 2011.
- If a different inventor filed first, they have priority, regardless of who originated the idea first
- If someone else published information about their invention before your filing date, then your application is invalid
- Your only "grace period" is if your own commercial or other publication activities make your invention known. Only then will you have one year to file your own application.
- But that "grace period" does not help you if it is someone else's unrelated activities -- you no longer have a "grace period" for someone else's publication or commercialization.
- Current US Patent law is governed by the America Invents Act after September 16, 2011.
- If you have concerns about foreign patents, then filing early is important.
- Treaties will give you a claim to priority in most countries, based on a US case -- but only if you follow through with an application in each country you want.
- Filing on a country by country basis can get exceedingly expensive. Some of the largest companies in the world do not file except in carefully selected countries.
- Because of interrelation with the world patent community, your US patent application will be kept secret for eighteen months, and then will be published, unless you fully give up all foreign rights.
- Eighteen month publication is another good reason to get your product in production and start making a profit!
We Have Not Discussed Searches
- In a sense, a search does not directly "protect your invention" it looks for others patents or trademarks to help form and opinion about whether what you think is yours is yours in the first place.
- In a very valuable sense, however, since most inventions are improvements, not revolutionary changes, the search can give you good guidance as to the boundaries of your invention -- how much is really yours, and how much is really old.
- What's in a search?
- Searches and opinions should be tailored to your needs, your familiarity with the industry and your experience with the uncertainties of opinions.
- Search reports are the raw 'data' the patents or trademarks that come closest to what you propose.
- The opinion inteprets the data. This is where the skill and experience of a practitioner are most useful -- in interpreting what the data means.
- Typically an opinion will conclude with recommendations or some alternatives for you. Ultimately, you will always be the one to decide "is it worth it?"
- If you have been accused of infringement, a different, expanded, search is needed. The stakes have changed. We are no longer looking for an efficiently budgeted opinion, now millions of dollars may be at risk, perhaps the survival of the company.
Can I do my own search?Certainly. There are 'free' resources available that will familiarize you with the process. You can search at the US Patent and Trademark Office for both Patents and Trademarks. You can also search in Europe
Protection of your idea against lossYour idea may be lost or stolen, or it may be lost becauase of delay.
- For general ideas on trade secret protection, you should read Trade Secrets in Intellectual Property Basics Protection for the Individual Inventor
- Keep general, common sense security in mind if you want to preserve secrecy.
- Loss of rights can occur because of publication or commercialization
- In the US if the subject is the kind of thing that may be patentable, and if you publicize or commercialize the idea you must file for a patent within one year or forever lose patent rights.
- In most other countries you must file for a patent before you you publicize or commercialize the idea or forever lose patent rights -- you don't get the year.
- Once you file an application, various deadlines start in which to file other applications. Missed deadlines lose priority.
- If you needed the priority because of the occurrences above, you may lose patent rights.
- The rules, such as US Section 102 are extremely complex, and their application requires careful study.
- Interrelation with other rules can be important:
- Once your patent is published then you can no longer claim its subject matter is a trade secret;
- Once your idea is published or deposited in its entirety in the Library of Congress with your copyright application, then you can no longer claim that what was published is a trade secret;
- By carefully taking advantages of what the rules provide, your lawyer may be able to preserve all three of these rights, but it is not an easy task.
Copyright 2018 David C. Brezina All rights reserved.
This paper is written to explain and illustrate situations which may come up involving intellectual property law issues for a typical individual inventor. This paper does not give specific legal advice to about specific fact situations. If you have a specific fact situation in mind you should seek professional legal advice addressing the relevant facts and law. Seemingly minor changes in facts may change a legal opinion dramatically. Space here does not permit an explanation of all the variables in complex legal areas.
David C. Brezina
Ladas & Parry LLP
224 South Michigan Avenue
Chicago, Illinois 60604
Tel. (312) 427-1300
Fax. (312) 427-6663