You have a great product (or an idea for one). You think it will take the world by storm. You heard something about intellectual property protection and you are careful about not sharing your idea with just anyone. Your friend recommends talking to a patent attorney to discuss your options. Is that a good idea? Yes!
But to make the initial meeting a success, try to answer a few questions to determine when to meet with a patent attorney or what to find out from a patent attorney.
With many legal issues, the devil is in the details. In that light, the hypotheticals below are generic and merely illustrate basic principles. Your specific situation is likely to not fit neatly into all (or even most) of these hypotheticals.
1) Is your idea globally new?
- If your idea is something you saw on your trip to South Korea but you are pretty sure is not in a product in the United States yet, then, because it is known somewhere in the world prior to filing a patent application in the US, you cannot obtain a patent to protect the idea. Plus, to be an inventor, the invention has to be your idea, not someone else’s idea.
- If you are unsure about whether you are the first to come up with your idea, you can have a professional search firm perform a “patentability search” for you. Your patent attorney should be able to refer you to a professional search firm.
2) Is your invention “ready for patenting”?
- Regardless of the type of patent application you initially pursue (provisional or non-provisional), you will have to provide enough technical details about the invention to enable someone that is skilled in the area to make and use your invention based on the details you provide. Have you developed the invention to the point where you can provide those details? Keep in mind that you do not actually have to make the invention to get a patent on it; it is sufficient if you can provide the details that would allow someone else to make it.
3) Would you be able to detect it if somebody stole your invention?
- Patents will not stop others from stealing your invention. They simply give you a right to sue others who use your invention without your permission. If the nature of your invention is such that you would not be able to tell if someone stole it (i.e., the invention is undetectable by someone using a product/service that incorporates the invention), then your invention may be a better candidate for trade secret protection rather than patent protection.
4) Did you own the rights to the invention?
- You do not want to spend your own money on something you will not own. If you used time or resources of your employer to develop your idea, then, based on your current employment agreement, you are most likely required to assign rights to that idea to your employer.
- If the idea is closely related to your job responsibilities, your employment agreement may require you to assign rights to the idea to your employer, even if you did not use company time or resources to develop the idea.
5) Has your invention been disclosed to others who are not subject to a non-disclosure agreement (NDA)?
- If so, when was that disclosure? If it has been over one year since a “public disclosure” of the invention (and the patent attorney should explain what that could mean in the U.S.), then obtaining patent protection in the United States is not possible.
- While the United States has a one-year grace period, other countries do not. That means any public disclosure of the invention before filing any patent application may cause the loss of the option of obtaining foreign patent protection.
6) Do you have funds to pay a patent attorney to prepare and file a U.S. patent application?
- Many firms require a retainer to begin work, such as 50% of what the total cost is expected to be. In general, the legal fees for preparing a patent application by a reputable patent attorney are significant within a common range. The greater the complexity of the invention, the greater the legal fees for preparing a patent application.
- Provisional patent applications are far less expensive than non-provisional patent applications. However, filing a provisional patent application only defers the largest expenses for up to a year; it does not eliminate them. Within one year of filing a provisional application, one must file a non-provisional patent application.
7) Have you considered filing in foreign jurisdictions (e.g., China, European Patent Office)?
- A U.S. Patent will only give you rights relating to making, using or selling your invention within the United States. To obtain protection in a foreign jurisdiction, you will need to apply separately in that foreign jurisdiction.
- Total patent costs for obtaining a patent in the United States could be over $25,000. Obtaining patent protection in each foreign jurisdiction could be even more expensive. As a general rule, patent costs in China are much less than patent costs in the U.S. and Europe. There are strategies to defer foreign-related costs.
- Foreign jurisdictions do not have a one-year grace period when it comes to public disclosure, as noted above. Thus, you must have a patent application on file (either a US application or a foreign/international application) before the invention is publicly disclosed. Note: “public disclosure” in the US is different than “public disclosure” in foreign jurisdictions
- To determine which foreign jurisdiction to file in, it is important to know where your customers are/will be, where your competition is/will be, and where your development/manufacturing is/will be.
As you consider these questions prior to meeting with a patent attorney, you are likely to come up with additional, thoughtful questions to ask. Thus, your initial meeting should run smoother and be more fruitful as you and your attorney consider intellectual property (IP) strategy that is tailored to your needs and circumstances. We are eager to be those IP professionals who will serve you and guide you through that process.
Disclaimer: This article is purely a public resource of general information that is intended, but not guaranteed, to be correct and complete. It is not intended to be a source of solicitation or legal advice and is for informational and entertainment purposes only. The information is not intended to create, and receipt does not constitute, an attorney-client relationship. The laws of different jurisdictions may be implicated, and facts and circumstances can vary widely. Therefore, the reader should not rely or act upon any information in this article, but should instead seek legal counsel for individualized legal advice. For more information, please contact a firm attorney through www.hickmanbecker.com.