By
Ronald
J. Riley
Acquiring a patent should be approached
the same as an engineering project. Documenting
your idea is the first step in the process. It is necessary to thoroughly
plan to minimize both costs and the time required to get the patent.
You must file your U.S. application
within one year of the first disclosure or commercial application of the
idea. Either disclosure or sale (including an offer to sell such as a quote)
will start the one-year clock. Most foreign countries require that you
file before any public disclosure or commercial application.
You may safely disclose information
and not start the one-year clock, by having each and every person and company
that you give information to sign a non-disclosure
agreement. The following is a partial list of things you might do,
which could start the clock or at least create a gray area that an infringer
would try to exploit to avoid paying damages. This is an area that is evolving
in the law and you should seek counsel before any disclosure.
-
Tell a customer or others about the
invention.
-
Distribute a data sheet.
-
Distribute price sheets or quotations
that don't clearly state that the product is not yet available and that
it is experimental.
-
Give a paper or publish information
about the invention.
-
Sell the product at a profit, you may
be able to supply free samples or samples at cost without starting the
clock.
A person seeking
a patent should be knowledgeable about technical, business practices, and
marketing issues of the market where the invention will be used. Many people
end up with a useless piece of paper because they had a unique idea that
was not cost effective or truly useful. They did not realize that their
idea was not worthwhile because they did not understand the market. A person
who does not thoroughly understand the area and market their invention
is meant for, could receive a patent on something that is already in use.
The idea would be considered prior art, and their patent would be deemed
invalid. A patent search will not always show
all prior art.
Expect to pay for services that you
require including searches. I have come across many would be inventors
that expect to get services for nothing. There is no faster way to sour
a service provider on all independent inventors than to leave him with
a bad receivable. There are no free lunches.
There are many organizations that
aid inventors but a few stand out as the best. I strongly suggest that
you join Inventors Awareness, which has almost single handily brought down
a host of disreputable marketing organizations. Contact them at: Inventors
Awareness Group, Inc. (IAG), 1533 East Mountain Rd, Suite B, Westfield,
MA 01085-1458 TEL: 413-568-5561 FAX: 413-568-5325
A clear write up of the idea and
neat detailed sketches will help convey the proper information to do a
prior art search. I recommend that you not have the same attorney do the
search and the patent. While most patent attorneys are honest, having the
search and prosecution done by different parties helps keep them that way.
The search is the second step to
determining if your idea has merit. The search if performed by an attorney
will take one to three months and cost less than $1000.00. You may go to
a service provider that does searches and get one for between $150.00 and
$450.00 depending on their rates and the amount of work involved. You do
not have the benefit of an attorney's advise when using this approach.
It is difficult to come up with ideas
that are broad in scope in areas that have well-established technologies.
The most valuable patents cover the basic idea of a process. Those that
are 'improvements' are not as valuable unless they are critical to the
commercial success of the product. A patent on a specific circuit will
not have much value if it is easy to design around that circuit and there
is not much cost or performance penalty associated with the alternative
circuit.
If you are involved in an area that
is ripe for development consider all the other methods that could be used
to solve the problem. It is important to build a fence around your main
idea, locking up as many of the possible solutions as possible. This is
necessary because a competitor could use a solution that you consider inferior.
If his marketing is better than yours is, you could still lose the market.
A good example of this is the VHS videotape standard winning the market
over BETA.
A fence built with multiple patents
also acts as a deterrent to infringers, because it will usually cost them
at least $500,000 per patent they attempt to invalidate. The uncertainties
of prevailing when they are facing multiples make it more likely they will
negotiate a settlement.
Carefully study the results of the
prior
art search to determine if your idea is unique before proceeding to
the third stage, which is filing for the actual patent. Your attorney will
work with you to draft the actual application. Expect this to take three
to six months and to cost between $5000.00 and $10,000.00.
Once the application is filed you
can expect to wait one to three years to receive the patent. If anyone
infringes on your idea during this time you can notify him or her that
you have filed for the patent but you cannot sue until the patent is granted.
The infringer is liable for damages starting from the latter of the time
you filed and the time when they were notified. This is the most frustrating
part of the patent process.
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Patent Infringement
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