I am frequently asked the same or similar question with respect to patent applications by independent inventors — How much information do I have to include in a patent application? Sometimes this question is prefaced by something like — I have the concept but I am no scientist and I don’t know how to actually create the invention. Other times still it will be — I have this great idea, what do I do?
The first thing to understand is that to be an inventor you need to have an invention. This is a critical starting point because you cannot patent or protect an idea or a concept. True, all inventions start with an idea, but an idea is not something that can be protected by any form of intellectual property protection. Said another way, you simply cannot patent an idea or concept. You also cannot copyright or trademark an idea or concept, but those are topics for another day.
In order to be an inventor the law requires that you contribute to the conception of at least a single claim in a patent application. This is one of the many places in patent law where the terms used complicate understanding. The “conception” spoken of in the requirement mentioned above is not merely an idea, but much more. The patent laws require that in order for someone to be an inventor they need to “dominate” the invention by exercising all mental control over the subject matter of the invention, from creation through testing. Thus, the patent laws do make a distinction between what we would consider an idea or concept as those terms are used in everyday language and “conception,” which is a term of art that has a specific legal definition.
So in order to be an inventor you must not only have the idea, but you need to have the know-how with respect to bring the invention into being. Another unique twist is that you do not actually have to bring the invention into being, others can do that, but they must be acting on your directions and under your supervision. This is how the leader of a laboratory who does not actually do the testing winds up being the inventor. He or she will have the idea and then explain to those under them in the lab hierarchy what needs to be done. They will also be present to answer any questions that come up and provide additional direction as required.
So what if you have a great idea and no where to go? It is very difficult, if not impossible, to make any progress if all you have is the idea and no ability to move forward. What you need to do is embark on research to figure out as much as you can. Ultimately, you may get to a point where you just cannot go any further and need some additional help from an engineer, scientist or your friend next door, to move the project forward.
What you should do if this happens is write up as much as you can about your invention. The patent laws require that in order to file a patent application you need to be able to describe in writing how others could both make and use the invention, with the same level of detail as would be required in an instruction manual. So write up as much as you can and then consider filing a provisional patent application or at the very least get someone, such as a notary, to witness what you have written up. Then you can move forward knowing that you have some documentation to demonstrate you were the creator of the invention.
Once you have done as much as you possibly can on your own you might want to consider hiring an engineering firm to provide additional information and input to put your invention over the top. The thing to remember is that if the person or firm you hire provides information that relates to the conception of the invention they will be considered a co-inventor. As a co-inventor they have rights to the patent. In order to get the help you don’t want to give up rights to your invention. You will want to have an agreement in place keeping ownership of the patent rights if you seek assistance from someone else, whether they are a professional or not. You should also have a confidentiality agreement in place, unless you are speaking with an attorney, in which case a confidentiality agreement is unnecessary. We have some free sample confidentiality agreements you can use as you see fit.
If you do seek the assistance of another with your invention it is always wise to have a written agreement that indicates what your agreement is up front, including that anything they do provide will be owned by you, even if they must legally be identified as an inventor on a patent application. Having an agreement in place upfront will save you all kinds of headaches down the road. Frequently people don’t want to ask for an agreement or spell out the relationship in advance, which I suppose is human nature because it happens so frequently. What I can tell you with certainty is that everything will proceed fine until money is involved, whether that is money being spent or money coming in. Once money is involved people have a funny way of changing and behaving differently, even greedy. So resist the temptation to jump right in before agreements are in place that protect you, protect the invention rights and define the relationship between and among collaborators.
Why is having an agreement so important? Absent an agreement co-inventors will own 100% rights to the invention. So your co-inventor can do whatever they want and you can’t stop them. If they make money you don’t even have the right to seek a portion of what they make because they own the whole thing, the same as you. So it is absolutely critical that as you proceed from idea to invention that you have appropriate agreements in place to ensure continued cooperation by anyone who might be an inventor and need to be named on a patent application. It is likewise critical to have the business end of things tied up tight so as to not create a messy problem later on. Those messy problems only provide a distraction, get you mired down in thing not related to success, take your eye off the ball and worst of all can cost real money to resolve if lawyers need to get involved.
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2 comments so far.
Jon SApril 30, 2011 03:11 pm
David – one option to address the issue you present would be for the independent inventor/startup company to take advantage of the new 102(a)(1) and 102(b)(2) by publicly disclosing their invention/idea (e.g., on a website or the like) as soon as they’re to a point where they the general framework of the invention is established, even if they wouldn’t have enough for 112-1st paragraph purposes as to a patent application.
First, assuming such a public disclosure occured before the 3rd party filed for a patent application on the invention/idea, the public disclosure may be able to serve as 102 art against the 3rd party’s application because the “enabling” standard for 102 references is a bit looser than it is for purposes of examining an application (see Rasmusson v. SmithKline, CAFC).
Second, assuming the independent inventor filed after the 3rd party did and an Examiner attempted to use the 3rd party’s application against the independent inventor, the independent inventor could rely on the new 102(b)(2) and say the 3rd party indirectly/constructively obtained the subject of the “invention” from the inventor by virtue of the public disclosure.
I’m not sure how plausible this is, but it’s a thought.
David BoundyApril 29, 2011 11:20 am
You’ve just hit the nail on the head here, and pointed out two respects in which the new bill just plain doesn’t work.
The strategy you described — “Do the best writeup you can, and file it as a provisional application,” or a notarized letter, WORKS FINE under today’s law, because as you note, it documents conception and diligence. However, under the new bill, a “good try” provisional doesn’t work. Conception and diligence are IRRELEVANT to priority. The only provisional that creates ANY value is one that’s a full § 112 ¶ 1 description. Quick-and-dirty won’t cut it under the new law. Under the new law, a provisional that accomplishes any useful purpose costs almost the same as a full-blown nonprovisional.
In the real world of real businesses and real investors, a confidentiality agreement is a nice idea. But all venture capitalists and most strategic partners to whom an inventor would like to make a pitch won’t sign, at least not for a first pitch. Insisting on a confidentiality agreement will end most of these relationships before they begin. Under today’s law, the implied obligation of confidentiality and the § 102(a) prong of the grace period let inventors and entrepreneurs talk to investors and to strategic partners. But the new bill cuts both of those away. The new bill substitutes nothing for today’s § 102(a), and substitutes a provision that only gives confidentiality treatment to “commonly owned” disclosures. That is, if an inventor makes a pitch within his own company, he’s all set, but if an inventor has to look outside his own four walls for investment or marketing or manufacturing or R&D, the new statute leaves him totally screwed.
And that’s why this bill doesn’t work for independent inventors and startups and small companies that need to get resources from outside.