Safe licensing of new product

Unfortunately there is no magic bullet. Applying for a patent is your only means of protection. I don't know your situation, what your 'device' is etc, but if your invention isn't worth the min. $5,000+ to apply for a patent then I wouldn't worry about it being copied. Without a patent it's very difficult if not impossible to license your design since you have no legal ownership to it. Are these manufactures making this 'product' for you or are you selling it to them? I would stay away from any "patent/invention services" and stick with a competent patent attorney. Also you should know if you sell an invention in the US you have one year from the first day its publicly available to file for a patent. However, in Europe you need to file before publicly selling to retain full protection. If you do nothing else file for a provisional patent with the USPTO, this will at least establish an official date which you started working on your "invention" and will give you I believe 1 year to file for an official patent.

What are the legalities if I came up with an idea for a product, then I did a patent search on the USPTO web site and someone else has put in an application for a similar idea. The other guy's idea shows up only when I search for patent applications, but it doesn't show up when I search for granted patents. Am I dead in the water or can I still proceed with prototyping? Thanks for any help.

This is where a good patent law attorney is needed. Bottom-line: You can always apply for a patent, regardless if it's been patented already or not. How similar are these ideas? What are the claims the other individual is patenting? If someone has filed an application already for what you are trying to do and they are granted a patent for all of their claims (normally not the case) then once this happens they most likely will send you a letter asking you to cease production of your "infringing product/process" or buy a license to use their patented "product/process" If one of your claims it different then theirs then you can possibly receive a patent for that claim. You never know they might not even follow through with a patent after filing the application give the costs involved. What type of patent are you trying to apply for?

There is sure way to start your patent on a low budget. First write yourself a letter with a brief discription of your product, send it registered mail to your self and donot open this letter at all. Put in a safe place of storage, bank sfe deposit box works well. This is the first stage of your patent, it is commonly known as a poor mans patent. Next get everything put together, there is a place you can search on the web that will help you in the particulars that will give most of the information in subject listings of most patents submitted. It is hear in the globalspec website. http://patents.globalspec.com/Search/PatentSearch Then once you have searched and found nothing simular toyour patent, I would recommend the listed attourny office that is near the patent office. They give you up to one year to fund your retainer fee of ~$750.00. Once this is started, you will spend a minimum of $5,000.00 to get your patent processed. When my second patent was processed, it ran me in and over $22,000.00, but is was well worth it for the money spent.

I would agree with many of the other coments, a patent is the way to go, but not knowing your situation its hard to juge. I am going through a similer product development process myself. If you are concerned that the people your contracting to manufacture the prototypes for you will take your Idea. All you can do in the mean time is split the manufacturing of components between different companies and do the assembley and testing your self. That is of course you have the equipment time and ability and that this is a vaible option. Good Luck

I've actually got a reasonable amount of experience in this, both having handled outsourcing of products for companies that were governed under IP as well as running my own company doing design and using a CM for manufacture with a product that is in process for getting a patent. All of the responses I have read so far have been pretty good advice, in that they are directing you to an attorney. However, you have more options than you might think ... First of all, non - disclosure agreements are very common between inventors and contract manufacturers. The non - disclosure agreement is a contract, and if the CM violates the contract by disclosing what you have regardless of the level of IP coverage, you have some legal options, which isn't necessarily the worst situation as not all ideas are equal. Second of all, you have a couple of options with regard to the patent process itself. There is something called a provisional patent which essentially is a formal way of establishing your date of invention to the patent office. These are cheap and easy to get (if you do the drawings) and outlines exactly what it is you are hoping to get the patent on. By doing this you put yourself on a 1 year clock. You have 1 year from the date of submission to decide whether the idea is viable as a product, and then convert to a patent or lose the right to patent it forever. At the end of the year, you can convert to filing for a full utility patent, but are not guaranteed to get it granted. Last, with regard to a patent in general. There are 4 criteria to getting a patent: 1) It must be an improvement over prior art - you must be able to show how it is better in the design disclosure. 2) It can't violate the laws of physics - no perpetual motion machines please! 3) It must be original - You have to have invented it. 4) It must be non - obvious - a person of average skill in the field must not be able to arrive at your invention if all of the prior art is available to review. In the US, patents are based on the date of invention (well, it isn't quite that simple, but more or less) so even if you see an application, if you believe for some reason that you have invented that and have it documented as such before the other person invented it you have a chance. In this you will definately need a lawyer. However, one thought is this - if you invented something novel in the first place, it is worth taking a look at the prior art that you think was your idea and see if you can figure out the next great improvement. If you were smart enough to do this with one set of prior art, you might be smart enough to do it at the next level up. If you really want to pursue this, it is definately worth spending the few hundred dollars to spend an hour or so with a good patent attorney and discuss your options. They are a legally bound entity for telling your invention secrets to, and can give you advice on how to proceed. If you work in a tech company - ask their legal group for a recommendation. Good Luck!

If you are smart enough to come up with your invention in the first place, don't sell yourself short on producing your own patent. I did my own in 1996 before patents were available on line, so you have a huge advantage. I went to Rutgers, one of the few repositories of all patents on microfiche, studied how the succesful patents were structured, did my own CAD and calculations, and got my patent. I would recommend that instead of just citing prior art, you include a paragraph of why your invention differs from each of the prior art patents that you cite. Best of luck

I have worked in new Product Development and Commercialization in Canada for several years. If you have an invention or thinking about one, it is important to take the right steps from the beginning; 1) buy a copy of the book titled "Patent It Yourself" by Nolo Books, written by a retired Patent Examiner, and by far the best book I have seen on the subject. (2)keep a separate hardcover notebook when you start thinking or designing your invention, keeping notes dated and signed by you for each major entry or drawing. (3)Conduct a patent search yourself first using the USPTO site for US Patents, and the European Patent Office (http://ep.espacenet.com) or WIPO (http://www.wipo.inT) for free with complete text and diagrams for World Patents. (4) For a more thorough search, use a University Search service-which will sign a Non-Disclosure-such as http://www.patscan.com/ (University of British Columbia - about $250-500 Cdn) they have access to better searches also using Lexis-Nexis (5) There are 4 ways to protect - "Poor Man Patent" where you mail yourself register letter enclosing invention description and drawing; Registering the same documents with the Patent Office for US$100 that preserves your date for 3 years but does not give you disclosure protect, but is somewhat better than "Poor Man" if it comes down to a Court Challenge; Provisional Patent is best and cheapest way to protect your product if going to 3rd parties for licensing or manufacturing - many companys will not sign Non-Disclosure Agreements (NDA's), BUT then you better make progress within 12 mos because then you either file a full patent or lose your rights. A Provisional patent cost you US$100 to file for Individual or Small Business, use a lawyer and it will cost you US$1500~$3000, depending on how honest they are. ANYONE can file a Provisional Patent-its not that hard and the book mentioned above will walk you through it as will the USPTO site. Look at similar patents wording and just reword it as it suits your invention. The Notebook of your Development is apparently priceless if it comes to a Court challenge - a Court has never disputed date and right of ownership if you have one and the opposing party cannot.Provisional gives 12 mos of protection to show 3rd parties(but not commercialize), do market research with product, enter into agreements; then you must file patent in USA, this gives you additional 12 mos to file for World Patent through a PCT which generally you would only be interested in the top 5~15 countries, however, you still must file a complete patent in each of the PCT countries within 24 mos. Bottomline - keep a notebook on your invention development, do a thorough search, determine if there really is a market for your invention, file a US Provisional Patent, buld your commercial prototype - do your enduser market research - get 3rd party interest to license,market or manufacture, finally file full patent in USA, followed by countries that matter.

A couple of notes regarding these recommendations. First, the Nolo Press Books are excellent. I have 2 editions of them myself based on the change in the patent laws changing how long a utility patent is viable. Second, Patent It Yourself, Nolo Press, specifically says that the "Poor Man's Patent" of mailing drawings to yourself in the mail is a myth and does not stand in court as a way of establishing date of invention. It gives detailed instructions regarding what an invention notebook should look like and they are a pain to follow, but valuable none the less. Third, a provisional patent simply establishes your date of disclosure to the government in a formal way. In the US, patents are given priority by date of invention vs. date of filing (which is not the case in other countries, Patent It Yourself has a section on that) so IF your invention could get to the level of being granted a patent, THEN your provisional would represent your formal date of disclosure and baring other evidence your date of invention. Fourth, patent searches are now easy: www.uspto.gov. This is the actual US Patent and Trade Mark Office website and provides free access to searching virtually any patents, and many applications. Ultimately, whether you go to an attorney or not regarding your invention has almost all to do with what your invention is, how complicated it is, and broad a scope of claims it has. For an interesting story regarding exactly how this is a relevant question, (as well as the idea of how tricky date of invention can be) do a google search on Gordon Gould and Patlex. It is the history of the laser (you know hundred of billion dollar industry in everything from CD players to 747 size weapons) and the patent battles associated with it. Once you have done enough due diligence regarding your invention you should probably be in a position to decide whether a few hundred dollars to talk to an attorney about your legal options are really worth it.

contact www.donmoyer.com or www.sabretechnical.com, great people, they are with a law school in Chicago, IL and can help get your patent. no more needs to be said, just do it. follow your dreams and don't quit! dave cz.

Whatever you do before you "talk" is to have them sign a "Confidentiality Agreement" and clearly state that severe penalties for disclosing, marketing, redesigning etc. without your express permission will result. Get that signature first! Graphi

There is very little that a small time inventor can do to protect themselves from a potentially carnivorous corporation today. Yes, I would encourage you to do a thorough patent search, public domain search and apply for an inexpensive PPA (provisional patent – throwing every iteration possible into the supporting material sent to the patent office. Next – make an attempt to have them sign an NDA – non disclosure agreement before viewing and reviewing your ideas. (most will not sign these today and expect you to files for governmental (patent) protection first as your means to defend yourself. In fact some companies will try to get you to sign their NDA which can be very unilateral – giving them a significant advantage in terms of intellectual rights. You want to make sure that the NDA you sign/execute provides for mutual rights. With a PPA filed prior to disclosure (giving you one year to file a full patent application) all materials should be marked "patent pending" - with this – you do not need to disclose the status of your patent filings to the party you are presenting your ideas to. You want to show some IP protection prowess here as your best offense is a good defense. This is not to say that every company is ready to rip you off, but today, IP (intellectual property) is a risk based decision for potential strategic partners. If they really like your idea, they will look at the probable claims you may be seeking under patent protection. (don't give them specifics in your first meeting). They will look at their ability to go around your patent with other or next generation claims. They will look at the value of your ideas to them in terms of potential revenues and profits. They will spend some real money to look at the current patents issued in the area as well as anything they can find in the public domain that will demonstrate that the ideas you presented are already in the public domain and therefore not protected by an NDA or PPA. (it is likely with limited funds and resources that you only found a small percentage of what is out there in the world of your idea. If they are still interested, they will look at the risk of infringing on your ideas and your ability and or your willingness to go after them legally and seek damaged against them for patent infringement – which can take over a decade and several hundred thousand to a few million dollars to defend in court. Here, the only upside is that if the courts find that a company knowingly infringes on your idea, you may be awarded triple damages. Bruce Winkler www.ideatomarket.com www.brucewinkler.com