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Patent Law Firm: us patent, patent search, patent attorney, patent an invention, patent idea, patent information, patent law, patent application, u.s patent, united state patent, patent lawyer, patent agent, us patent search, software patent, patent pending, patent research, design patent, patent protection, patent help, patents, invention marketing in San Francisco Bay Area, Silicon Valley, San Jose, Santa Clara.

Patent Agent FAQ | Inventor FAQ | Patent FAQ | Getting Started FAQ | Patent Search FAQ | Patent Services FAQ | Consultation FAQ

Inventor FAQ

I mail a description of my invention to myself and keep the envelope sealed, can I introduce this as solid evidence of the date I invented my product?
If I tell my idea to someone can they steal it?
Do I have to get a patent on my invention?
If I haven't seen anything like my idea anywhere doesn't this mean it’s most likely patentable?
I have a really good idea. What should I do next?
Are patents worthless to small entities because they don't have resources to sue businesses?
Aren't patents much too expensive for the independent inventor?
If I file with the PTO Document Disclosure Program am I not safe for two years like they say?
Do I need to make a prototype?
How do I go about getting a prototype built and market my invention?
What are my chances that my product will be a success?
How much money can my invention make me?
Can a typical inventor set up a company and build their own patented products?
How can an inventor make money with a patent?
What does it mean to license an invention?
Can inventors who are employed by a company benefit from their own inventions?
Who owns an invention developed by an employee while on the job? An employee who Who owns the patent on an invention created by a person as part of his or her job?
Who will help me market or license my invention?
What will likely happen if I try to license my invention without filing a patent application?
What does a patent do for me?

 

If I mail a description of my invention to myself and keep the envelope sealed, can I introduce this as solid evidence of the date I invented my product?
No! Absolutely not. This approach has no value legally. Just have a witness or two sign your document, and then have it notarized. Keep it in a safe place.

Why can't I sell my new idea to someone?
Companies generally don't buy ideas. They license patent rights. By "patent rights" we mean the legal rights available through a patent pending or an issued patent. If an idea is not patentable, it is fair game for all who know about it.

If I tell my idea to someone, can they steal it?
Commercial benefits can be lost when others copy your idea and place it into the commercial marketplace before you do or in competition to you. Under international law, patent rights can be lost by merely disclosing your idea to others without a confidentiality agreement, or first fling for patent protection. Prior to disclosing your idea to others, file a patent application. This can be done inexpensively using the new Provisional Patent Application.

Do I have to get a patent on my invention?
Patent protection most often makes sense, but it shouldn't be thought of as an automatic first step. Many products for sale do not have patent protection. Prior to filing for patent protection, you should try to find out if your product idea has market potential and if it is patentable. We suggest you approach experts in the field and disclose details using confidentiality agreements. This can be very tricky so obtain legal advice.

If I haven't seen anything like my idea anywhere doesn't this mean it’s most likely patentable?
Not so! Have a professional do a patent search to be sure the rights to your idea are available to you and, importantly, that your product will not be infringing someone else's patent rights.

I have a really good idea. What should I do next?
Four important steps should be taken: (1) Look at the market for similar items as well as for different items that fill the same need in an alternative way. (2) Check to see if your product actually works the way you think it can. (3) Evaluate if your idea can be put into the marketplace at a price that will sell. Building a prototype will help you determine cost. (4) See if you can obtain patent protection. These steps may be accomplished in any order, but the order shown is fairly common.

Are patents worthless to small entities because they don't have resources to sue businesses?
This may be true, however, if you license your patent rights to a sizable competitor of the infringers, the competitor may be most eager to assert your patent rights so that it can chase competition out of its marketplace. In this case, you both benefit at no cost to you.

Aren't patents much too expensive for the independent inventor?
The relatively new Provisional Patent Application can be prepared by the inventor without professional help, and filed with the US Patent Office for US$80.00. This preserves patent pending privileges for one year and allows finding and negotiating a licensing deal without a large cash outlay. A regular (non-provisional) application can be filed within the one year and is then eligible to capture the filing date of the provisional.

If I file with the PTO Document Disclosure Program am I not safe for two years like they say?
First of all, they don't say that. Secondly, NO! Under this program you will lose all rights to file patents outside of the U.S. if you disclose your invention to others.

 

Do I need to make a prototype?

If you can make an actual working product,  that should be one of the first steps. There's always room for doubt about how well something will work until it actually does. Even simple products commonly take two or three tries before they come out just right. In order to get patent protection, the inventor must be able to describe the invention well enough that someone "ordinarily skilled in the art" can practice the invention. The best way to know that the description is good enough is to have made and tested the product. On the other hand, if making the first article is going to be a long expensive process requiring outside investment, you may be better off looking into patent protection on the invention before actually making something.

How do I go about getting a prototype built and market my invention?

If you are a real "hands on" inventor, you may already have a prototype built.  If not, you probably know where there are fabricators and small manufacturers in your area that can build a prototype from scratch.  It isn't cheap, but developing an invention rarely is.  Inventor's Digest has advertisements from companies that help in preparing design drawings and building prototypes.

 

You are more likely to be successful knocking on your own doors or selling your invention yourself than by "handing off' the project to some hired gun who has less of an interest in the idea.

 

A very few invention marketers will accept an idea for a percentage of profits.  If they want to use your idea, that might be a sign it might have some merits.  But beware, some of these marketers will ask you to pay "expenses" which could end up in the thousands of dollars and may represent the true source of income for the marketer.

 

What are my chances that my product will be a success?

Industry experts indicate that about 1 product in 20 may get licensed and that only 1 in a 100 ideas make money for the inventor. Most new product ideas fail because bringing any new product to the marketplace is an extremely uncertain process, which has considerable risk and no guarantee of success. Using the three-step CES approach provides a structured way to document your idea for presentation to manufacturers for licensing and can improve your chance for success.

 

How much money can my invention make me?

It is extremely difficult to project the amount of money that can be made from an invention. There are a considerable number of cost variables and channels of distribution to complicate the calculation of your expected income stream. If you were to license your invention to a manufacturer, your return would be a small percentage (2 to 9%) of the wholesale selling price of the product. If the volume of the product sold is large, the income stream can also be significant.

 

Can a typical inventor set up a company and build their own patented products?

Yes, this option is always available. However, most inventors do not have the requisite manufacturing, engineering, or financial skills to successfully run a company that could produce the patented product in volume and we suggest other options be exhausted before you begin this huge effort. If you can license the product to a qualified manufacturer, there is much less investment on your part to bring the product to market so your risk to reward is maximized.

 

How can an inventor make money with a patent?

Some inventors start new companies to develop and market their patented inventions. This is not typical, however, because the majority of inventors would rather invent than run a business. More often, an inventor makes arrangements with an existing company to develop and market the invention. This arrangement usually takes the form of a license (contract) under which the developer is authorized to commercially exploit the invention in exchange for paying the patent owner royalties for each invention sold. Or, in a common variation of this arrangement, the inventor may sell all the rights to the invention for a lump sum.

What does it mean to license an invention?

A license is written permission to use an invention. A license may be exclusive (if only one manufacturer is licensed to develop the invention) or non-exclusive (if a number of manufacturers are licensed to develop it). The license may be for the duration of the patent or for a shorter period of time.

The developer itself may license other companies to market or distribute the invention. The extent to which the inventor will benefit from these sub-licenses depends on the terms of the agreement between the inventor and the developer. Especially when inventions result from work done in the course of employment, the employer-business usually ends up owning the patent rights, and receives all or most of the royalties based on subsequent licensing activity.

In many cases, a developer will trade licenses with other companies -- called cross-licensing -- so that companies involved in the trade will benefit from each other's technology. For example, assume that two computer companies each own several patents on newly-developed remote-control techniques. Because each company would be strengthened by being able to use the other company's inventions as well as its own, the companies will most likely agree to swap permissions to use their respective inventions.

Can inventors who are employed by a company benefit from their own inventions?

Typically, inventor-employees who invent in the course of their employment are bound by employment agreements that automatically assign all rights in the invention to the employer. While smart research and development companies give their inventors bonuses for valuable inventions, this is a matter of contract rather than law.

If there is no employment agreement, the inventor may retain the right to exploit the invention, but the employer is given a non-exclusive right to use the invention for its internal purposes (called shop rights). For example, Robert is a machinist in a machine shop and invents a new process for handling a particular type of metal. If Robert hasn't signed an employment agreement giving the shop all rights to the invention, Robert can patent and exploit the invention for himself. The shop, however, would retain the right to use the new process without having to pay Robert.

Who owns an invention developed by an employee while on the job? An employee who is engaged in research that could lead to patentable inventions typically signs a contract with his or her employer specifying that he or she will assign the exclusive rights in any invention to the employer. The employee may receive a bonus or a percentage of the profits earned by the invention. An inventor has the initial right to apply for a patent for an invention, even if the invention was created in the course of employment using employer resources.

If the employee and employer do not have an agreement about inventions created on the job, the inventor may retain the right to use and sell the invention. The employer is given the right to use the invention for its internal purposes, however, without having to pay the inventor.

Who owns the patent on an invention created by a person as part of his or her job?

The actual inventor is the only one who can file for a patent, even if the individual developed the invention in the course of his or her employment using the employer's resources. However, it is a regular practice for an employee of a corporation or university to sign a contract stating he or she will assign any patents received to the employer. Often a potential employee must sign such a contract as a condition for getting the job. Sometimes an employer may agree to share royalties with the inventor, or may give a bonus to the inventor. If there is no agreement of this sort, the employer may be given "shop rights," the right to use the invention for its internal purposes. No matter what sort of arrangement exists between the inventor and the employer, though, the inventor's name remains on the patent.

Who will help me market or license my invention?

The first and most important thing to know is to be wary of Invention Development Companies (IDCs). Many IDCs exists solely to prey upon inventors by giving them unrealistic promises of efforts that will be made to market their inventions.

There are a handful of legitimate organizations (in addition to patent attorneys and agents) that cater to inventors.

What will likely happen if I try to license my invention without filing a patent application?

Large well-known U.S. companies routinely return invention submissions unread, typically enclosing a brochure explaining the company's unwillingness to consider any invention unless the inventor first signs a form agreeing to release the company from any obligations other than to pay for patent rights. With such companies it is unworkable to proceed without having filed a patent application on the invention.

A major reason that large companies operate in this way is that it prevents lawsuits. When an inventor discloses an invention, it is difficult to determine after the fact to what degree the information disclosed was a trade secret. Thus, if the company later uses any technology similar to the disclosed invention, the company may have a very difficult time proving that it the technology was not a trade secret stolen from the inventor. On the other hand, the boundaries of what is covered by a patent are relatively well-defined, and large companies have procedures for checking what patents they might be infringing.

Conversely, if the inventor has filed a patent application, he or she is in much better position to prevent a company to which he has disclosed the invention from using the invention without compensation.

Inventors should beware, however, that suing to enforce patent rights can be expensive, often costing tens of thousands of dollars or more. If the expected royalties or damages are smaller than the likely litigation costs, then a patent may provide little recourse against an infringer. If an infringer is found to be a knowing infringer, however, the court may choose to treble the damage award. Sometimes a patent attorney can be found who will offer to represent a patent owner in return for a share of the proceeds.

 

What does a patent do for me?

A patent is simply a license to sue.  A patent grants its owner the right to stop others from "infringing" the patent by making, selling, or using the claimed invention without permission. Coverage does not rely on the accused infringer having copied or derived a product from what was patented – i.e., someone who thought the same thing up independently can still be an infringer. Conversely, someone who copies the basic idea behind a patented product but who comes up with another way of providing the end user with the same benefit is NOT necessarily an infringer. Patents generally only cover what they claim, and every patent is a challenge to other clever people to figure out a different, non-infringing, way of reaching the same goal.


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