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HOW TO PROTECT YOUR INVENTION

posted 3 years ago

As an inventor, one of the best ways to make money is to license your invention to other companies that will manufacture and sell the invention.  By shopping your invention around, however, you may be putting your rights to that invention in jeopardy.  The move you reveal about your invention, the more likely it is that it will be stolen or copied.  So, what’s the best way to protect your invention?  Provisional patent applications and nondisclosure agreements are two important strategies for safeguarding your rights.

FILING A PROVISIONAL PATENT APPLICATION

A provisional patent application (PPA) is a patent application that can be used to secure a filing date.  Additionally, if a nonprovisional application is filed within one year from the filing date of the PPA, the nonprovisional application may claim the benefit of the filing date of the PPA.  Why are filing dates important?  On March 16, 2013, the U.S. adopted a first-to-file system.  Under this system, the first to file an application usually gets the patent.  A PPA essentially provides a one-year extension as to the filing of a nonprovisional patent application.  In doing so, a PPA provides an applicant with an additional year to experiment, perfect an invention, find investment money, and find interested parties for licensing. 

Here are some facts you need to know about PPAs:

  • A PPA expires after one year
  • You cannot extent a PPA
  • You cannot renew a PPA
  • A PPA will never become a patent
  • You cannot file a PPA for a design
  • You can use the term “patent pending”

If your invention potentially qualifies for a patent, it may be worth your while to file a PPA and obtain “patent pending” status.  This will allow you to establish an effective date for your invention.  Most often, filing a PPA will deter others from copying your invention and provides an advantage in protecting your legal rights. 

USING NONDISCLOSURE AGREEMENTS

If you determine that your invention is not patentable, the most effective way to protect your invention is to have prospective licensees sign a nondisclosure agreement before you share your invention.  This document is sometimes called an “NDA” or a “Confidentiality Agreement.”  This agreement must be signed before you disclose any secrets to a third party.  If someone signs a nondisclosure agreement and later uses your secret without authorization, you can sue for damages. 

The nondisclosure agreements should contain the following important elements:

  • A definition of what is and what is not confidential information;
  • Obligation of the party receiving confidential information; and
  • Applicable time periods.

DISCLOSING WITHOUT AN AGREEMENT

It is always safe to get a prospective licensee to sign a nondisclosure agreement, but you may not always be able to convince the person or company to do so.  When that happens, you are left in a somewhat vulnerable position.  If you disclose crucial information without the agreement, you risk losing your rights to the invention, as well as the ability to file a patent if it is considered a “public disclosure” under the first-to-file rules.  If you don’t disclose it, you risk losing a business opportunity.  In these situations, you can still protect your invention by presenting your secret in a way that does not allow for the disclosure of your trade secrets.  Be brief and general.  The most important factor to consider is the reputation of the person or the company you’re dealing with.  If the company has a poor reputation, the dangers or losing your secrets outweigh the business opportunity. 

As an inventor and a legal expert, I had the pleasure of being part of a reality show called www.EverydayEdisons.com that cater towards helping everyday people with their extraordinary ideas.  For four seasons beginning in 2006, Everyday Edisons thrilled audiences nationwide, giving them a front row seat to the triumphs and challenges of everyday inventors working to bring their innovative products to market.  Now Edison Nation is relaunching the Emmy and Telly Award winning show where inventors will compete to have their products supported by Edison Nation.  I am one of the lead judges and you can watch the new session on www.Crackel.com

For more information on how to legally protect your business please buy a copy of my bestselling book: ‘Go Legal Yourself’ on Amazon or visit my website at www.golegalyourself.com

Disclaimer:  This information is made available by Bagla Law Firm, APC for educational purposes only as well as to give you general information and a general understanding of the law, and not to provide specific legal advice. This information should not be used as a substitute for competent legal advice from a licensed professional attorney in your state

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posted 6 days ago

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