I received a question today from an independent inventor like yourself who is hoping to have publication of his patent application within few weeks. He also indicates that his invention may be protectable as a “trade secret” (as interpreted by me).

Well, I probably wouldn’t post this question and answer except for the fact that I have received the same question before.

I think that inventors are anxious to see progress in the oftentimes lengthy patenting process. Publication of their patent application is something “tangible” for them to hang onto.

In case you do not know what I a talking about, patent applications filed in virtually any country of the world are published 18 (eighteen) months after the “priority date” (a patent application may claim priority of a previously filed co-pending patent application a the time of filing) of the patent application for the whole world to see.

This publication is automatic unless you “opt out” of filing foreign patent applications based on the patent application at the time of filing the patent application.

Opting out on future foreign filings is usually not done as inventors usually want to “keep their options open” for filing foreign patent applications. For example, even though an inventor knows that he/she does not have the rather large sum of money to file for and get patents in all desired countries, he/she is knowledgeable enough to know that preserving the right to file foreign patents (by not opting out of foreign filings and not prematurely publicly disclosing the invention) might be economically valuable, say for instance an international company subsequently comes along that will pay “big bucks” for your invention if they can still patent it in forein countries where their markets are located.

Such foreign patent applications (or a Patent Cooperation Treaty Application – discuss with your patent attorney) are usually filed within the one year period after filing the initial patent application to claim priority thereof under the Paris Treaty (non-treaty countries must be filed in before a public disclosure to have an enforceable patent issue – discuss with yor patent attorney).

Inventors usually file foreign patent applications in those countries where they: 1) want to exclude competitors (i.e. the main markets for their inventions – including where they want to license their invention; and 2) want to prevent manufacturing of their invention by others (e.g. China).

Opting out or failing to file before a “public disclosure” of their invention (such as product advertising or publication of their patent application) will ruin your ability to get a valid patent in the various foreign countries.

Additionally, present and future competitors can view your patent application which by law must include how your invention works and the best way of making it (the “best mode” or way of practicing your invention).

The scope of your desired patent coverage is also revealed since the claims (legal phraseology of your invention) is published. Therefore, your competitors can get valuable competitive information about your invention.

As an inventor, at the time of publication of your application, hopefully you are in a good competitive business position having:

1) Filed any foreign patent applications (or a PCT application) you desire;

2) A patent search with a favorable written patentability opinion (done before you file your initial patent application) so you have a reasonable idea of the scope of protection and that a patent of economic value will issue; and 3) you have products based on your invention market tested and either ready to sell or already on the market (discuss the ramifications thereof with your patent attorney).

A common misconception by inventors is that yo need to have an issued patent before marketing products based on your invention. Actually, you need to discuss this issue with your patent attorney up-front, which includes the sub-issues of:

1) publicly disclosing your invention; and
2) infringing (violating) someone’s patent.

Note that even when you get a patent issued on your invention, you still can infringe someone else’s patent and need to dscuss this issue with your patent attorney.

Finally, there is something called a “trade secret” which is another way to protect ideas that are not easily “reverse engineered”. This includes how to make soft drinks, processes to make products, and the like but is beyond the scope of this post. It is something you should discuss up-front with your patent attorney prior to filing your initial patent application.

It is difficult to keep a trade secret as a secret if you file a patent application disclosing it that is subsequently published for all the world to see! However, you might patent a product made using a process that is kept as a trade secret. The advantage is that unlike patents in which you get a “monopoly” on your invention for a finite period of time, trade secrets last for as long as they are kept secret.

Best regards,

Brian R. Rayve

Well, attorneys (licensed by a State Bar Association) as well as patent attorneys (additionally licensed by the U.S. Patent and Trademark Office – USPTO) are respectively bound by State Bar Association and USPTO ethical rules. These ethical rules typically obligate attorneys and patent attorneys to keep matters of their client and prospective client (e.g. a no-cost initial consultation) confidential. Therefore, such a signed confidentiality/non-compete agreement is typically not needed.

Once an attorney formally takes on a person as a client, there typically will be a formal Engagement Agreement signed between the two parties that covers the scope of the attorney’s engagement (work), confidentiality, and other such matters. However, a patent attorney should be willing to sign a confidentiality/non-compete agreement before discussing your case if it makes you feel better. If not, find a patent attorney who will sign one.

Patent agents are non-lawyers who are licensed by the USPTO to attend to patent (not trademark) matters before the USPTO such as to prepare and file patent applications, prosecute them to issuance, and post-issuance matters such as maintenance fees Patent agents cannot attend to licensing (state contract law), trademarks (state trademark law), or attend to other legal tasks which require an attorney. Patent agents are bound by the same USPTO ethical rules as are patent attorneys and thus typically do not require signed confidentiality/non-compete agreement unless it makes you feel better. You may want an agreement similar to a Engagement Agreement that attorneys use anyways.

Note that just because an attorney, patent attorney, or patent agent is licensed does not mean they have the skills you require to get the job done. It simply means they have passed a “minimum requirements test” (i.e. the applicable State Bar Exam and/or USPTO Bar Exam). While new attorneys, patent attorneys, and patent agents are supposed to (by their licensing requirements) seek and be under the daily supervision of an experienced attorney or patent agent, be sure to ask their experience level and the number of patent applications they have written before using them. Also note that they must have been TRAINED for 2-3 years under the daily supervision of an experienced patent attorney or agent An untrained patent attorney or patent agent that has written a lot of patent applications probably has written a lot of JUNK (patents that issue will be extremely narrow in scope uch that it does not cover competitor’s products and/or will not hold up in court when you sue someone for patent infringement).

For state law such as licensing your invention, forming a corporation, or filing a federal or state trademark, be sure to consult an attorney in your home state (or in the state who’s law you want to apply). Call your State Bar Association if you need an attorney referral. Attorneys are only familiar with and licensed to practice the law of the state(s) in which they are licensed.

A patent attorney or patent agent can practice patent law before the USPTO regardless of where in the world they live. Note that each country (and group treaty) tests and licenses its own patent attorneys/agents. See my article “Is There Only One Patent Office – The One In The United States of America?”.

Best regards,

Brian R. Rayve
Owner, InventionPatenting.com

P.S. You can lock in “patent pending” at a reasonable price at:

http://www.inventionpatenting.com/file_a_patent_application.html

confidentiality agreement non-compete agreement patent attorney independent inventor disclose inventions attorneys state bar association u.s. patent and trademark office uspto ethical rules initial consultation confidential engagement agreements confidentiality patent agents patents trademarks patent applications prosecute to issuance post-issuance matters maintenance fees licensing state contract law state trademark law ethical rules state bar exam uspto bar exam licensing your invention forming a corporation federal trademarks state trademarks group treaty

Well, my response is that is that each country has its own patent office to accept patent applications for that country and which issues patents for that country. You get patent rights only in those countries where you have an issued patent or a treaty country in which you register your treaty patent as explained below.

Therefore, you can file individual patent applications with the patent office in each country in which patent protection is desired (e.g. drop off, mail, courier service, or electronically depending on the particular patent office).

Alternatively, there are also several patent treaties which allow the filing of a single patent application for all member countries. For example, an inventor (anywhere in the world) can file individual patent applications in the various European Union (EU) countries and individually prosecute them to issuance as patent. Advantage – If you do not get a patent in one country, you may get one in another country. Disadvantage – cost to prosecute and government fees to get separate patents.

The EU also has one of these patent treaties that allows the filing of a single EU Patent Application. It is much more expensive to file than one in a single country, but there is only one application to prosecute to issuance as a patent. You then pay a relatively low fee to register the patent in those EU countries in which you want the patent to be enforceable. Advantage – Only one application to prosecute to issuance as a patent. Disadvantages – Expensive to file. You have “all your eggs in one basket” so getting a patent to register in all of your desired EU countries is dependent on ne application.

Contact a patent attorney in each country where patent protection is desired for filing individual patent applications in those countries. Contact a treaty patent attorney such as an EU Patent Attorney for filing a EU Patent Application.

Best regards,

Brian R. Rayve
Owner, InventionPatenting.com

P.S. You can lock in “patent pending” at a reasonable price at:

http://www.inventionpatenting.com/file_a_patent_application.html

patent office united states united states of america independent inventors united kingdom u.s. patent office u.s. patent office u.s. patent and trademark office uspto patent applications issues patents patent rights issued patent file patent applications file individual patent applications patent protection patent treaties filing patent applications member countries inventors anywhere in the world individual patent applications european union eu eu countries individually prosecute issuance patent patent in country government fees patents patent treaty eu patent applications single country prosecute to issuance patent register the patent eu country enforceable register patent register in desired countries patent attorney patent protection filing patent applications treaty patent attorney eu patent attorney eu patent application eu patent brian r. rayve inventionpatenting.com inventionpatenting invention patenting invention patent patent pending reasonable price file a patent application

Well, my response is that you should file a patent application to lock-in “patent pending” first. You obviously do not want your idea stolen. Then use a confidentially/non-compete agreement (search Internet for one used for patents) with anyone you need to disclose your invention to, such as somebody making a prototype for you. Use the agreement and do NOT advertise your idea (such as on the Internet) at least until you discuss the ramifications of a “public disclosure” with an experienced patent attorney.

Regarding making a prototype, you do not need to make one in order to file a patent application unless you (or a person you get to evaluate your idea who is more experienced in the particular technology involved) are not sure the idea will work. Then, you might have an inexpensive prototype made to prove the concept. Still, I would not wait long before filing a patent application as there may be time limits on filing a patent application based on what previous marketing activities you have done.

Prototypes are mainly made to help sell your idea to potential investors, to get feedback from potential customers, and to assist you in selling any patent rights you may have in your idea to a person or company interested in buying you out.

I see a lot of people making expensive prototypes as the first thing they do. I am a advocate of the “scissors, cardboard, and tape” (or box knife, artist’s foam-cored cardboard, glue or rivets, and paint) approach to making prototypes. You would be surprised what you can make yourself (even without any experience). Advantages of doing at least the initial prototype yourself include: 1) it is MUCH CHEAPER than professionally made prototypes; 2) it helps you find problems and new approaches (even alternative or better designs) to your idea (you might have invested a lot of money in a less-preferred design); and 3) it can serve most or all of the purposes of a professionally made prototype.

Even if you are intent on getting a professionally made prototype made, consider having a prototype of the type described above initially professionally made for the reasons stated above. Once you have determined the best design and any improvements you want to make, you can have a “brick and mortar” (wooden, metal, or plastic) prototype (the expensive type) made of your preferred design with all of the improvements!

You can lock in “patent pending” at a reasonable price by filing a provisional (locks-in patent pending for one year – file a utility patent within the one year period that claims “priority” of the provisional patent application) or a utility patent application at:

http://www.inventionpatenting.com/file_a_patent_application.html

Best regards,

Brian R. Rayve
Owner, InventionPatenting.com

P.S. I will be adding a list of prototype companies to my Ultimate Inventor Resources at:

http://www.inventionpatenting.com/ultimate_inventor_resources.html

prototypes filing patent applications independent inventors inventions make prototypes patents file patent applications patent pending ideas stolen confidentially agreements non-compete agreements search internet disclose your inventions making prototypes advertise ideas internet public disclosure patent attorney patent application technology marketing activities sell your idea potential investors feedback from customers sell patent rights expensive prototpes making prototypes initial prototypes alternative designs preferred design patent pending utility patents claim priority provisional patents provisional patent applications utility patent applications inventionpatenting.com prototype company prototype companies ultimate inventor resources

About one year ago, at the urging of my Internet consultant, Shahar Boyanan of BuzzBooster.com, I purchased a Flip Video Camera to make video recordings for the Internet. Well, yesterday I finally decided to unpackage and use the camera.

The camera was packaged in a two-halves, a clam shell type formed plastic container, which is common for electronic devices. The halves are nicely molded with a smooth S-curve and cardboard inserts which conform to and are visible through the clear halves. The halves are heat sealed together at a peripheral seam and a hanging hole is formed at a top end of the packaging.

Well, the packaging looks nice and probably is inexpensive to manufacture. The halves are vacuum formed automatically, the cardboard inserts are machine-inserted into the open packaging, the camera and component parts (prepackaged in a smaller, non-heat sealed hinged packaging) are machine-placed into the halves, and the peripheral seam is formed.

However, as you probably already know, this type of packaging is extremely difficult to open. Scissors are my “weapon of choice” when battling this type of packaging (knives can slip and cut vital body parts). The main problem in opening the packaging is that no room is allowed between the peripheral seam and the remainder of the packaging in which to insert the scissors. Additionally, the peripheral seam forms a channel which further complicates things. I had to cut from both ends of each side towards the middle of the side until the handle of the scissors hit the packaging and then rip the remaining part off. The plastic is somewhat stiff too which hinders the cutting process.

So what is my point… to “bitch” about how hard my life is? No, but rather to point out an opportunity for you independent inventors to improve the existing packaging. This is an example of an “everyday problem” encountered by millions of people. Can you imagine how many man-hours (or woman-hours) are wasted each year using this packaging? It is the type of problem (actually an opportunity for inventors to improve something with a proven large market potential – millions of packages on store shelves) you do not need to be an engineer or have a PhD. to solve the problem.

What improvements would be desirable? Well, the packaging needs to be secure in the stores so nobody can open it and steal the relatively small (easily pocketable) camera yet relatively easy to open after purchasing the product and taking it home. That is the improvement needed. You can think of your needs as a consumer and imagine the needs of the wholesalers/retailers.

However, some current (less obvious) features of the packaging need to be retained. This is where an Internet search can “fill in” some of the details that an engineer like myself is trained to do. The packaging must be made of low cost materials (e.g. clear sheet plastic) that allows manufacture (vacuum forming) on automated package molding equipment. The packaging must be usable with current packaging equipment (with minimal modifications) to automatically package and seal the camera and related parts therein. The packaging must look good to consumers and be both hangable from display hooks and be able to stand up on store shelves. The packaging must also be at least semi-rigid to allow stacking in boxes for shipping and to protect the camera. All of this could be found on the Internet doing some research on packaging of electronics for retail display and sale.

This is a prime opportunity: 1) there appears to be a real need for improved packaging for retail electronic products as is very easily demonstrated (a proven market for the product); 2) you do not need to be an engineer or a PhD. to work on this problem since it is not a complicated product; 3) the necessary background information is easily found doing a little research on the Internet; 4) prototypes can be made inexpensively using wooden molds and a vacuum forming machine; and 5) selling your improved packaging to manufacturers is likely a relatively easy sell if you show the benefits to them (they want to help consumers if it is of little or no additional cost to them).

Well, that is a wrap for today! By the way, the Flip Video Camera really works great! It is compact, easy to use, self-contained, and is reasonably priced (depends on which model you get). It records for one hour on solid-state memory and downloads videos directly through the USB port on your computer. I used it today to record my parrots Alex and Sebastian. They really “hmmed it up” for the camera and I am going to upload the video to my Facebook page. You can check out the various camera models at Amazon.com:

Best regards,

Brian R. Rayve

plastic package inventions internet consultants shahar boyanan nashlah boyanan buzzbooster.com flip video camera video recordings internet camera electronic devices packaging independent inventors opportunity for inventors market potential store shelves engineers wholesalers retailers internet search manufacture packaging equipment internet research packaging of electronics retail display improved packaging retail electronic products background information prototypes wooden molds vacuum forming machines manufacturers benefits consumers flip camera

Well, my response is that there is no “one” trade show to attend. There are inventor trade shows for inventors to show-off and try to sell their inventions.

There are many more industry trade shows that are specific to particular industries such as housewares, boating, outdoors, and the like.

Here is a link to the Trade Shows portion of my Ultimate Inventor Resources:

http://www.inventionpatenting.com/inventor_trade_shows.html

Check out the inventor trade shows and the industry trade shows specific to your invention.

I hope this helps you.

Best regards,

Brian R. Rayve
Owner, InventionPatenting.com

P.S. Make sure you have locked-in “patent pending” first and know the consequences of showing your invention at a trade show before doing so! Read my blog for details in posts below.

You can lock-in patent pending at:

http://www.inventionpatenting.com/file_a_patent_application.html

inventor trade shows industry trade shows independent inventors trade shows inventors sell inventions ultimate inventor resources inventions inventionpatenting.com patent pending file patent application

For example, some years ago I had a client who developed a new type of wrench for doing a specific job when repairing automobiles. While his wrench had utility (was useful for doing something) and was new, the U.S. Patent Office (USPTO) could not be convinced that the wrench was a non-obvious improvement over the prior art wrenches. I had told him this was the likely result after doing a patent search, but he felt that it was worth a try (and the wrenches could be marked “Patent Pending” while the utility patent application I filed for him was actually pending before the USPTO).

Why are these ideas often better than those conceived by observation?

Well, firstly, you are intimately familiar with the problems you encounter on the job… be it a factory worker trying to lift and position sheet metal for stamping in a press, a new mother or father trying to dispose of those “nasty” dirty diapers while at least keeping some of her dignity, or even a child on his or her “job” trying to ride a skateboard down a stair rail.

Secondly, you have put a lot of thought into trying to make your job easier or safer. You face the challenge every day and must “deal with it”! You have a major stake in solving the problem. Lets face it, we all try to look out for number one. If we can save energy… why not do so. Furthermore, we obviously do not want to get hurt doing our job.

Finally, there are likely thousands… probably millions of people around the world who do the same job you do. This is a market ready to “gobble up” your new idea in a heart beat! THEY ALL HAVE THE SAME PROBLEM YOU JUST SOLVED! You get a patent on your idea where you want to control use of the idea and you are in the driver’s seat!

A word of caution. Be sure that if you work for a company or do “freelance” work for others that you have your local attorney check any employment contract you signed and brief you on any applicable state laws that apply. This is because state law or your employment or other contract you signed may dictate that your employer or freelance customer owns the idea (and any patent rights thereto) you developed on or relating to your job rather than you. Be safe and check it out!

Also, remember that there may be adverse consequences in obtaining a domestic (USA) and foreign patents if you decide to build and utilize your idea (or method) on the job. Before doing so, talk with an experienced patent attorney!

Want to see if your idea is patentable? Click on the link below:

http://www.inventionpatenting.com/order_patent.html

Want to lock-in patent pending for your invention or new product idea? Click on the link below:

http://www.inventionpatenting.com/file_a_patent_application.html

Best regards,

Brian R. Rayve

She worries though that she might not properly prepare her utility patent application and believes that she cannot modify her original application so she must “get it right the first time” (actually, that is incorrect… the application can be modified but: 1. new information called “new matter” cannot be subsequently added and 2. her claims as originally presented might lock her into a bad position such as for getting the broadest patent protection possible).

She does not have/want to spend her money on attorney’s fees (typically $3,500.00 to $7,500.00) to have her utility patent application professionally prepared for her. She feels her only alternative other than filing pro se is to find an investor, sometimes called an “angel”, to help her with her costs. She says “It just seems so overwhelming.” which is a typical state-of-mind in which independent inventors find themselves.

My response to her is that an experienced technical writer (or similar DETAIL ORIENTED writer who writes a lot – MANY inventors leave out parts of their invention that are CRITICAL which cannot be added later and retain the original filing date… the so called “new matter”) can adequately prepare and file their own provisional patent application, which is a complete disclosure of the invention including the component parts and how they work together (or for a method… the steps and how they work together). I have not used any of the patent preparation software on the market to prepare a provisional patent application.

In my opinion, NOBODY WHO IS NOT PROPERLY TRAINED IN PATENT LAW (shouting intended) can adequately prepare and file their own utility patent application let alone and prosecute it to issuance through the U.S. Patent Office (USPTO). Utility patent applications have strict requirements for preparation (especially the heart of the application… the claims) and will be scrutinized by a court if your invention becomes a commercial success and someone wants to invalidate it.

It takes not only the legal knowledge acquired by passing the Patent Bar Exam given by the USPTO, but about 2-3 years of TRAINING under DAILY SUPERVISION of a seasoned patent attorney. Therefore, a newbie Patent Attorney or Patent Agent (not an attorney) who passed the Patent Bar but has not been trained by an experienced Patent Attorney is not even qualified to prepare your patent application by him/herself! Would you “go under the knife” using a “surgeon” who only read a book about doing brain surgery and you are his/her first patient? I think not!

She is also contemplating using a software package to file a provisional patent application. I have not used such software, but it may be a valuable aid in preparing a provisional patent application (see below about having the results reviewed by a Patent attorney). Regarding software programs to prepare a utility patent application, “artificial intelligence” currently cannot even adequately simulate the decision-making processes of a cockroach or a fruit fly… let alone the decision making processes of a trained Patent Attorney.

However, I do recommend doing a write-up and sketches of your invention to clarify and crystallize your invention in your mind. You CAN use a book or software to assist you in this process. HOWEVER, submit your work to a Patent Attorney to edit and finalize! I encourage you to read all you can about patents and the invention process, but be careful about your limitations.

The reason you do not hear about the improperly prepared patents written by independent inventors being invalidated by the courts is that virtually none make it to the court system by achieving commercial success. Thus, independent inventors are “lulled” into a false sense security that since “Joe the Inventor” “successfully” prepared, filed, and got his own patent, I can do so too. They do not realize that the issued patent is virtually WORTHLESS (i.e. claims offer very narrow coverage under which competitors’ products do not fall or “infringe the patent” and/or flat out invalid due to mistakes made by the inventor)!

Check out my article about pro se inventors who have already filed a patent application (separate post below).

Have you done a patent search to see if your invention is even patentable (is useful to do something, is new, and is not an obvious thing to do)?

You can use the USPTO web site if you like, though patent searching is as much an art as a science and takes doing a lot of searches to master. See:

http://www.inventionpatenting.com/us_patent_office.html

I can do a professional patent search inexpensively at:

http://www.inventionpatenting.com/order_patent.html

Also, I have two special offers on filing patent applications for a LIMITED TIME ONLY:

Prepare a Provisional Patent Application:

http://www.inventionpatenting.com/file_provisional_adwords.html

Prepare a Utility Patent Application:

http://www.inventionpatenting.com/file_utility_adwords.html

I hope this helps you. Let me know if you have further questions.

Best regards,

Brian R. Rayve

Well, a new business does not “take off” on its own simply by setting up a web site (which I learned after setting it up in late 1999). It takes a lot of knowledge and hard work! Even now, having learned how to promote my web site, it is still often discouraging.

My point is that perseverance is key. If you have a new product idea that has not proven a marketing success, re-evaluate your product. Is it really as good as you think it is? Many inventors “fall in love” with their new product idea oblivious to the reality of the situation. Ask prospective customers to use and evaluate your product. Does their feedback match your thoughts about your product? If not, specifically find out why. Ask them whether they would purchase the product if they saw it on the store shelves. What price would they be willing to pay for it given its advantages (and probably some disadvantages – most things in life are a trade-off) over competitive products.

I hope this gives you some insight… and renewed inspiration. More to come!

It takes about 2-3 years for a patent attorney to be trained (under the daily supervision of an experienced patent attorney) to properly prepare a utility patent application and prosecute it through the Patent Office to a patent. An inventor such as yourself cannot possibly hope to do it properly first time! The money will be well spent.

Keep in mind three principles…

1. the breadth of coverage of an issued patent is what counts… not the fact of having a patent. This is so you maximize the number of devices that violate your patent (get your rightful patent coverage of your invention).

2. The enforceability of an issued patent also counts so you can enforce those rights.

3. Keep your invention CONFIDENTIAL (you can use a Confidentiality Agreement if properly used which is a separate subject) until you consult with a patent attorney about which countries around the world in which you want to get patent protection. It is expensive to get patents and you might say to yourself “I only want/can afford patent protection in my home country”… but keep in mind that some international company might come to you later wanting to patent it in many countries!

Preserve your rights to get patents in foreign countries… consult a patent attorney! Note that keeping your invention confidential includes NOT PUTTING YOUR INVENTION ON THE INTERNET.

Also, note that you CAN MARKET your invention before your patent issues… just be sure of the ramifications of your marketing activities ahead of time by consulting a patent attorney as I suggested above!