My idea is the next big thing!

My idea is the next big thing!

Many excited new inventors that call the Denver patent law office of patent attorney Mark Trenner says “My idea is the next big thing!” The inventor believes their idea is going to take the market by storm, making them and everyone in their path rich beyond their dreams. Their invention is the next “million dollar idea!”

While I wish this were true of everyone who called my office, and indeed, true for inventors everywhere, many times this is not the case. For various reasons, many times ideas go nowhere, either because the idea isn’t that significant, the inventor just doesn’t bother to pursue the idea to help make it a big hit in the marketplace, or worse, the inventor doesn’t take the proper steps to develop and protect their invention.

These two steps cannot be emphasized enough: (1) develop the invention beyond a mere idea so that it can be embodied as a product you can take to the marketplace, and (2) take steps to protect the invention so that it remains competitive and doesn’t end up in the public domain.
Working with a registered patent attorney is the best way to take the proper legal steps to protect an invention. It will cost a relatively significant amount of money, but this is an investment in the product that shouldn’t be overlooked. Skimp on legal protection now, and pay the price later.

Do I need a nondisclosure agreement or confidentiality…

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.

Patent Attorney Answers From Denver's Mark Trenner…

Will a patent attorney steal my idea?

Denver Patent Attorney
Denver Patent Attorney Mark Trenner

Many inventors are very protective of their ideas – as well they should be. There are a lot of unscrupulous people and even some unscrupulous businesses. While I can’t speak for other patent attorneys, I can speak for myself.
I make a living helping inventors protect their invention. I take my duties as a registered patent attorney very seriously. And this includes the duty of confidentiality. I would never violate an attorney-client confidence. And I would certainly never steal an inventor’s idea.
That being said, however, it is important to remember that you should never discuss your invention in detail with an attorney  until you have formed an attorney-client relationship with that attorney. An attorney-client relationship is typically established by signing a Fee Agreement with the attorney. You should never email details of your invention to a patent attorney before both you and the attorney have signed the Fee Agreement. That way, there can be no misunderstanding that attorney-client confidentiality will apply.

What can a patent attorney do for me?

What can a patent attorney do for me?

Inventors ask all the time “what can a patent attorney do for me?” This question is usually preceded or immediately followed with “can I file a patent application by myself?” Because these questions are related to one another, Denver patent attorney Mark Trenner answers both questions in this post.
Can you file your own patent application? Yes, you can file your own patent application. However, I don’t recommend inventors to file their own patent application. In fact, I strongly recommend that inventors DO NOT file their own patent application.
I have had too many inventors come to me after they have already filed their own patent application, who regret having done so. The patent application process is extremely complicated. Even after graduating law school and passing the patent bar exam, most patent attorneys spend years working under an experienced patent attorney before they are competent to prepare and file patent applications on their own.
So what can a patent attorney do for you? In addition to understanding what to say and what NOT to say in a patent application, a patent attorney can also help an inventor think through aspects of the invention that are important to include in a patent application, that the inventor may not have thought about on his or her own. For example, a patent attorney may ask the inventor how something works, or how something is connected. A patent attorney may also think of alternative ways of doing the same thing, that should be included in the patent application in order to avoid someone designing around the patent once it issues.
Most importantly, a patent attorney can help an inventor avoid mistakes – costly mistakes that often cannot be fixed after the patent application has been filed. If you file a patent application by yourself and make a mistake, the patent application may be invalid and the invention can even become public domain, where the inventor has absolutely no protection.
If you are thinking of filing your own patent application – stop – talk to a patent attorney first. If you already filed your own patent application, you should still contact a patent attorney as soon as possible to find out if any mistakes were made, and if so, whether the mistakes can be corrected or at least mediated.

Read Mark Trenner’s Post: Is My Invention Protected?

Discussing Denver's New Patent Office

Mark Trenner went on air this morning during the 10 o’clock hour on AM 630 to discuss the new Patent Office satellite office just announced for Denver. Mark was asked how this might make it easier for inventors to obtain a patent. While everything can be filed electronically, there are times after a patent application has been filed and the Examiner rejects the claims as being anticipated or obvious in view of an earlier invention or other disclosure. While the inventor has an opportunity to file a written response, sometimes it can help to discuss the differences of the invention with the Examiner. This conversation may be over the phone, but in-person meetings often are worthwhile. Currently, an in-person meeting with a Patent Office Examiner to discuss a pending patent application requires the inventor and his or her attorney to travel to the Patent Office location in Virginia. So having a satellite office in Denver may make it easier for inventors in Colorado to have in-person meetings with the Examiner.

Can I change my patent application after it is filed?

Clients often ask me if they can change their patent application after it has been filed with the Patent Office? Yes, but there are certain restrictions to be aware of.

The most common mechanism for changing a patent application is by amendment. However, there may be times when it is necessary, or desirable, to file a divisional application, a continuation application, or a continuation-in-part application. What is the difference between a divisional patent application, a continuation patent application, and a continuation-in-part patent application? There are subtle, but important differences.

A divisional patent application is typically filed when the Examiner issues a restriction requirement (saying that you have tried to claim more than one invention), and makes you withdraw the claims. You can file a divisional patent application including the withdrawn claims. A continuation patent application is typically filed when you want to file another application with claims which were described and enabled by the specification (and/or drawings), but not claimed.

Because no new matter is added in either the divisional or the continuation, these patent applications will have the same filing date as the parent application, provided the parent application (or a child application) is still pending. Therefore, it is important to discuss the possibility of filing divisional or continuation applications before your patent application issues or goes abandoned.

A continuation-in-part (CIP) may be filed to add new material to the specification, drawings, and/or claims. CIP applications are typically considered when the inventor makes a change or addition to his or her invention. Anything which was previously described in the parent application specification and drawings, receives the filing date of the parent application. But any new material receives the filing date of the CIP application. Therefore, the bar dates apply to any new material. That is, if the new material was publicly disclosed or publicly used, sold/offered for sale, or published, the CIP application must be filed within one year of such an event or the new material is considered to be in the public domain. Just as with the divisional and continuation patent applications, a CIP application also must be filed before issuance or abandonment of the parent application (or a child in the chain of applications if there is more than one patent application).

Changes with the new patent legislation which was enacted in 2011 may also affect your filing strategy. Therefore, it is important to discuss any changes or new aspects of your invention with your patent attorney as soon as possible to avoid losing important legal rights to your invention.

Colorado Patent Attorney Mark Trenner featured on Denver KHOW Radio 630AM

Tune in to Denver’s KHOW Radio Station (630AM) on Thursday, April 19 from 9am-12 noon. Colorado Patent Attorney Mark Trenner will be featured in the Help Center, answering your questions about inventions, patent applications, and the patent process.

Mark Trenner is registered as a patent attorney before the US Patent Office and to practice law in the state of Colorado. Mark Trenner works with individual inventors, and businesses of all sizes, to protect their inventions and other intellectual property (including trademarks and copyrights) in the United States and throughout the world.

The software patent debate

I often receive comments from people who tell me “software shouldn’t be patentable.” To clarify, under Section 101 of the US Patent Laws, software per se (by itself) is not patentable. But software can be claimed in a patent application in such a way that it does comply with the US Patent Laws. That is, the claims of a patent application can be written such that the software is logic instructions which are stored on a computer readable medium (e.g., a hard disk drive) and executable by a processor to transform a machine (e.g., a computing device) to carry out transformative operations. See the US Patent Office Guidelines for computer-related inventions.

Perhaps this is a technicality, and I’ve had people tell me that this is still “patenting software.” Now we get into a philosophical discussion. For example, I’ve had someone tell me recently that “software is essentially a book written in a different language, and thus software should have stayed within the realm of copyright protection.” While I disagree – that is a book cannot be used to produce any useful result by itself – again, this is merely a philosophical discussion.

The reality is that software can be patented (if new over the prior art as defined by the patent laws, and if properly claimed). The reality is that if you are a small business or startup, or even an individual inventor that has new software, you should discuss your invention with a patent attorney and seriously consider filing a patent application for your software. We can argue all day about whether software should be patented. But the reality is that the smart companies are patenting their software everyday. Don’t believe me? Take 5 minutes and do a quick search at the US Patent Office patent search site to see some of the patents granted to major players in the software industry, like Microsoft and Apple.

Inventors: Basics You Need To Understand About Provisional Patent Applications

Inventors: Basics You Need To Understand About Provisional Patent Applications

A provisional patent application automatically goes abandoned after one year from the date of filing. Therefore, inventors must file a regular patent application claiming priority to their provisional patent application before the one year expires.
Inventors often ask “Then why should I file a provisional patent application if it goes abandoned after one year?” Denver patent attorney Mark Trenner offers these four very good reasons for filing a provisional patent application:

  1. Filing a provisional patent application may be a good idea if you are watching your budget. As you will see below, provisional patent applications can be filed relatively inexpensively. After you file a provisional patent application, you can mark your invention (and any marketing materials describing your invention) as “Patent Pending.” This shows customers, competitors, and potential investors that you are serious about your invention.
  2. You have up to one year to test-market your invention before investing in a regular patent application. If your invention is a success, you can file a regular patent application and claim priority to your provisional patent application. If after 9 or 10 months you realize that your invention just isn’t being received that well, you can drop it and you haven’t spent that much money yet.
  3. If you will be making changes to your invention, the provisional patent application at least identifies those aspects of your invention that belong to you at the time of filing. Any changes and improvements can then be added to the regular patent application without having to file a separate application.
  4. A provisional patent application can also be evidence that the invention belonged to you if someone you share your invention with later claims that the invention is theirs.