Do I need a nondisclosure agreement or confidentiality agreement before discussing my invention with a patent attorney?

Inventors should use a nondisclosure agreement (NDA), sometimes called a confidentiality agreement or confidential disclosure agreement (CDA), before discussing their invention with most other people. When I say “most” other people, there are some people you can disclose your invention to without such an agreement.
For example, you may not need a nondisclosure agreement to disclose your invention to a business partner, if the invention is going to be owned by the business. Likewise, disclosing your invention to very close family (for example, your husband or wife) probably would not be considered a public disclosure of your invention.
Inventors should use a nondisclosure agreement before disclosing their invention to potential investors, manufacturing companies, product designers, and development companies, if the inventor has not yet filed a patent application. Of course, it is best to file a patent application first, before making any disclosures of an invention.
This raises the initial question – “do you need a nondisclosure agreement or NDA to show your invention to a patent attorney.” In most cases, a patent attorney is going to be bound by the duty of confidentiality without a formal nondisclosure agreement.
But inventors should never discuss their invention in detail with anyone, even a patent attorney, until there is a formal attorney-client relationship. Many patent attorneys require a signed Fee Agreement before forming an attorney-client relationship with anyone.
It’s simply not necessary to go into detail about your invention until you have hired a patent attorney. The patent attorney can check for conflicts of interest and give inventors general information based on a high-level description of the invention. For example, you can describe your invention simply as relating to a child’s toy, a tool, an auto part, and kitchen utensil, and so forth, without saying exactly what the invention is and how it works.
Inventors should never talk in detail about or send any information, for example in an email, about an invention to a patent attorney until the patent attorney has agreed that you are a client – again having signed the Fee Agreement. That way, there can be no misunderstanding by the patent attorney that you expect details of your invention to remain confidential.

Inventors: Do You Know What A Prior Art Search Is?

Inventors may want to consider a prior art search to find out what is out there that might be the same or similar to their invention. The prior art search can give inventors a better idea of the state of the art related to their invention.
Inventors are not required to conduct a prior art search before filing a patent application (or at any time, for that matter). But in some cases, the prior art search turns up references that are the same as, or so similar to their invention. If this is the case, and the inventor decides not file a patent application, then they’ve just saved thousands of dollars!
Even if the prior art search indicates that one or more feature of the invention might be patentable, it is still a good idea to have an understanding of other inventions that are out there already. These might be the competition and inventors can see how to make their invention even better.
Oftentimes, seeing what else is out there will prompt inventors to think of additional features or enhancements for the invention, that can help better distinguish the invention over competitors. This can not only be helpful in preparing the patent application, but also for marketing the invention.
Of course, there is no guarantee that the prior art search will uncover all relevant (or even the most relevant) references. This is simply because there is so much information available, that it would be impossible to find and evaluate every reference that is related to the invention.

Inventors often approach me, asking if I can help them with the design and manufacture of their product. Unfortunately, I have to explain that my area of expertise is in the patent process, helping inventors protect their inventions by filing and prosecuting patent applications in the U.S. Patent Office.

Surely, having worked with so many inventors I should have a vast network of engineers, designers, and manufacturers? But the patenting process is so distinct from the manufacturing process, that I rarely interact directly with any manufacturers. While my clients may work with manufacturers to turn their invention into an actual product that they can sell, I am typically not involved in these discussions in my role as a patent attorney.

However, I do keep my eyes and ears open, and try to pass along any information that might be relevant to clients of mine, or just those inventors who read my blog. As happened the other day, I was introduced to a design and manufacture firm that can help inventors realize their invention as a product.

T2 Design designs and builds prototypes and also sources manufacturers and provides engineering liaison with the manufacturer. Check out their website, and contact Paul Berman at T2 Design Corporation if you have any questions. Paul tells me that T2 Design has over 20 years of experience developing new products and was featured on ABC’s hit TV show “American Inventor”. Paul also tells me that T2 Design is rated “A” by the Better Business Bureau.

* And now for my legal disclaimer – Trenner Law Firm and patent attorney Mark Trenner do not have any professional relationship with T2 Design Corporation. The links provided here are for general information purposes only, and do not constitute any endorsement. Please do your own research to determine if a particular vendor mentioned on the ipatentattorney blog fits your particular needs.

In a previous post, I explained how a patent application cannot be enforced against an alleged infringer until it actually issues. The reason is simple. Until a patent application is examined by an Examiner at the US Patent Office, there is no guarantee that the inventor is actually entitled to patent protection for his or her invention. Indeed, many patent applications are filed each year, which are denied or otherwise go abandoned before issuing as a patent.

So you might ask, why should I even apply for a patent if I can’t enforce it until the patent actually issues? It can be years before a patent issues. I’ve had patent applications pending for clients of mine for 2 or 3 years and sometimes even longer.

It would be similar to say, why should I lock my front door if someone can still break in and rob my house. Just like the lock on your front door, patent pending status serves as a deterrent for reputable businesses. A reputable business knows that they at least need to investigate any claim of patent pending before they outright start producing a product, because a patent is valid for 20 years from the filing date after it issues. That’s a long time unless you’re a fly-by-night business that doesn’t plan to be around in 1 or 2 years.

Once a patent issues, someone who continues to knowingly infringe the claims of a patent can be liable for enhanced damages for willful infringement. Most reputable businesses don’t want to invest the time, money, and other resources into developing and marketing a product that they know will have to be shelved as soon as a patent issues, or risk being held liable for damages.

Not taking any steps to protect your invention is just donating the invention to the public domain for anyone to copy. You can’t license or sell the rights to your invention, because without a patent application or issued patent, you do not have any rights to license or sell.

Contact a patent lawyer, Denver patent attorney Mark Trenner at 720-221-3708.

The simple answer is no. Neither does a regular patent application or an issued patent for that matter. Just like a deadbolt lock on your front door does not “protect” your house against theft. Instead, it serves as a deterrent. If someone really wants to rob your home, they are going to do it regardless of whether you have a deadbolt lock.

Now for the technical answer. A provisional patent application (and even a regular patent application) does not “protect” your invention. You can only enforce an issued patent against an alleged infringer of your invention. This is because a patent application has not been examined yet, and theoretically, you could file a patent application for anything, regardless of whether you are entitled to patent protection.

Once a patent application has been examined by the US Patent Office and the Examiner has determined that the invention is entitled to patent protection, the patent can be enforced against an alleged infringer.

Enforcing a patent against an infringer typically means a court action and patent litigation. If the court agrees that the alleged infringer is indeed infringing, the court may issue a court order requiring the infringer to stop infringing the patent. The court may also award money damages. If the infringer knew of the patent and infringed anyway, the patent owner may be awarded enhanced damages – for willful infringement.

While a patent application cannot be enforced, a patent application does offer”patent pending” status for the invention as soon as the application is filed with the US Patent Office. As such, the application should mark the product embodying the invention, and any advertisements, brochures, and other literature about the invention, as “Pat. Pend.” as soon as a patent application is filed for the invention.

Warning: Don’t mark your product as patent pending until a patent application has actually been filed – it is against the law to do so!

Legitimate businesses should at least investigate a claim of patent pending. That is not to say there won’t be those who copy your invention. This is true even for patented inventions. Just as there will always be people who rob houses even if there is a deadbolt lock on the house.

Patent attorney Denver

There are two basic requirements any invention must meet in order to file a patent application. Of course there are other requirements too, but this post focuses on what is arguably the most basic patentability requirements.

First, is your invention new? Section 102 of the US Patent Laws requires that your invention be unique or “novel”. If you haven’t figured it out already, you can’t patent someone else’s idea or an idea that is already on the market – it isn’t any invention. It is usually fairly easy to determine whether you have met this requirement. If you’ve seen something else just like your idea on the market, or if you read about your idea in a trade journal or news article, then you know your idea is not new.

Second, is your invention non-obvious? Section 103 of the US Patent Laws requires that your invention not be obvious (or that your invention is non-obvious). But what does non-obvious mean? Your invention might be obvious if someone having ordinary skill in the relevant art would think of your idea when considering the state of the art as a whole.

In other words, if your invention is to make a software application (that is already available for desktop computers) available on a mobile phone, it is likely that your idea is going to be considered obvious. All you’re contributing to the so-called “invention” is rewriting an existing computer process for a mobile phone platform.

Don’t be offended. When I tell an inventor that their idea might be obvious, their immediate response is “I’ve never seen it before – if my idea is obvious, then why haven’t I seen it in the marketplace already?” This answer goes more to the first requirement – that your invention may be novel, but might still be obvious. The Examiners at the US Patent Office are allowed to cite multiple references (sometimes they cite to 3 or 4 or even more) and say that the combination teaches every aspect of your invention.

How can you tell if your invention is obvious? It is often difficult to determine if your invention is obvious. What one person might consider obvious, another person might consider to be non-obvious. A lot of time and money can be spent arguing with the Patent Examiners whether an invention is obvious or not.

Don’t just assume your idea is obvious. Even in the example above, your invention to make a software application available on a mobile phone might be not be obvious if you have to change way the software functions in some (non-obvious) way in order to make the software operate on a mobile phone. If you think your invention might be patentable, talk to a qualified patent attorney to learn the different considerations specific to determining whether your invention is obvious or not.

What if you have multiple designs you want to protect with a design patent? Unfortunately you can only include one design in a design patent. While you can  try to include multiple variations of your design in a single design patent application as “separate embodiments,” the Patent Office will most likely “restrict” your application to a single design and you will end up having to re-file those separately anyway – at added expense.

A better  option is filing separate design patent applications for each new design you have. Some tire makers, for example, file design patent applications for each thread pattern on their tires. This approach can help build your Intellectual Property (IP) Portfolio, which can add value to your business.

Of course, filing multiple design patent applications can get expensive. If budget is a concern, as it so often is, then you may need to make some business decisions. Try to determine which designs are most important to your business, and which designs you most want to protect. Then work with a patent attorney to file design patent applications only for a few designs.

What if your design might change in future? You may be able to file additional patent applications in the future for other designs. But if your design is still evolving in the short term, you might want to wait until the final versions are available before filing your design patent application.

As with utility patent applications, you can lose important rights to your invention if you delay. Even with design patent applications, you still need to be mindful of the bar dates and file before any of the bar dates (i.e., sale/offer for sale, publication, public use, or other public disclosure) prevent you from receiving patent protection.

It’s best to work with an experienced patent attorney who can help you sort through these and other issues particular to your situation, and help you develop a filing strategy that offers the best protection for your designs within your budget.

You can file a design patent application for the ornamental appearance of your product. That is, you can file a design patent application for your product for the overall look or design of your product (if the appearance is unique), even if the use or function of your product is the same as every other product on the market. For example, some tire companies file design patent applications all the time for the appearance of the tread on their tires.

What should I show in the drawings? The drawings should show the aspects of your design that you want to protect. For example, if your product is sold in an ordinary case, you may want the drawings to show that product that is inside of the case – not the case itself.

What views do I need to show in the drawings? You are required to show each view of your design in the drawings. Typically, the drawings should show a perspective (or 3-D) view of your design, and then right side, left side, top, bottom, front, and back views of the product. If two views are the same or mirror images of each other (for example, the right side and the left side views appear the same to an observer), then you can simply show one of these views and state in the design patent application that the other side view is a mirror image of the view that is shown in the drawings.

How much detail do I need to include in the drawings? The drawings should be as detailed as possible. Keep in mind that if you want to rely on a feature that is not shown in the drawings as a distinguishing feature of your design after you file the patent application, it will be difficult (if not impossible) to add these features to your design patent.

It is always better to provide “too much” detail, than not enough detail.

It’s tough in this economy to justify spending money on anything but the essentials. If you’re out of work, there is no telling when you will find your next job or how long your savings will last. If you’re working, there is no guarantee that you will still have your job 6 months from now. But what if you have an invention? Should you just wait until the economic outlook is all clear before moving forward to protect your invention with a patent?

Filing a patent application can be expensive. Patent attorneys can charge $8,000 or more just to file a patent application. Even less expensive patent attorneys typically charge $4,000 or more just to file a patent application.

But what if you don’t file a patent application for your invention? By the time the economy turns around and you decide to apply for a patent for your invention, it may be too late.

First, there are bar dates in the United States which prevent you from applying for a patent application if you have publicly disclosed or publicly used, sold or offered for sale, or published your invention more than one year before filing a patent application. Most foreign countries have even stricter standards, barring you from applying for a patent at all if you have publicly disclosed your invention prior to filing a patent application.

Your impulse reaction might be to just keep your invention secret. But what if someone else comes up with your idea? The United States is still a first-to-invent scenario under the U.S. Patent Laws. That means even if someone else files a patent application before you for the same invention, you may still be declared the inventor if you can document an earlier date of invention. But this only goes so far.

If someone else comes up with your idea and publicly discloses your invention, for example by selling the product on the Internet, more than one year before you file your patent application, then the bar dates will prevent you from receiving patent protection for your invention. In other words, your patent application will be rejected.

The longer you wait to file a patent application for your invention, the higher risk you run that you will not be able to get a patent issued for your invention. It’s best to talk to a patent attorney as soon as possible.

Trenner Law Firm offers low, flat-fee pricing for most patent services. Visit Trenner Law Firm today to learn more and find a patent attorney to help you!