Jill Gilbert Welytok is the managing attorney for Absolute Technology Law Group LLC, which is a team of Registered Patent, Trademark and Transactional attorneys.
Next Meeting of the Inventors Club: January 29th 5:30 - Downtown Absolute Technology Law Group Offices- 135 West Wells - 5:30 -7:30 p.m. "The Inventors' Budget: Patents, Prototypes and Beyond" by Patty Mueller, CEO, The Idea Factory" (Part II of our Mequon Program) - No advance registration required
For More Information- Visit http://www.milwaukeepatents.com/inventors.html
Questions from the Clubs....
Since we started our Fall 2008 programs, over 400 seasoned and aspiring inventors have already attended meetings at our community Inventors Clubs seeking guidance on a spectrum of questions to get their ideas off the ground.
Questions on disclosing inventions often come up at our Northshore, West Bend and Downtown community Inventors Club meetings, for example …
· What is a patent?
· Will Angel Investors be interested in my product…if they are can I discuss it with them?
· What if I publish a thesis on my invention?
· Should I tell my employer about my invention?
· How can I get manufacturing help without having the manufacturer take my idea?
Do any of these questions pertain to you?Every inventor’s situation is different, some general guidelines apply. The club is a great venue to explore these issues. In response to the continued questions I am receiving, here is a basic chart to help club members decide what documents they need and at what point in time to protect themselves:
|ü Inventor’s Notebook”||It’s important to keep a record of when and how you came up with an idea, and the dates you disclosed it to others. This is because the date of disclosure is known as a “critical date.” Under U.S. law you have one year after the critical date to file for patent protection or your invention is dedicated to the public. Your inventor’s notebook can be as simple as a file on your computer, or an elaborate diary of each developmental stage and what you disclosed to whom on what date, depending on the level of secrecy you feel is necessary.||Inventor’s notebooks have persuasive value if there is a dispute about who is the actual inventor of an invention. Although many countries have a “first to file” system, only the true inventor has a right to file.|
|ü Non-disclosure agreement (“NDA”) blows your rights||If you disclose an invention anyone other than a Co-inventor, including your spouse, you can lose your international patent rights and significantly limits your time frame for filing for a patent in the U.S. The date on which you “publicly” disclosure your invention to someone other than an inventor is known as a “critical date” after which you have one year to file for patent protection in the U.S. Foreign countries do not have this grace period; any disclosure without an NDA blows your rights. The NDA can help you fall within an important exception to the non-disclosure rule. If you disclose your invention under an obligation of secrecy, such as that imposed by a signed non-disclosure agreement or in communications with an attorney, that one year clock will not start running in the U.S. and will generally preserve your foreign filing rights.||The NDA can help you preserve your filing rights that you would otherwise lose by talking about your invention. As a practical matter, it may be difficult to enforce, so do not view it as a failsafe form of legal protection against companies that have a poor track record with respect to honoring them.|
|ü Non-compete Clause||This is a clause that sometimes appears in an NDA or is a separate agreement that people to whom you disclose your invention won’t use your proprietary information to compete with you. If you can get companies in your industry to sign this, go for it! However, don’t be surprised if most won’t.|
|ü Letter or E-mail documenting that showing your product is not an “offer for sale”||The “offer for sale issue” is one that catches many inventors by surprise. Not only does a public disclosure start a one year clock running under a “critical date,” any offer to sell your product has the same result. It does not always matter if you have an actual product; sometimes a brochure about a future product offering can trigger the one-year clock. Thus, it’s a good idea to send a letter or e-mail in advance of your meeting confirming that you do not intend your presentation to be an offer for sale. Better yet, include this provision in your NDA.|
|ü Provisional Patent Application||This is a temporary type of patent application that affords you the “patent pending” status, and is a good strategy when you are serious about presenting a product and do not want to get bogged down in trying to convince companies to sign a non-disclosure agreement. It is better protection than a non-disclosure agreement, and affords you the “patent pending” status. Generally, a lawyer will prepare a Provisional Patent Application for a budget of around $2,000. You will need to turn your provisional patent application into a non-provisional application within one year of filing it, or it will become abandoned. If your product looks promising, you may want to convert your application to a non-provisional sooner than one year so that the patent office will begin examining it. You should not file a provisional too early in the course of doing your full market research, because you will need to be ready to file a non-provisional application with formal claims and make decisions about foreign filing within one year of filing the provisional. However, once you are reasonably confident of your market and have a sense of how to produce your product, this is an important step to take.||If you have done your market research and know that it will be in your interest to move toward protecting a profitable product, a provisional patent application will provide you greater protection and more flexibility in marketing your product than an NDA and gives you the right to put “patent pending” on your product to deter others from entering your market space.|
|ü Non-Provisional (Utility) Patent Application||This is a formal patent application with claims that is ready to be examined by the U.S. patent office. Once your application is examined and issued, you have a legal right to demand that competitors that are infringing it take their products off the market. A non-provisional application for most consumer products, as of the writing of this book, will cost you about $3,000-5,000 in attorney’s fees (maybe more of less depending on the complexity of your invention).||This document gives you the right to exclude others from making, selling or using your patented invention within the country for which the patent protection applies.|
|ü Amendments and Additional Applications to Protect Modifications||If you significantly change your invention after filing an initial application, be sure to check with your attorney to see if your application claims, as originally drafted, still cover what you are marketing.||Applications and modifications to pending applications can help obtain the broadest scope of protection possible as you continue to develop your product.|
February 19th - Mequon (Thursday) - Frank L. Weyenburg Mequon/Thiensville Public Library
March 19th - Downtown (Thursday) - 135 W. Wells Suite 518
April 30th -West Bend (Wednesday) - West Bend Public Library
May 14th-Downtown (Thursday) - 135 W. Wells, Suite 518
June 10th - Mequon (Wednesday) - Frank L. Weyenburg Mequon/Thiensville Public Library
Please check our website at www.milwaukeepatents.com for specific topics and speakers, and for driving directions