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Confidential
Disclosure Agreement During
the process of advancing a new idea beyond the "concept" stage,
it is often necessary to discuss it with third parties. With respect
to
testing and/or discussing your invention with others, we recommend that
you utilize a confidential disclosure agreement prior to disclosing
your
invention to any member of the public that is otherwise not obligated
to maintain the information in confidence. Click on the following
hyperlink
for a view of the Confidential Disclosure Agreement.
You may print the Agreement, and if you have any questions regarding
its use, please let us know. PLEASE
BE AWARE that under U.S. patent law, an inventor is given ONE YEAR to
file a patent application after making the invention known to the public.
"Making known" may include actually selling or just offering
the invention for sale, describing it in a printed publication or merely
using it in a public location. Once this one-year period has expired,
the inventor is forever barred from filing a patent application on that
particular invention. Foreign
countries are almost universally more strict about this prior use problem
than is the United States, and most countries will prevent the filing
of a patent application immediately upon the public disclosure of the
invention. Under an International Treaty, the filing of a U.S. patent
application prior to a public use will provide you with a one-year period
of time to decide in which countries, if any, you want to file additional
patent applications. Not all countries are members of this treaty, and
if foreign patent protection is important to you, please discuss the nature
of your interest with us prior to making a "public use". The
U.S. Patent and Trademark Office has provided a "Document Disclosure
Program" to assist inventors in documenting the conception date of
an invention. This program addresses the issue of "priority of invention"
— who was first to invent this invention. Historically, inventors
would attempt to address this issue by describing their invention, placing
such description in a self-addressed envelope, and mailing it to themselves.
Such procedures were not legally effective. The
"Disclosure Document" link in this paragraph requires that you
have Adobe Acrobat Version 4.x on your computer. If you do not, you can
download the program directly from Adobe.
After downloading, or if you have Acrobat, load the document by clicking
the following link (to exit Acrobat after printing disclosure form,
click any link to left of form) DISCLOSURE
DOCUMENT PROGRAM REQUEST BY INVENTOR. You'll note that there will
be a printer icon in the Acrobat menu bar. Clicking that icon should print
to your selected printer. Please remember the purpose of this program
is to document the status of your invention as of the time of filing the
DISCLOSURE DOCUMENT. It is thus critical that you fully disclose your
invention in the papers being transmitted to the Patent Office. Fill in the form as requested, including: list all of the inventors; provide a generic "title"; and list the number of pages (a separate number is required for text pages and for drawing pages). The required fee, regardless of the number of pages, is TEN U.S. DOLLARS ($10.00). Mail the filled out (signed and dated) form, the pages of disclosure, and the TEN DOLLAR FEE to the U.S. Patent Office at the Box DD address shown at the top of the form. The
filed documents will be held in secret by the Patent Office, and then
destroyed two (2) years after filing. Also, the filing of the DOCUMENTS
does not stop the one-year commercialization filing time requirement discussed
above. A
patent search provides a cost-effective method for evaluating the opportunity
to meaningfully protect your invention under the patent laws. A "patentable"
invention is: (1)
novel, in the sense that it is different in some respect from the previously-known,
similar invention(s); and (2)
unobvious, meaning that the invention differs in a manner that is not
obvious when compared to known, related technology. Our
patent searcher locates in the Patent Office those issued patents that
come closest to the concept(s) underlying your invention. We are provided
with a copy of each, and then make use of the above, two-part test to
compare your invention to the information contained in those issued patents. The
patent search results also permit the drafting of a better patent or provisional
application, should you decide to pursue patent protection. The information
obtained by the search permits the application to be more focused, and
to better address those areas that appear to be important to patentability. A
patent search for most "mechanical" -type inventions likely
will cost in the range of $500–$600, and our searcher is normally
able to send us the results in two to four weeks. For electrical, chemical
or business method inventions, we will first obtain an estimate from our
searcher before providing you with a search quote. Alternatively,
if you have access to the Internet, you may want to perform an initial
level of searching using one of the free patent search databases. For
such informal searching I use the site maintained by IBM, found at: http://www.delphion.com.
Here is the Patent
Office. As mentioned, the searching is free and the user is provided
a number of ways to search a very extensive patent database. For example,
a user can search for specific patents, for specific patent owners, or
for user-defined, specific technology(ies). If you have any questions
after trying out this site, please let me know.
Provisional Patent Application Many
foreign countries have provisions in their patent laws that permit inventors
to file only a minimal disclosure and obtain an official filing date.
That filing date, in turn, was sufficient under many international treaties
to serve as the priority date for a later-filed, more complete patent
application. Concurrently with the passage of the GATT legislation, the
U.S. Patent Office created the "provisional application" document. A
"provisional application" is a document that is in many ways
similar to a "full" patent application, and is filed with the
Patent Office to obtain a filing date. The most significant feature of
a traditional patent application that is not present in a provisional
application are the patent claims. The "patent claims" are the
legal definition of the invention, and are what the court uses to gauge
infringement. They must be carefully drafted, and that takes time. Their
omission from a provisional application significantly reduces the drafting
time required. A
provisional application requires the following: (1)
a specification that describes the nature and operation of the invention;
and (2)
patent drawings as required to assist in the understanding of the nature
and operation of the invention. In
addition, the inventor(s) must be identified, although no oath or declaration
by the inventor(s) is required. Finally, the Patent Office filing fee
is significantly lower - for a small entity (less than 500 employees),
the fee is reduced from $355 to $75. Attorney fees to prepare and file
the Provisional Application are likely to be in the $1,800 to $2,800 range
(compared to $3,000 - $5,500 for a complete patent application). Thus,
for lower fees and reduced legal and formal requirements, a provisional
application will provide you with a filing date that is fully equivalent
to the filing of a traditional patent application. However, a provisional
application is not the same as the more complete, patent application,
and a provisional application: (1)
is not examined; (2)
will automatically go abandoned after one (1) year from the filing date;
and (3)
will never mature into a patent. To
take full advantage of the filing date obtained upon the filing of the
provisional application will require, within the one year life of the
provisional application, the filing of a full, traditional patent application.
The second filing, assuming that you have not significantly changed your
invention, will be able to use the earlier filing date of the provisional
application as its "priority" date, to predate any filings after
the filing date of the provisional application. Additionally, since the
description of your invention in the Provisional Application must be as
complete as in a traditional patent application, much of the contents
of the provisional application will be inserted into the subsequently-drafted,
more complete application. The
filing of a Provisional Application thus provides another advantage. Should
you decide to later file a complete patent application, it will be possible
to "re-capture" much of your investment in the provisional application.
Of course, there is no requirement that such a full application be filed.
If the commercialization does not proceed as planned, a decision can always
be made to not file the full application, and permit the provisional application
to go abandoned. Design
patents are to be distinguished from those I have previously discussed,
termed utility patents. As the more common, utility patents protect the
functional aspects of a product, while design patents protect the ornamental
aspects of a device or product. If granted, a design patent would protect
your design from competing designs that are sufficiently the same as to
deceive potential purchasers. The term of a design patent is fourteen
(14) years. It
has proven over the years to be more difficult to enforce design patent
rights. However, the preparation and filing of a design patent application
is considerably less in most cases than either a utility or a provisional
application. The majority of design patents can be prepared and filed
for between $700 and $1,000, and, once filed, you can mark your product
with the term patent pending. A report from the Patent Office Examiner
regarding patentability can then be expected between six to twelve months
after filing, with a lower issue fee required if allowed than is the case
with utility patents. U.S.
Patent rights protect patented inventions within the United States, regardless
of the manufacturing location of an infringing article that is used, sold
or offered for sale within the United States. All commercially important
countries have their own patent laws, and patent protection within those
countries requires obtaining a local patent. At the present time, and
into the foreseeable future, there is no "international" patent. While you contemplate your interest in seeking foreign patent protection, please keep in mind that foreign patent filing must be a well-considered business decision on your part. In my view, you should consider the matter of foreign filing only if commercialization of your invention in foreign countries is either likely or is considered to be a top priority for the business. If not, the filing and prosecution of a patent application in a foreign country(ies) will incur (large) expenses that are probably not a good business investment. An
additional complicating factor for your foreign filing decision is the
requirement in most foreign countries that an application must be on
file in that country prior to any unrestricted disclosure of your
invention. You may recall that the United States will protect an inventor
for up to ONE YEAR after such general disclosures. The majority of foreign
countries have no such grace period. The failure to file prior to such
a disclosure will prevent you from later seeking patent protection in
that country for that invention. Since foreign patent filings combine both higher costs and greater commercialization uncertainty, it is generally considered to be beneficial to delay the timing of the actual patent filing process. One way of accomplishing this result is to take advantage of an international treaty that allows up to a ONE YEAR delay after the filing of a patent application for that invention in a member country to that treaty. The United States is a member country, as are most (but not all) countries of the world. India and Taiwan were notable non-members until 1995 (India) and 1996 (Taiwan). A complete listing of member countries in which a United States filing (either a provisional patent or a "full" patent application) will enable a ONE YEAR delay in foreign filing is available through this link: member countries. Further delays in the foreign filing deadline are possible in most countries by taking advantage of provisions under the Patent Cooperation Treaty ("PCT"); however, those delays under the PCT cost money, and will be discussed in a separate section.
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