November 4, 2013

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How to Determine if You Have an Invention, and What to Do With It

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How to Determine if You Have an Invention, and What to Do With It

Van Cott, Bagley, Cornwall & McCarthy, P.C.

November 4, 2013

Large corporations have the benefit of research and development teams that are supported by a number of in-house intellectual property attorneys who specialize in the preparation, filing, and prosecution of patent applications. If your business is a medium-size or small-size business, you may not yet have the luxury of devoting similar resources, but that doesn’t mean you have to wait until your company has grown larger before you decide to develop your intellectual property. Whatever the size of your business, you can still appreciate (and benefit from) the potential for innovation among your employees, and the role that these innovations may play in growing your market.

New ideas often result naturally when a business hires people with technical degrees. You can expect innovation from mechanical or electrical engineers, chemists, physicists, and IT specialists, among others. However, innovation may also come from anyone in the company, including nontechnical personnel. People who have creative minds and who generate good ideas are key assets, no matter what their job title is, because they often develop new products and methods that benefit your company and set your business apart from competitors. At the same time, it is essential that your fledgling R&D department’s emerging technologies be protected and owned by your company.

In many instances, it may be difficult to determine whether an invention has actually been made. Invention is conception and reduction to practice of any method, machine, manufacture, design, or composition of matter, or any new, nonobvious, and useful improvement that is connected to the earlier invention.[1] On one side of the inventive spectrum, the invention may be the genesis of an entirely new technology, like Gordon Gould’s light amplification by stimulated emission of radiation (laser). More common, however, is an invention that improves on products currently sold in the marketplace or even your own business. For example, if you study the history of the automobile, you can see step-wise improvements in the development of the internal combustion engine and the relatively small improvements made to it throughout the past several decades.

Once you identify an invention, there are several preliminary steps you should take to protect this valuable intellectual property. You should never disclose the invention to anyone outside of your company while an invention is being developed. A one-year grace period is given to those who do disclose,[2] but there are significant disadvantages if the invention is disclosed before the patent application has been filed, such as the loss of the ability to file a patent application in a foreign country for the same invention.

Lab notes, notebooks, or other documentation that chronicle the inventive process should be meticulously maintained, signed, and dated. This provides a patent applicant with the ability to prove derivation; a scenario in which another individual copies your invention and files his or her own patent application covering your invention. Also, documenting the inventive process assists in the preparation of an invention disclosure. The invention disclosure is used by a patent attorney to draft a patent application that describes your invention adequately. In order to ensure that your patent attorney can understand your invention and has all the pertinent information, it is imperative that your lab notes, notebooks, and other documentation be as comprehensive in explanation and exhaustive in embodiments of the invention as possible.

After you have obtained the above information, you should contact a reputable patent attorney in order to begin the patent application drafting process. (Van Cott has many excellent patent attorneys who would be happy to help you.) A knowledgeable patent attorney will determine whether a patent should be filed by asking you a series of preliminary questions about the invention, the inventors, the timing of conception and reduction to practice, disclosure, and so on. A prior art search may also be conducted to provide you with a good idea as to whether the invention is, in fact, new and nonobvious. If these initial steps are promising, your patent attorney will then draft a patent application that includes a number of drawings, a description of the invention, and a number of claims that define the meets and bounds of your intellectual property you are seeking to protect.

It is extremely important that you provide your attorney with as complete a disclosure of your invention as you can so that you can avoid significant redrafting of the application and unnecessary attorney’s fees. In addition, you should know that specific sections of the American Invents Act implemented on March 16, 2013[3], make it even more important, from a legal standpoint, than it was before that you not disclose an invention before a patent application has been filed. Finally, please notice when your employees come up with innovative ideas. By documenting these innovations, and filing patent applications early and often, you will then be better able to protect these valuable intellectual property assets.

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