1. An Invention Must Be “NEW”.
If you have an idea I’m sure you have looked on the internet, performed a Google search, checked Amazon, and tried to determine if anyone is selling your idea. If you’ve started selling the product yourself, then the idea is not considered “new,” but you have a deadline to file a patent application within a grace period. These are great first steps, but you also need to determine if there are any publications that show your idea. Publications include any publication in the world that is available to the public. Even after you have scoured the internet and retail stores for your invention, you should have a professional patent search done to determine if the invention is new.
2) You Must List the Correct Inventors.
The inventor(s) are the people who conceived the new idea. The inventors listed on a patent must be the people who came up with the new idea–not the owner and not the people who were just on the team. Who is listed as an inventor may change depending on what gets approved by the patent office. Some business owners or managers want their name on the patent since they were leading the team. The determination of who is an inventor is a legal determination, not a business decision. It is important to get this right so that the patent is not later declared invalid for failing to list the correct inventors.
3) Patents are Granted to Inventors.
The inventor(s) own the patent rights by default. The invention can be assigned to the company before the patent is even filed, but without this important step the inventor(s), and not the company, own the patent. If the assignment is recorded before the patent issues, then the company will be listed as the owner of the patent.
4) You Must Be the First to File.
A patent is awarded to the first to file (or publish). This rule changed recently. The old system was a first-to-invent system, where different inventors that each filed separate patents about the same time for similar inventions would present proof of who conceived the invention first. Now we have a first-to-file system where the first person to file for a patent application is granted the patent, even if they were not the first to conceive of the invention. The one exception is that the first person to publish the idea can get a patent even if they’re not the first to file, as long as they meet the other deadlines for filing. The patent system requires more action than just being the first one to write down an idea.
5) You Need a Patent Strategy.
A single patent may not be enough to protect your invention. The current patent system favors narrower, more specific patents. This opens the possibility of someone producing a similar product that is not covered by the patent claims to avoid infringing on your patent. In order to prevent competitors from avoiding your patent, you’re likely to need multiple patents, but these can be filed one at a time to prevent a heavy upfront investment. It’s important to talk business strategy with your patent attorney, and to find out how your patent strategy supports your business strategy.
6) You Need a Trade Secret Strategy.
Inventions start as trade secrets. If you do not have a trade secret strategy set up, you are risking losing your ideas and your potential patent rights. Your patent attorney can help you determine if you have a sufficient trade secret strategy for your company, including updating your agreements to meet new laws governing trade secrets.
7) You May Need to License Rights from Others.
Even if you are granted a patent, you may still infringe on the patent rights of others. When you’re granted a patent you have the right to sue others for making, using and selling your invention, as defined by the patent claims. Patent rights, however, do not give you a right to make and use your own invention. A search prior to filing a patent is to determine whether the idea is new, but a different search needs to be done to discover the patent rights other people have to learn if you will be infringing upon patent rights of others.
8) You Must Enforce Your Own Rights.
A patent right is the right to sue others. The government will not sue your competitors for patent infringement. To successfully sue someone for infringement you must show that they are infringing on all elements of at least one of your patent claims, not just the general idea of your invention.
9) Your Patent Can Be Canceled.
There are various ways that a patent can be canceled after it is granted. Some of these have to do with whether you tell your attorney everything you know about the existing devices or solutions, so that they can fulfill your duty to tell the patent office. If additional patent searching shows a reference from before your patent application that was not previously considered, the patent office can “reexamine” your patent. This is why quality matters in your patent search and patent application.
10) There is No One-Size-Fits-All Patent Strategy.
When investing to obtain patent rights, the strategy needs to be tailored to your business goals and budget. Some strategies cost more in the beginning but save money in the long run. Other strategies require regular investment over a longer period of time to achieve your goals. Obtaining a patent is usually at least a twelve-month process when we expedite the proceedings, and is normally closer to a three year process.
Understanding these 10 things will help you discuss the proper intellectual property strategy for your business with your phoenix patent attorney. At Inspired Idea Solutions Law Firm, we focus on your goals and work with you to create a strategy that will build valuable intellectual property in your business for years to come.