A patent allows the inventor to monopolize the manufacture, use, sale and export of an invention. This right is currently limited to 20 years after the application date and will permit the owner of the patent to recover damages in a lawsuit against an infringer.
Filing for a patent is an extremely costly procedure and this is why we advise you to evaluate every detail before you start the process.
The first step to take after you achieved an invention is to find out whether your invention qualifies for a patent and then determine if it is worth engaging in expensive filing fees and heavy proceedings.
They are three type of patent: a utility patent; a design patent and a plant patent.
A utility patent can belong to five different categories: a process, a machine, a manufacture, a composition of matter or an improvement of an existing idea. Most of the time, and invention will fall into more than one category.
A design patent is a new and original design that ornaments a manufactured device and can’t be functional.
A plant patent is the least common patent as it is granted for asexually or sexually reproducible plants if they are novel and non obvious.
The utility patent and the plant patent last for 20 years from the date of the application.
The design patent is only valid for 15 years after the date of issue.
a. Make sure your invention qualifies for a patent.
To qualify, your invention must be useful. It must produce a result or make a product.
You also must find out if your invention is marketable and conduct a market research to determine if you will have consumers interested in the product you created.
You invention must be new and different from any other already existing invention in the same field. Your invention also has to be non-obvious for the other inventors in the same field as yours.
You cannot obtain a patent on a simple idea: you must create a prototype and show that your invention is working.
You will also have to determine if you are the only inventor or if there is a co-inventor. A co-inventor is anyone who makes a contribution in order to make the invention patentable.
The best way to prove that you are the inventor or the co-inventor is to keep a record on EVERYTHING you do while you are working on your invention. Make sure you write every step in a notebook, that you date and sign every entry. We also suggest you to have at least two reliable witnesses.
b. You created an invention while being employed: How to determine who owns it, the employer or yourself?
Generally, the inventor owns the rights to his invention unless you signed an employment agreement assigning the invention rights to your employer or if you were specially hired for your inventing skills or to create a specific invention. If you were employed to invent, your employer will generally keep the rights to your invention, even without any previous written agreement.
Nevertheless even in both of these cases you might still be able to keep the ownership of your invention: if you can prove that the invention was created during your own time and without using any resources that belong to the employer and; if the invention you created is not similar to any present or future business of the company or any work you are creating for the company.
If you go to trial, you will have the burden of proof and this is why we recommend you to keep extremely precise records of everything you do. You should also keep any other documents that might help you prove that the invention is yours such as copies of emails, correspondence, receipts for all the equipment purchased, etc.
However even when the employer does not own the employee’s invention, the employer might still have a shop-right to use the patent but on a non-exclusive and royalty free basis and without liability for infringement. This concept is based on the employer’s presumed contribution through time, equipment and materials.
Even though the employer might have a shop-right, the employee will keep the full ownership of the patent and is legally allowed to sell the patent to a 3rd party. Nevertheless, the employer will retain his shop-right.
If a company hires you as an independent contractor, keep in mind that your employer will have more freedom in how to word the pre-invention agreements. Also, shop-rights are not only for employees. If you are an independent contractor that uses the company’s resources to create an invention, the company may also have shop-rights.
The employee’s patent rights vary a lot depending on the facts, which is why keeping good records is one of the most important thing.
If you are facing ownership disputes, take a look at your employment agreement. Indeed, the agreements may mention that disputes should be resolved with arbitration or mediation. If not, you may suggest to your employer to go through arbitration or mediation better than a trial in order to avoid a costly and overwhelming battle in the courtroom.
c. Practical information about the patent application.
The preparation of your patent application is a tough and complicated matter. It must include a formal and precise description of the best version of your invention: how you built it, how it operates and proof of the uniqueness of the invention. You will also need to get a formal patent office drawing that needs to be prepared by a patent draftsperson.
Only the inventor or an attorney registered to practice before the US Patent & Trademark Office can prepare and submit the application. Your attorney will ask you really precise questions in order to draft the best application for your invention.
The normal time to complete an application is 18 months and it can cost you thousands and thousands of dollars. You will also have to pay fees during the 20 years term of the patent in order to keep it in force.
Before you file your application, you will have to conduct a search for patents previously granted and read all the publications in the same field to make sure that your invention doesn’t already exist. Once the Patent Office Examiner will receive your application, they will conduct another patent research.
You can also get an attorney to realize a patent research directly on site in the Patent & Trademark Office in Washington DC. but it will cost you more money.
If you are planning to export your invention to foreign countries you should plan ahead. Foreign filing can be a very expensive process but there is other ways to protect your invention even if you don’t decide to file for a patent right away.
Indeed, once you file your patent in the USA you can (under the Patent Cooperation Treaty PCT) “reserve” the right to file a patent in foreign countries. In order to do so, you must file a PCT application with the U.S Patent and Trademark Office and you will be able to “pick” the countries in which you feel the invention should be protected. You have to file the PCT application within a year since the date of the application for a patent.