You’ve come up with a great new idea for a product that you’ve never seen before. In fact, you’re sure it’s never been done by anyone before. Here are some issues to consider when determining whether to apply for a patent.
Who Has Rights in the Invention?
If you have a new idea or invention, you may need to determine who else may have rights in the invention, such as a co-inventor or employer. For example, as an employee, if you develop a new idea or invention, you may need to discuss it with your employer to determine how best to proceed. In general, employees retain ownership of their inventions that they invent unless there is an agreement with the employer to assign the invention to the employer, or if the employee was hired to invent. Even if the employee retains ownership of the invention, the employer may have certain “shop rights” in the invention that may permit the employer to practice the invention.
If technology is or may be important to a company, it is important to have an employment or other type of agreement in place to be certain that rights to any inventions created by your employees are assigned to the company. Ideally, these agreements are signed upon engagement of employment. They can, however, with certain restrictions, be used at other times during employment. An attorney can help prepare such an agreement to make sure that rights would be properly transferred. This can also create an “obligation of assignment” in the invention to avoid certain obviousness rejections during prosecution of the patent application.
If you determine that you, or you and a co-inventor, have rights in an invention, you may want to determine whether to apply for a patent. Anyone who is a co-inventor of an invention claimed in a patent application has an undivided right of ownership in the invention. Each co-inventor has the right to license, assign, sell, or transfer his or her rights in the invention, or any part of the rights, without permission of the other co-inventors. This is another reason that agreements between co-inventors is so important.
Should You Apply for a Patent?
One approach that can be used to determine how to proceed, that is, to determine whether to apply for a patent, is as follows:
If you have a new idea or if you have ownership rights in a new idea, the first thing you may wish to do is to try to determine whether it would be best protected by a patent or by another type of intellectual property protection, such as whether to keep the idea a trade secret or whether the idea is one best protected by copyright. If the idea is easily kept secret, it may be better to keep the idea as a trade secret. Trade secrets may be protected for an indefinite period of time, as long as they remain secret and provide a competitive benefit. Other factors in this decision include whether it will be difficult to obtain patent protection, or if it will be difficult to detect infringement of the invention. Such cases may also weigh in favor of trade secret protection.
If you believe the idea would be best protected by a patent, you should document and record any evidence of inventive activities, as these could become important when prosecuting the patent application.
Next, you may want to determine whether your idea is sufficiently developed to pursue patent protection at this time. While it is not necessary to have made a model or prototype to obtain a patent, a patent application must include sufficient description and drawings of the invention to permit someone skilled in the art to which the invention pertains to make and use the invention. If you have not yet determined these details, the invention may not yet be ready for patent protection.
The next step that you may wish to take is to determine whether filing a patent application is warranted and develop a business plan. Is there a market for the invention? Will you be able to sell or license the invention, or manufacture the product? Will it be easy to detect infringement? Does the investment justify the cost?
Before proceeding further, you may want to do any Internet search to determine the closest products that might affect the novelty or obviousness of the invention and also to determine who might be competitors. This can be done initially using a search engine and also on a website that includes patents, such as http://www.uspto.gov/. This search may help determine whether applying for a patent is warranted. Many patents have been issued for products that never made it to the marketplace. You may have never seen anything like your new invention, but there may be a patent that describes it, which would preclude you from patenting the same invention. This initial search does not substitute for a search performed by a professional search company, but it is a good start.
You should then bring any search results and a brief description, as well as any drawings or models to a meeting with a patent attorney. You should also provide any information that may be a statutory bar and any evidence of inventive activities. The attorney can help advise you further on whether to file a patent application and prepare one for you should you decide to do so.
If the current Patent Reform bills pending in Congress are enacted, these steps will need to be conducted at light speed as the U.S. transitions from a first-to-invent to a first-to-file regime.
Clearance Searches & Opinions
Once you’ve developed a new product or invention, another consideration is whether anybody else has a patent that covers the product or invention that they can enforce against you. Before undertaking significant investment in filing a patent application or in bringing the product to market, it may be prudent to perform a patent clearance search, sometimes called a “freedom to operate” search. Otherwise, it may be that you receive a cease and desist letter or are sued for infringement after these investments have already been made and you could be on the hook for infringement damages and/or be prevented from using your invention. At the very least, you may have to defend an expensive patent infringement lawsuit.
A patent attorney can assist you by having a search performed for a third party’s patents that may pose a risk of infringement for your product or invention. If there are patents that are close or that may pose a problem, the attorney can work with you to design around the patent or you may abandon the idea and try something else before making significant investment.
What should you do if you have received a letter from a third party that threatens you with a patent infringement suit or asks you to license a patent? Again, the advice of a patent attorney is invaluable here. Simply ignoring the letter could potentially lead to your having to pay triple damages to the patentee in an infringement suit and being faced with an injunction. The patent attorney can help you to decide an appropriate response and potentially give you a non-infringement opinion or an opinion that the patent is invalid. The opinion could be used as a defense to a charge of willful infringement that may require a payment of triple damages.
Performing a bit of due diligence and spending a bit of time and money performing some background research can be invaluable before undertaking the marketing of a product or filing a patent application. Spending some money now, could save you from a big lawsuit or failure to obtain good patent protection, or any patent at all, later.
Although the cost of protecting the invention may seem high, it usually pales in comparison to the cost of an infringement suit or the initial investment in getting a new product or service to market. You generally should not share your invention with anyone, including approaching companies about it, without at least a non-disclosure agreement (NDA) in place, and preferably at least a provisional application.