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 am 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 you 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.
Brian R. Rayve
P.S. You can lock in â€œpatent pendingâ€ at a reasonable price at:
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