C3 Patent and Intellectual Property Law

Jun092009 | Steve O'Donnell

Protecting your invention on the way to the patent office

I recommend to everyone that they contact a patent attorney as early as possible after they have an idea for a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. Of course, not everyone is going to do this. In the meantime, there are a couple things you should be doing or not doing to keep you from accidently losing your rights to your invention.

The most important, but maybe most difficult one to do is the SHUT UP! I don't mean to shout, but seriously, SHUT UP! The easiest way to lose your rights is to go around talking about or showing your invention.

35 U.S.C. § 102(b) bars the patenting of something that has been in public use or on sale for longer than a year before the application is submitted. The U.S. is the most liberal country as far as public disclosure of an invention goes, in other countries a public disclosure is most likely going to block a patent from being issued.

The real question is whether talking about your invention a “public use?” It can be. Certainly telling someone that you've invented a time machine is not giving anything away and won't bar your patent. Sitting down and describing enough about how your time machine works that someone else could build it might be enough to bar.

Section 2133.03 of the Manual of Patent Examination Procedures has a short overview of the requirements for “public use” under the statute. Some of these problems that can come up can be solved, or at least minimized, with the use of non-disclosure agreements and other precautionary measures. The downside with protecting yourself that way is that you might have to convince the patent office or a court that you did take the proper measures to protect yourself. A cheaper and easier way of ensuring that you don't have a 102(b) problem is to. . . SHUT UP!

Another problem that can occur if an inventor shares too much is that the person receiving the information might try to poach the invention and file their own patent. Unfortunately, there is no shortage of dishonest people and although the real inventor might be able to defeat such a fraud, that is an unnecessary expense that could have been easily avoided by keeping quiet.

Sometimes, it just isn't possible to keep the invention completely secret before an application is filed. It may be that public testing is needed, that some design help is needed or maybe that investment capital needs to be raised to pay for the patent application. In that case, tread carefully, and enlist a patent attorney to make sure that you are protected.