October 1, 2011

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Stroke of Genius

Using Patents to Protect Your Million-dollar Idea

Marie Mischel

October 1, 2011

Throughout Utah, thousands of inventors tinker in their garages, while companies pour millions into R&D, all hoping to hit the jackpot. But the work’s not done once you’ve yelled “Eureka!” The next step is to protect your invention and prevent what in pioneer days was known as claim-jumping. These days, that can be done by filing a patent.

Ideas Don’t Count
A brilliant idea alone won’t earn you a place next to Steve Jobs on the list of the world’s richest people. For a patent, “You have to be able to describe [the invention] to a person with skill in the art how to make and use the invention,” says Randall B. Bateman, a registered patent attorney and founder of Bateman IP.

“The biggest mistake that most small businesses make is not documenting things well,” Bateman says. He suggests that all inventors keep notebooks to document each step of the process. In many companies, engineers create a log of their work, which their supervisor routinely reviews and signs. This becomes proof that can be submitted in court.

“The biggest flaw that a lot of small inventors do is they have what’s affectionately known as the ‘poor man’s patent,’ which is, they write their invention down and mail it to themselves,” Bateman says. “The problem with doing that is that most inventors don’t write down the full invention; they write very cryptic notes.”

Those undecipherable notes won’t stand up in court, he says. “In order to be enabling disclosure, it has to be enough that people can figure out what the invention is, how it works.”

When to File
Although a patent application must detail exactly how an invention is made, a working model isn’t necessary, Bateman says. “A lot of really ground-breaking inventions, they never get reduced to practice before they file the patent application. The engineers just figure out ‘This will work,’ and they file the patent application. They get around to building it later.”

The time between dreaming up a breakthrough product and creating a working model can be long and filled with dead ends, especially with a competitor working to beat you to market. Right now, inventors do have some protection during this limbo: the United States is currently one of the few countries that is a “first to invent” patent jurisdiction rather than a “first to file.” This means that if your competitor files a patent for your device, but you can prove that you had the idea first, you win.

However, “the recently passed America Invents Act will transition the United States to ‘first to file’ in March of 2013,” says Bateman. “So this will impact any application filed after that date.”

To prepare for this change, Bateman says inventors should get used to filing early—don’t wait until the invention is perfect. “Early is going to be more and more important,” he says. “If it works, then you file on it. At least get a provisional patent and make improvements after that.” A provisional patent can buy an inventor some breathing room: 12 months, to be exact. After a year, the provisional patent will expire or the inventor can file for a non-provisional patent.

Most other countries are already “first to file” jurisdictions, so filing for a patent as soon as possible is essential if your invention has value in overseas markets, says Rick Nydegger, an intellectual property attorney and equity shareholder in Workman Nydegger.

Furthermore, most other countries have an “absolute novelty” requirement, meaning that “if you publish in any way, take your product to trade shows, or write an article, or make a sale at any time prior to your filing, you have lost the right to patent in the foreign country,” Nydegger says.

This is not the case in the United States, which gives inventors 12 months to file for a patent after going public with an invention. However, Bateman advises companies and inventors to start complying with the “absolute novelty” requirement anyway. “Just get a provisional patent on file before marketing or otherwise publically disclosing the invention,” he says.

Patent, or Not?
Patents are costly and time consuming, and many inventors fail to ask whether one will be necessary.

“So often, entrepreneurs and startups, in my experience, don’t get adequate counseling about the fact that there’s a difference between a patent and an asset,” Nydegger says. He sometimes recommends that companies take their product to market without a patent and spend their time and energy continuing to innovate. This works particularly well in fields such as software applications, which evolve rapidly.

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