It is the truly wise man who knows what he doesn’t know. When it comes to the field of inventing which is naturally full of false hope and snake oil salesmen, this adage means everything. This article is a primer on things you should know about the patenting process, long before you invest time in developing your product or seeking legal advice:
The day is finally here, your invention is done! You hurry out of the basement workshop and grab the nearest phone, dialing the number of an inventors’ networking association. “Hi, I need some help to patent my invention,” you tell the person who answers. “I’ve got this really nifty kitchen device, and I have a great name for it, but I want to patent both the name and invention before anyone steals my idea. Can you help me ?
When the person on the other end of the line tries to explain that product names cannot be patented, you say, “What about the recipes that go with it? I just have to patent those, too!” You are told that recipes can’t be patented, either; you need a trademark.
Trademark? Patent? What’s the difference? Though the association member patiently tries to explain the difference, by the time you finally hang up, you have a sinking feeling that you’re still not sure what you’re doing.
You’re not alone. Inventions are protected in a variety of ways, such as design or utility patents, trademarks and non-disclosure documents. Additionally, certain aspects of an invention are covered under copyright law. Throw in “foreign rights” and “treaties,” and the confusion grows. You should get the terms straight before you take your product to a patent attorney or to an inventors’ group, so you can spend your time discussing options instead of semantics.
The Elements of Protection
A new product can be protected by a patent, trademark or copyright. Copyrights cover expressions such as writing, music, art and some computer programs. Inventors don’t usually need a copyright, but if your work seems to fall into one of these categories, contact an attorney in your area by calling your local bar association.
Trademarks identify a product as belonging to a company or an individual. Slogans and company logos are good examples of trademarks; certain product design elements may be appropriate as well.
To illustrate how different forms of protection can overlap, the popular barbecue grill by Weber-Stephen Product Co. is covered by both a design patent and a trademark. Since most consumers can recognize a Weber product by its streamlined design, the product is also trademarked.
The first choice of inventors though, is the patent. Utility patents cover product function, while design patents focus on the ornamental design of an existing product. Both types require that the concept be “new” and “unobvious.” When an invention reaches the patent office, patent examiners compare it to past inventions to see if it, or parts of it, already exists. The office reviews current patents, previous patents worldwide, and existing products to see if the product duplicates another invention. If not, the examiner allows that claim to pass. Patents are also possible for product improvements.
Deciding whether or not an invention is “obvious” is more difficult. Patent examiners compare new products to similar inventions to see if they would have been obvious to someone skilled in that art. Examiners are so specialized that one examiner may spend an entire career reviewing only coat hanger designs. IF yours is a duplicate, the examiner will spit it and deny your claim.
Whether you seek a design or utility patent, the main thing to understand is that a patent does not give you the right to produce your product. Rather, it prevents others from producing your work for 17 years in the United States, provided you pay maintenance fees along the way.
The Cost of Inventing
That leads to another important point: investigate the costs. You’ll [ay one fee to file the utility patent application and another fee to file a design patent application and that doesn’t include lawyer and patent search fees. Because the Patent Office wants to become self-sufficient, it requires a series of “maintenance fees” for the life of utility patents. Design patents do not require these fees. If the inventor doesn’t pay the fee, the product enters the public domain. Over the life of the patent, these fees total in the thousands.
Product production abroad adds to the cost. Inventors seeking foreign patents pay in the thousands PER COUNTRY in advance. That’s usually enough to convince independent inventors to stick with the home front.
Given these high fees, most patent attorneys advise that the inventor “test the waters” by taking advantage of the one-year grace period before filing an application. This period gives the inventor a year to file for a patent after publicly airing it or offering it for sale. If the inventor fails to do so, the product enters the public domain.
That one-year period gives you a chance to see if the invention is worth investing the thousands of dollars necessary to market it, by offering to sell the idea to licensees, manufacturers, investors or the public. Think of it this way: you can use the one-year grace period to earn enough money to pay for the patent.
Don’t let the grace period fool you into not protecting your work. Before you start approaching people en masse regarding your invention, get an attorney to draft a “non-disclosure document.” This will be given to every person to whom you disclose your invention. The agreement verifies that you disclosed your invention to a company official or individual, and that individual agrees not to use it for his or her own profit.
Many manufacturers, however, won’t deal with inventors without patents. If the company has been working on a project for 15 years and a company official signs the non-disclosure document, the company may lose millions of dollars if your invention turns out to be identical or similar to theirs.
Life After the Patent
Remember that a patent offers more than protection. It tells people that you are serious about the invention and about your business. Why else would have invested so much time and effort thus far ?
Finally, what you should know about the patenting process, is that it may not be in your best interest. If your invention involves a process how something is done, you may forego obtaining patent protection. That’s because with a patent your work becomes public information for all to use and duplicate after 17 years. Indeed, the very purpose of a patent is to allow others to recreate your invention a blueprint for duplication you might say.
So if you have a novel process (the Coca-Cola formula is a prime example), consider keeping it to yourself; it’s built-in protection. People can’t copy what they don’t know.