Invention help

[Jack Jones]

I know of one very good solution - if not for now, then for the future.

That is, when it's time, consider coming to work for the U.S. Government. Under the Federal Technology Transfer Act, inventors receive a portion of the proceeds (royalties, etc.) Most all of the above would be done for you by the Intellectual Property office. Every research facility I know of has it's own IP legal staff who's number one job it is to see that their engineer's ideas get patented and then transfered to the public sector.

So, in addition to excellent pay and job security (USA TACOM/TARDEC has been around for 50 years and has never laid off an engineer) you'd get the chance to make something extra and accelerate your promotion schedule.

If the DoD is not for you, the there's NASA, or the EPA, or whatever area floats your boat. Something to consider. Don't think it doesn't happen - I've made a bunch from royalties, which put me on the fast-track at the same time.

[Joe Johnson]

Make sure your idea is worth it. I can't find the article now, but a few years ago I read a good review of patent law that basically boiled down to this: "Don't even think about patenting a Million Dollar Idea. It had better be worth a lot more than that to make it worth your while"

I don't think I agree with the advice 100% but it is a good starting point.

There are a lot of reasons to patent something. Not all of them involve suing to enforce a patent.

• You may want to patent in order to increase your value if you are purchased or go public.
• You may want to have patents in order to make investors more comfortable with investing (they may think, "At least we can sell the patent rights if all else fails").
• You may want them to have some basis for a counter suit if you get sued.
• You may want to generate doubt in the mind of your competitor as to what path they should take to avoid patent infringement (provisional patent applications are often used in this way -- they are not published and they allow an applicant to claim whatever they want without review. They will almost certainly not get all they claim but it is uncertain as how much will be limited.)

Another great source of info (especially on software patents) is Paul Graham's excellent essay, Are Software Patents Evil?

As to documentation, all you really need to reserver your priority date are witnessed signed sketches. You need to make sure that the sketches document the idea well and the the witnesses actually understand the idea (based on the drawing). There have been a number of famous patent cases were the priority date was lost based on the argument that the witnesses could not have truly understood what they were witnessing. Keep that it mind.

If the idea has international application, you have other issues to worry about. The US is "First to Invent." Almost the entire world is "First to File." You need to keep this in mind for priority dates for international patents. You also have a 1 year clock to worry about. Once you have show the idea to an outside person or offered the idea for sale to customer (NDA's complicate this process -- talk to a lawyer), you have 1 year to file or you loose your ability to file at all.

I wish you all the best with your idea.

Joe J.

[Peter Matteson]

A couple notes on items others missed.

If you plan on filing a Paris Convention international patent realize that you have a limited window after filing for a US patent to do so, otherwise your US patent application can be used against you as prior art. Unlike the US the rest of the world uses a strict novelty system for patents meaning that once any info about the patent is published it is no longer patentable. In the US you have a 6 month window that starts from the date of publication.

Make sure a patent is the correct type of protection for your idea. Sometimes keeping it a trade secret is better. Patents are required to include enough detail that one reasonably familier with the field can duplicate the invention with the given data. This makes it easier for some one to reverse engineer your idea. Filing is getting a limited term of protection from the government for putting your work in the public domain for others to later use.

Where others say beware of being too vague, being to specific can be as bad or worse. One example being my company has aquired patents on the use of commercial products that the manufacturers did not think of. We therefore have protection from any one else using these products to compete against us. (I apologize for being inspecific but for business purposes I have to be vague.)

Pete

[KenWittlief]

Originally Posted by Peter Matteson

... One example being my company has aquired patents on the use of commercial products that the manufacturers did not think of. We therefore have protection from any one else using these products to compete against us. ...

this sounds very fishy! how can you possibly get a patent on a system that someone else has designed and produces? If they are selling it, and they did not patent it, then it is public domain.

If I buy something I am free to use it for any purpose I want. Nobody can tell me I can not use a screwdriver to open paint cans, because they patented opening paint cans with screwdrivers, and I have to buy my screwdrivers from them if I ever intend to open a paint can with it.

That is nonsense!

thats not how patents work. You patent the design, the system... not all possible uses it may be put to.

It sounds like some patent lawyer has taken your company for a ride!

[Peter Matteson]

Originally Posted by KenWittlief

this sounds very fishy! how can you possibly get a patent on a system that someone else has designed and produces? If they are selling it, and they did not patent it, then it is public domain.

If I buy something I am free to use it for any purpose I want. Nobody can tell me I can not use a screwdriver to open paint cans, because they patented opening paint cans with screwdrivers, and I have to buy my screwdrivers from them if I ever intend to open a paint can with it.

That is nonsense!

thats not how patents work. You patent the design, the system... not all possible uses it may be put to.

It sounds like some patent lawyer has taken your company for a ride!

We patented a non-obvious use of a chemical product that the company who created it did not know exists. Using a chemcal in a process is a patentable subject and therefore we have blocked anyone else from using it for our application. The inventor of the chemical product still has all the rights to use it traditional methods. We have no right to make or manufacture the product. We can hawever purchase and use the product in our way and prevent anyone else from doing so. This is a perfectly legal and common type of patent similar to the improvement patent where you improve on an existing patent and the original patent holder if it is not you can not use your improvement.

[KenWittlief]

Originally Posted by Peter Matteson

This is a perfectly legal and common type of patent similar to the improvement patent where you improve on an existing patent and the original patent holder if it is not you can not use your improvement.

but you have not improve the existing product, you have not changed it at all. Its exactly the same as what they are selling on the open market.

I dont think your patent will hold up to a court challenge.

[Peter Matteson]

Originally Posted by KenWittlief

but you have not improve the existing product, you have not changed it at all. Its exactly the same as what they are selling on the open market.

I dont think your patent will hold up to a court challenge.

The patent is on the use not the product (edit: aka process patent). These types of patents for non-obvious uses of something that exist are a very common type of patent. If I gave you the specifics you would immediatly understand what I'm talking about, but for IP reasons I'm intentionally being vague.

[Carol]

Use patents as described are very valuable and very common. And have been held up in court cases for many years now. You may not agree with the concept but they do exist. The key is the phrase "nonobvious" use of the object. You could never get a patent on the use of a screwdriver to open a paint can as it would be obvious to someone "skilled in the art" (which, in this case, is anyone who has ever opened a paint can). But using a known substance as a new paint additive can be nonobvious.

As an example (which I'm making up as I have no idea what goes into paint), say you discovered that adding baking soda to latex paint makes the paint stick to the wall better. No one has ever added a salt like this to paint before. You can get a claim to the use of baking soda as a paint additive (and probably one to a latex paint containing baking soda as well. You can claim the same concept several ways.) Yes, someone could buy baking soda and add it to paint at home and no one would really stop them. But if they sell paint containing baking soda they are infringing. Or if a large commercial company advertises that their paint jobs last longer because they add baking soda to their paint, they are infringing and are likely to get sued.

To make it even more complicated, say Dean Kamen has a patent claiming baking soda as a new composition. You can still get a claim to the use of baking soda in paint, but you can't sell that paint unless you get a license from Dean to sell something containing baking soda.

As for inventor resources, also check out the US Patent Office web site - they have a section for would-be inventors:
http://www.uspto.gov/web/offices/com/iip/index.htm


P.S. Shameless plug here. Patent agents can also write and prosecute patents for inventors, but since they are not attorneys they charge less. They have to have the same credentials as attorneys (i.e. minimum BS in some technical field) and have to pass the same patent bar as attorneys. They just can't do trademark work or litigation. A lot of them are scientists/engineers with many years research experience before they became patent agents. Or are former patent examiners, but I won't go into that.

[KenWittlief]

well, ok maybe this is a matter of semantics

If you have invented a process or created a system that uses someone elses commercially available product, then yes, you can patent your system or process

but you dont hold a patent on their product. You hold a patent on your process or chemical formula.

even still, there has to be more involved than simply buying someone else product and using it by itself for some specific application - there has to some level of innovation on your part to get a patent. Your chemical formula cannot have only one ingredient: someone else's product.

[Alan Anderson]

Originally Posted by KenWittlief

well, ok maybe this is a matter of semantics

Maybe, but I think it's just a matter of you focusing on the wrong concept. Peter has understandably been vague about exactly what the patent covers, but it has always been very clear that it covers a particular use of a commercial product. You're complaining about the idea of patenting someone else's product, but he never said anything like that. You're the one who brought up that idea in the first place.

It is perfectly reasonable to patent a recipe, even if all the ingredients are in the public domain, or if some ingredients are patented by someone else.