Shhhhh....Don't tell them that!

When we first get a new idea we always want to tell people, We’re excited (Right Tania?) and we feel really smart, and we just know what we came up with is going to change the world! For the most part telling people in your imitate family and very close friends about your invention is normally pretty safe. What you need to stay away from is telling people just for the sake of telling them, or showing people in ways that it could be classified as disclosure. (ie: a tradeshow, posting it on a forum, or an inventors meetings….)

When you are ready to branch out and start talking about it there are 3 basic levels of protection you want to have in place.

1) An Inventor's note-book. This is a simple thing you can do to document the date of invention. It should be in a bound notebook consecutively numbered. Each page should be signed and dated by two disinterested witnesses stating “witnessed and understood.” The notebooks would be required to be presented to the USPTO to prove the date of invention. Notarized is not necessary but would be a good idea – although generally it’s not practical.

2) A Non Disclosure Agreement: (NDA) this is a document signed between two parties that forms a letter contract stating the receiving party will not disclose what he/she was told about the invention. This is significant because an NDA is enforceable the moment it is signed, and violation of an NDA is a violation of Trade Secret laws. The theory is simple, the person you told could not likely develop your invention without disclosing the details to another party, by doing so they would be in violation of the NDA.

3) A Provisional Patent Application: This is NOT a patent. This is a very basic patent application that is filed with the USPTO establishing the date you invented (or filed) your product/idea. It only has a 12 month life, and then must be replaced with a normal patent application so timing is important.

As you can see from the time you develop an inventor’s notebook you enjoy some level of protection. Each step you take after that is like building the fortress a little higher.

I would say (in my opinion) you are pretty safe telling people in your local circle about your invention once you have a properly documented inventor’s notebook. In most cases with a strong notebook and an NDA you can approach some companies to “test the waters”. But if you’re going to go full force trying to sell your ideas for license I recommend you invest in a PPA before you get too deep into the process.

As part of the patent harmonization legislation of a few (or more than a few) years ago, I understood that the USPTO pretty much discarded the notion of "first to invent" in favor of "first to file", while simultaneously increasing the (utility) patent duration to 20 years. Am I correct? I am an inventor (5,495,143), not a lawyer.

If so, the value of meticulously documented and dated notebooks may not be what it used to be.

Otto

otto9K9otto wrote:

As part of the patent harmonization legislation of a few (or more than a few) years ago, I understood that the USPTO pretty much discarded the notion of "first to invent" in favor of "first to file", while simultaneously increasing the (utility) patent duration to 20 years. Am I correct? I am an inventor (5,495,143), not a lawyer.

If so, the value of meticulously documented and dated notebooks may not be what it used to be.

Otto

Hi Otto,

Utility patent duration was never really increased to twenty years from the "priority date," it was simply changed to that from the previous system where the term was 17 years from the date of issue. Off the top of my head, I am not sure the exact motivations behind the switch, but I imagine that the USPTO did not want foreign (and some US) applicants holding an advantage over US applicants just because their application/examination process was longer than the next applicant's.

For what its worth, the provisional patent application, introduced in 1995 along with the new patent term system, was meant as nothing more than a means for international harmonization. The goal of the provisional application was simply to give US applicants the ability to be on the same ground as international applicants who could file an application in another country and not file in the US (or with WIPO, etc) for another year. It was not meant to help smaller inventors and, it's a separate subject, but the provisional application generally doesn't help smaller inventors nearly as much as some assume. The average inventor-file provisional application provides little or no benefit other than the ability for an inventor to use the phrase "patent pending." Its because the provisional application must meet the same qualifications as any non-provisional patent application in order to provide a benefit - the only exception is that claims are not required. Most inventor-filed provisional applications will generally not live up to the required standards.

International harmonization is also one stated motivation to switch from "first to invent" to "first to file," which is part of a proposed patent reform bill that was initially introduced in 2005 but has yet to get past opposition. If the proposed switch passes - the value of meticulously documented and dated notebooks may not be what it used to be. On one hand, this will be a negative, taking opportunity away from the average small inventor who may now be forced to invest more upfront into a patent application. On the other hand though, more inventors would be encouraged to do what is best for them, whereas the current system tends to provide for a false sense of security.

Except where an inventor's notebook meets the same standard required by any provisional patent application, and is also meticulously documented, it will not serve as proof of invention even today. Thereby, for most inventors, even today an inventor's notebook does not do so much for them outside of maybe providing some protection in the event someone tries to take their invention as pass it off as their own invention (its also hypothetically possible that the contents of the notebook could serve as blocking prior art for others, but that invokes a discussion of what does, doesn't, will and won't qualify as prior art).

From another thread here:

Between 1991-2000, there were more than two million US patent applications filed, of which less than 2,000 led to interference proceedings, of which, traditionally, the "first to file" party tends to win about 75% of the time. And theoretically, even where a "first to invent" party comes out on top, the validity of their resulting patent can still be questioned in the event they move to enforce it.

http://sousei2.doshisha.ac.jp/kiyou/7pdf/7kawaura.pdf

Thanks Bill.

Otto