copyright 2007 inventive solutions 1 protecting your invention 101 inventive solutions
TRANSCRIPT
Protecting Your Invention 101
Inventive Solutions
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Outline of Topics
OverviewIntroduction
Trade SecretsPatents – Design & Utility Provisional ApplicationsInternational Applications
Questions
Less
More
EFFORT
SECURE
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Overview: Earliest Inventions
From History of USPTO webpage
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Overview: Modern Inventions
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Introduction
Are you inventing or invention-curious? Believe the patent process too expensive? Expect to develop new products for your
business in the near future? Questions to be answered:
How to disclose my ideas while minimizing the risks? When should I disclose my invention? Who should I disclose it to? What are the best methods to protect my invention?
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Trade Secrets
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Trade Secrets – Basic Info
Legally protected as long as not in public domain & reasonable efforts to keep secret
Duration
Locks, Notices of Confidentiality, Not telling anyone, Virus-ware, Security Procedures.
Costs
Valuable & Secured (also, document well if item is a complex article of manufacture)
Criteria
Client lists, Formulas, Recipes, IC designs, Business plans, Sales strategies, Lab notes
Examples
Confidential Business InformationDefinition
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Trade Secrets – Theory
Information used in a business, not generally known, of some economic value, and maintained in secrecy
Rights protected only if reasonable steps taken to ensure confidentiality with no casual disclosures (require NDA before disclosing)
Canada - Protected by common law = civil action = breach of confidence, contract law
U.S. - Protected by proprietary right = criminal action = felony, may recover losses
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Trade Secrets – Application
Use Non-disclosure Agreements if possible Identify valuable secrets, enact policies to
secure from unauthorized access No Publication or Public disclosures Grace period (allows limited disclosure)
If inventor applies for patent or design within yearNot all countries allow grace period
Advantages – indefinite protection, in any country, with no processing delay or fees due
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Patents – Overview
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Patents - Basic Concepts
a discovery (idea) cannot be patented, only an invention (its physical manifestation)
government certifies the origin of an invention and protects its owner’s exclusive rights
equivalent to registering a property deed/title limited monopoly creates incentive to innovate cost of proving & keeping ownership 90% are improvements to existing inventions
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Patents (Utility) – Basic Info
20 years Processing time: 18-24 months(*Higher fee if company > 50 employees)
Duration
Apply + Exam: CA$700-1400; US$395-790Allowance: CA$150-300*; US$685-1370
Costs
New (1st in world), Useful (workable), andNon-obvious (to person skilled in trade)
Criteria
Machines, mechanical devices, methods of manufacture, matter, software algorithms
Examples
Exclusive right to manufacture, use, or sell a specific product or process
Definition
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Patents (Utility) – Details
Front Page Background Summary Description Drawings Claims
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Patents – Front Page
Title Inventor Number Date Classes Prior Art Abstract Drawing
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Patents (Design) – Basic Info
10 yrs* (Can) - 14 yrs (US) Processing: 8-12 mths (*Fifth yr maint. fee: CA$350)
Duration
Application: CA$400; US$175-350 (SE/LE) Allowance: CA$0*; US$245-490 (SE/LE)
Costs
application to a finished article features of shape, configuration, pattern or ornament
Criteria
Statue of Liberty, Coke bottle, office chair, architecture, automobile, airplane, spoon
Examples
Exclusive right to make, import, rent, or sell the aesthetic qualities of a functional article
Definition
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Patents (Design) – Examples
visual ornamental characteristics embodied in, or applied to, an article of manufacture
Sometimes used when patent unavailable Beware of Scam Artists – design is not utility
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Provisional Applications
Must apply for ‘utility’ before one year or risk losing rights forever (if disclosed)
Duration
US$100; Invention Report complies with written description requirements (w. drawings)
Costs
Utility patent references provisional (best way) Provisional is converted to utility (difficult)
Criteria
Protects disclosure to manufacturers, VCs, Investors, Licensees (patent pending)
Examples
Low-cost non-formal pre-patent filing method used to establish priority (only in US, NZ…)
Definition
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Provisional – Issues
Filed up to one year following the date of first sale, offer for sale, public use, or publication
May preclude patenting in foreign countries Only available in US, NZ, EPO… Time to refine product, test market & raise $$$ May be combined with PCT (Intl.) application Only description & drawings required Establishes earlier effective filing date
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International Applications
Patent Cooperation Treaty (PCT) allows multiple country filings
Delays national filing 30 mths from priority date More cost effective than filing in each country Begins national patent in each country filed Includes International Search Report Can be filed at National Patent Office Must meet international standards National examination delayed
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Patents – Process
Prior Art Search to determine novelty (hours) Document invention & write patent (tens of hrs) Create patent drawings (hours) INVENTOR-IP Svc.
File application & pay fees PATENT OFFICE
Pay another fee to examine for patentability All examiner objections resolved (hopefully) Patent allowed & final fees paid Certificate issued (takes 18 months – 2 years)
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Patents – Risks Without
First to file = Canada & most of world Rights could be lost if published w/o registration Premature disclosure without protection Infringement challenges or litigation possible Competitor files same idea during application No patent if grace period expires with disclosure Be forced to stop selling, refund $, pay royalties
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Patents – Benefits With
Burglar alarm or roadblock to infringers If well written, prevents infringement & litigation Gold standard for investors (VCs) Can license to manufacturers for royalties Superior protection to trade secret (most situats) Certifies your right to sell & manufacture May be used as asset to negotiate more funding
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Patent & Research Services
Product development experienceCertified US Patent Paralegal Free confidential consultationNon-disclosure protectionAffordable ratesBulletproof IP
Thank You