Legal Issues

How to Protect Your Invention

The most important step in protecting your invention is to consult competent legal counsel to secure adequate protection for your invention early in the process. The United States is one of only a handful of countries that recognizes the “first to invent” rather than the “first to file” for patent protection. It is important to document and date your idea and its development in ink in a bound lab book (not a loose leaf notebook; duplicate books are recommended), and have two trusted, impartial witnesses sign and date key pages, including the invention description, drawings, photos, graphs, etc. Building a working model will reveal problems, help you work out the “bugs”, and persuade supporters. Take photographs. Keep receipts for purchases of parts and payments for services.

You might submit a Provisional Patent Application (PPA) to the U.S. Patent Office along with the required Cover Sheet. This PPA is cheap and establishes a “priority date” for the patent. It gives additional “first to invent” protection, and, along with your bound lab book, lets you declare that “a patent is pending.” It also gives one year (365 days) in which to “reduce to practice” the invention and seek a licensee, before having to pay thousands of dollars for the non-provisional “regular” patent application.

Be careful about sharing too much information. Often there is a valid “need to know” in order to obtain advice, funding, manufactured parts, or other assistance before filing for patent protection. It simply won’t work to ask the Idaho Small Business Development Center, or others, for help or money and not be able to explain what the subject is, its merits and status. It is often possible to disclose the minimum by telling “what” but not “why” or “how”. Idaho SBDC counselors are forbidden to misuse or inappropriately disclose confidential information.

When applying for SBIR or similar government R&D grants, it is possible to walk the tightrope and tell enough to get the development money without disclosing everything. Carefully word the project title and summary abstract, and mark sections or pages that contain confidential material that must and will be shielded from the public, even under a “Freedom of Information” (FOI) request. Prison awaits violators of these protections, so abuse is rare.

In negotiating agreements for manufacturing or licensing, it may be necessary to disclose vital knowledge — intellectual property (IP). In such cases it is advisable first to obtain a signed non-disclosure agreement. Samples can be found on the Web and in books about invention or patents. Remember:

  1. a non-disclosure agreement is not a substitute for good judgment and effort to check integrity
  2. a reputable producer may legitimately decline to sign a non-disclosure in order to protect themselves from your lawsuit if they have reason to believe they may already be working on a similar development
  3. the more you have invested in your product, such as a patent, working model, market research, etc., the better you are protected and the more valuable your intellectual property asset.