copyright 2007 inventive solutions 1 protecting your invention 101 inventive solutions

Protecting Your Invention 101

Inventive Solutions

Copyright 2007 Inventive Solutions2

Outline of Topics

OverviewIntroduction

Trade SecretsPatents – Design & Utility Provisional ApplicationsInternational Applications

Questions

Less

More

EFFORT

SECURE


Overview: Earliest Inventions

From History of USPTO webpage


Overview: Modern Inventions


Introduction

Are you inventing or invention-curious? Believe the patent process too expensive? Expect to develop new products for your

business in the near future? Questions to be answered:

How to disclose my ideas while minimizing the risks? When should I disclose my invention? Who should I disclose it to? What are the best methods to protect my invention?


Trade Secrets


Trade Secrets – Basic Info

Legally protected as long as not in public domain & reasonable efforts to keep secret

Duration

Locks, Notices of Confidentiality, Not telling anyone, Virus-ware, Security Procedures.

Costs

Valuable & Secured (also, document well if item is a complex article of manufacture)

Criteria

Client lists, Formulas, Recipes, IC designs, Business plans, Sales strategies, Lab notes

Examples

Confidential Business InformationDefinition


Trade Secrets – Theory

Information used in a business, not generally known, of some economic value, and maintained in secrecy

Rights protected only if reasonable steps taken to ensure confidentiality with no casual disclosures (require NDA before disclosing)

Canada - Protected by common law = civil action = breach of confidence, contract law

U.S. - Protected by proprietary right = criminal action = felony, may recover losses


Trade Secrets – Application

Use Non-disclosure Agreements if possible Identify valuable secrets, enact policies to

secure from unauthorized access No Publication or Public disclosures Grace period (allows limited disclosure)

If inventor applies for patent or design within yearNot all countries allow grace period

Advantages – indefinite protection, in any country, with no processing delay or fees due


Patents – Overview


Patents - Basic Concepts

a discovery (idea) cannot be patented, only an invention (its physical manifestation)

government certifies the origin of an invention and protects its owner’s exclusive rights

equivalent to registering a property deed/title limited monopoly creates incentive to innovate cost of proving & keeping ownership 90% are improvements to existing inventions


Patents (Utility) – Basic Info

20 years Processing time: 18-24 months(*Higher fee if company > 50 employees)

Duration

Apply + Exam: CA$700-1400; US$395-790Allowance: CA$150-300*; US$685-1370

Costs

New (1st in world), Useful (workable), andNon-obvious (to person skilled in trade)

Criteria

Machines, mechanical devices, methods of manufacture, matter, software algorithms

Examples

Exclusive right to manufacture, use, or sell a specific product or process

Definition


Patents (Utility) – Details

Front Page Background Summary Description Drawings Claims


Patents – Front Page

Title Inventor Number Date Classes Prior Art Abstract Drawing


Patents (Design) – Basic Info

10 yrs* (Can) - 14 yrs (US) Processing: 8-12 mths (*Fifth yr maint. fee: CA$350)

Duration

Application: CA$400; US$175-350 (SE/LE) Allowance: CA$0*; US$245-490 (SE/LE)

Costs

application to a finished article features of shape, configuration, pattern or ornament

Criteria

Statue of Liberty, Coke bottle, office chair, architecture, automobile, airplane, spoon

Examples

Exclusive right to make, import, rent, or sell the aesthetic qualities of a functional article

Definition


Patents (Design) – Examples

visual ornamental characteristics embodied in, or applied to, an article of manufacture

Sometimes used when patent unavailable Beware of Scam Artists – design is not utility


Provisional Applications

Must apply for ‘utility’ before one year or risk losing rights forever (if disclosed)

Duration

US$100; Invention Report complies with written description requirements (w. drawings)

Costs

Utility patent references provisional (best way) Provisional is converted to utility (difficult)

Criteria

Protects disclosure to manufacturers, VCs, Investors, Licensees (patent pending)

Examples

Low-cost non-formal pre-patent filing method used to establish priority (only in US, NZ…)

Definition


Provisional – Issues

Filed up to one year following the date of first sale, offer for sale, public use, or publication

May preclude patenting in foreign countries Only available in US, NZ, EPO… Time to refine product, test market & raise $$$ May be combined with PCT (Intl.) application Only description & drawings required Establishes earlier effective filing date


International Applications

Patent Cooperation Treaty (PCT) allows multiple country filings

Delays national filing 30 mths from priority date More cost effective than filing in each country Begins national patent in each country filed Includes International Search Report Can be filed at National Patent Office Must meet international standards National examination delayed


Patents – Process

Prior Art Search to determine novelty (hours) Document invention & write patent (tens of hrs) Create patent drawings (hours) INVENTOR-IP Svc.

File application & pay fees PATENT OFFICE

Pay another fee to examine for patentability All examiner objections resolved (hopefully) Patent allowed & final fees paid Certificate issued (takes 18 months – 2 years)


Patents – Risks Without

First to file = Canada & most of world Rights could be lost if published w/o registration Premature disclosure without protection Infringement challenges or litigation possible Competitor files same idea during application No patent if grace period expires with disclosure Be forced to stop selling, refund $, pay royalties


Patents – Benefits With

Burglar alarm or roadblock to infringers If well written, prevents infringement & litigation Gold standard for investors (VCs) Can license to manufacturers for royalties Superior protection to trade secret (most situats) Certifies your right to sell & manufacture May be used as asset to negotiate more funding


Patent & Research Services

Product development experienceCertified US Patent Paralegal Free confidential consultationNon-disclosure protectionAffordable ratesBulletproof IP

Thank You

copyright 2007 inventive solutions 1 protecting your invention 101 inventive solutions

Documents

inventive solutions

utility slide

patents overview slide

process definition slide

nz definition slide

patents utility basic

patents utility details

history of uspto webpage