I recently received a question from an independent inventor like yourself who faced a seemingly serious situation and did not know to do about it.

She has been inventing for several years and kept an inventor’s notebook and “poor man’s patents” but misplaced them. In case you do not know what a poor man’s patent is… that is where the inventor puts a write-up and sketches (called a disclosure) of their invention in an envelope and mails it to herself. The still sealed envelope with postmark is retained by the inventor to supposedly provide some form of legal protection for the invention and inventor.

She is worried that her inventions will be stolen by someone finding the notebook or by any of several companies to which she recently sent disclosures of her inventions, she no longer having “proof” she had invented them. She wonders whether there is anything that she can do to protect herself as she counted on those inventions for her future livelihood.

My reply to her is that the poor man’s patent is an”urban legend” and is worthless in providing any protection for inventors an their inventions. Likewise, while her inventor’s notebook was a good reminder of the details of her various inventions, it provides no protection for her or her inventions since it was not notarized or witnessed.

Rather, inventors should keep an inventor’s notebook made from a permanently bound notebook, the kind in which you cannot add pages nor can you remove pages without it being apparent that a page was removed. The best notebooks are about 1/4 inch thick with 8-1/2 by 11 inch pages available at any of the big office supply stores such as Staples or Office Depot.

Make sketches, write a description, and permanently glue any photos you have taken of your invention(s) on the pages. Use a new page for the start of each new invention. Consecutively number the pages at the bottom and have the notebook notarized on the last page you have used. You can have it notarized at your local bank by a Notary Public, which is usually a free service.

You can use the remaining notebook pages to sketch and describe other inventions or improvements to the existing inventions you come up with. Have your notebook notarized on the new last page you have used every time you make a significant update to your notebook (i.e. when you add a new invention or a significant improvement to an existing invention).

Why you should you keep an inventor’s notebook? Well, lets be clear… it is NOT a patent application and your invention is NOT “patent pending”. Rather, an inventor’s notebook has a strictly limited use… as evidence of your date of conception of your invention(s), but ONLY in the United States of America (USA). That is because in the USA, you must be an inventor to get a valid patent and if there is a dispute as to who is the first inventor, the U.S. Patent Office admits proof of inventorship such as notarized inventor’s notebooks (but not your poor man’s patents).

Note also that you CANNOT “backdate” your inventor’s notebook to when you originally conceived your invention(s)… you only get the date of notarization as evidence of the date of conception of your invention(s).

Alternatively to notarization, you can have your inventor’s notebook signed and dated (witnessed) by TWO people, preferably people who have no monetary or other interest in your invention(s).

Best regards,

Brian R. Rayve
Owner, InventionPatenting.com

P.S. You can lock in “patent pending” at a reasonable price by filing a provisional patent application.

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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

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I received a question from an independent inventor like yourself wondering whether she needs a signed confidentiality/non-compete agreement with her patent attorney before disclosing her invention.

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

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I received a question from an independent inventor like yourself in the United Kingdom basically asking “whether the only patent office is the U.S. Patent and Trademark Office (USPTO) in the United States?”.

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

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I received a question today from an independent inventor like yourself asking “I have an invention. What do I do first, do I make a prototype then patent it? If so I would have to have help with some parts. Are there companies out there to help with parts to make the prototype?”.

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

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I received a question today from an independent inventor like yourself asking “What are some of the best inventor trade shows like Inpex?”.

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

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