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INTRO

WHY YOU NEED PROTECTION   

  • Without some form of intellectual property, pending or registered, you risk that someone, some company, or some country will appropriate your invention, and claim it as their own.
     
  • You could end up in court for years, fighting for what was yours to begin with, only because you neglected to take the necessary steps to stake your claim properly and as early as possible.
     
  • It is up to you to prevent unwanted disclosures, and to make sure that you  have at least some legal and documented claim to your invention filed as soon as possible.  For a more detailed explanation of the issues involved, view the Protecting Your Invention 101 slideshow

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What protection is available?

  • A patent certifies the inventor's exclusive right to make, use, or sell a specific product or process. Examples of patentable items include machines, mechanical devices, methods of manufacture, matter, software algorithms, etc. Patents are usually protected for 20 years.
     
  • A design patent or industrial design certifies the inventor's exclusive right to make, rent, or sell the aesthetic qualities of a functional article. Examples of designs include the shape of a bottle, the configuration of an office chair, the architecture of a building, or the ornamentation of a car. Designs are usually protected for 10 years, and are less expensive to obtain than utility patents.
     
  • Preliminary patent pending status can be obtained by filing a US provisional application for a utility patent, or by filing an incomplete Canadian patent, both which give the inventor up to a year before they must complete their basic filing. There are no preliminary forms of patent pending status for design patents or industrial designs.
                                                         Click here for a USPTO Brochure on Provisional Applications
     
  • In Canada, an inventor can file a patent application to protect any functional mechanism or process, and an industrial design to protect any ornamental features of an item. 
                                                                                              Click here for a Guide to Canadian Patents.
                                                                         Click here for a Guide to Canadian Industrial Designs
     
  • In the United States, one may file a utility patent for products or processes, and a design patent to protect the ornamental features of that product. One may also file a provisional application for a utility patent, which permits up to a year patent pending status when a utility patent application is filed before the provisional expires.                       
                                                                                  Click here for a USPTO booklet on Utility Patents
                                                                                Click here for a USPTO booklet on Design Patents
     
  • Internationally,  one may file a patent in each country where they want to sell their product, but that is very costly and time consuming to do nowadays. An international application system now standardizes patent applications, and allows the same document to be reviewed & submitted to multiple countries for examination. Usually, a successful preliminary examination and search can expedite national filings.
     
  • For more detailed information about international filings, go to the NEXT STEPS page.

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Roadblocks to protection

  • Your  invention must be new, theoretically new in the entire world, but practically, new in the jurisdiction in which the patent is filed.  An invention that is not new can be in the public domain, which means anyone can produce it, or it can be owned by its patent holder, which means that you cannot get a patent for it, and if you attempt to produce it without licensing, you can be sued for patent infringement.
     
  • Your  invention must have utility, or be useful, which means it must improve the state of a particular field, and be capable of showing that it works as claimed.
     
  • Your invention must be non-obvious, which means that someone skilled in the same field would not declare it obvious. This category is the most subjective, and the most fought over, and is one of the primary purposes of a patent specification, namely to make the case for an invention being significantly inventive enough that it isn't obvious at first glance.

Public Disclosures

  • The goals of public disclosure are to enable the inventor to attract investors and make sales. But investors will not invest if you haven’t applied for intellectual property rights to your invention, and sales could be seized if your are sued for infringement by other patent holders. The more valuable your invention, the more you risk without protection.
     
  • In some countries, patent rights may be immediately and permanently denied if anyone makes any public disclosures or publications about the invention without prior patent application.
     
  • Public Disclosure is any (enabling) public use, sale, or publication about the invention by the inventor prior to filing a patent application. (one year grace period may apply, see below)
     
  • A disclosure is not public if the inventor takes appropriate steps to ensure that confidentiality is explicitly understood when revealing details about their invention to other parties. (NDAs, see below) 
     
  • It is imperative that inventors file for some form of patent protection before publicly disclosing anything critical about their invention, or face the risk of another inventor filing a patent for the same idea.

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Grace Periods

  • In Canada, there is a grace period of up to one year, which allows an inventor to disclose their product to the public, but they must file for a patent before it expires or forever lose the right to their invention because it will have entered into the public domain when published by the patent office.
     
  • Every effort should be made by the inventor to file some form of disclosure with a patent office as soon as possible. If sufficient information is filed, via a provisional (US) or incomplete application (CA), then there is a record of who got there first. The America Invents Act (AIA) now requires an “affirmative act” (pre-filing) to obtain the “inventive publication grace period.”
     
  • Since the AIA was signed in 2011, diminished US grace periods have become fraught with traps & loopholes, and may be amended or overturned by the courts in the future.
     
  • Until a more predictable use of grace periods is achieved by the US, it is foolish to risk losing patent rights by relying on grace periods to postpone filing an application if public disclosures are planned.
     
  • Well written provisional applications are the preferred method to initiate the application process while avoiding the higher costs and amendment limitations of fuller utility patent applications. (see Documents page for more details about provisionals)

when & what to file  

  • Canada is a "First to File” country, as is most of the rest of the world, and only grants patent rights to those who file for the patent first. This may not necessarily be the earliest inventor.
     
  • A Canadian inventor who discloses their idea to the wrong person might end up being sued by that person for infringement because they filed the patent and now legally own the original inventor's idea.
     
  • The US is now a “First Inventor to File” country, which only accepts for examination the patent disclosures of the first (actual) inventor to file an application.
     
  • If a Canadian files a US provisional, or an incomplete Canadian patent, and discloses their idea to a third party who tries to file for their patent, eventually the perpetrator will be denied a patent because it was derived from a previously filed preliminary application.
     
  • US citizens have the right to sue anyone who knowingly steals their ideas for triple damages, and the crime is a felony. In Canada, we have much less proactive intellectual property enforcement. 
     
  • Because filing in Canada requires more commitment & expense, and the US grace period system is not reliable at present (see above), the best option for Canadian inventors is to file a US Provisional Application as soon as possible after their invention has been reduced to practice. (ideas that work)
     
  • US Provisional applications may be filed serially or combined to include newer ideas or better solutions as a product is developed. Quality provisionals provide an affordable way for the inventor to initiate the application process while enabling the earliest filing date.

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Non Disclosure Agreements (NDA)

  • If an inventor actually needs to disclose their invention to another person, and there is no implied expectation of confidentiality, such as when an inventor hires a designer or draftsman, then it is critical that a non-disclosure agreement be signed by the person prior to viewing the invention.
     
  • If an invention, or any information about said invention, is to be known as confidential, it should be labeled as such. A person can rightly claim that they didn't know that something was confidential, or another's trade secret, if there was no way they could have known.
     
  • Require that everyone who has access to an invention or valuable trade secrets, know that they are confidential and proprietary, and should not be disclosed to anyone without written clearance.
     
  • In Canada, a non-disclosure agreement is governed by commercial contract laws, and any breaches are penalized by the assessed value that has been lost by the breach.
     
  • In the US, a non-disclosure agreement is governed by Trade Secret legislation, and violations are charged as a felony crime.
     

Invention Marketing Fraud

  • Basic information about the patenting process is seldom taught in high school, and is only briefly ever described in technical, engineering, or business school.
     
  • It is no wonder that there are so many people who believe in the claims of invention marketers, as they have little access to the proper information.
     
  • Invention marketers offer to evaluate, protect, and market your invention for fees that are at least as high as legitimate patent agents and lawyers.
     
  • The problem is that they do not actually do patent searches, file applications, do any marketing, and often cannot even properly grasp the workings of the inventions submitted to them.
     
  • The US Federal Trade Commission has many pending lawsuits against invention marketing promoters, but these cases take so long  that the companies being sued just change their names and continue to defraud people.  See a list of current complaints here. Scam brochure here.

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timing

Patent Costs vs. Sales Income

  • Two questions inventors seldom ask themselves are:
    Why do I want a patent? Is this the right invention to patent?
     
  • Do you just want to be able to brag that you're an inventor because the patent certificate says so?
    Or do you actually want to put a product on the market that both generates sales income above the costs of patenting and maintenance fees, and improves the state of the art in some significant way?
     
  • If your invention is something that will likely be in a dollar store in six months, you won't be able to afford the patenting costs, even when substantially lowered by employing Inventive Solutions.
     
  • If, however, your invention solves a problem that is normally expensive to work around, and other solutions are more costly or difficult to implement, then you will likely have a market where you can generate sufficient revenue to justify the difficulties and challenges. Discussion Paper here.
     
  • Inventors should consider these long-term issues before they commit to a particular invention. They may discover that a different invention more realistically  justifies all the effort and expense they will need to protect, manufacture, market, and sell it.

When should you start a patent search?

  • Once an inventor has developed an idea far enough that it can be described clearly and concisely, it is time to decide whether it is valuable enough to take to market. Market research is the responsibility of the inventor, and they are usually best suited to decide if their product is the best solution for a particular field.
     
  • One way to tell what your competitors are doing is to look at the patents they've filed. A significant portion of market research information can be generated from a Patent Search Report (PSR), but the inventor should do the preliminary market evaluation before the search.
     
  • Market research is looking at competing products, and comparing your solution to their market share. Will  your new product be able to overcome a customer's natural resistance to trying out something untested, and capture some of that market share from other products?
     
  • If you are secure that you have a market for your product, because you have done the honest evaluation that is needed to predict that your product may be successful, then it is time to see if it is original. Only then, should you ask Inventive Solutions to begin a patent search for you.
     
  • Another timing issue is whether you are ready to proceed with filing an application soon after the results of the search are available. If you delay for even a few months after the search, there is a possibility that new inventions might be filed that will eventually invalidate your application.

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When should you  file an application?

  • You have had a thorough patent search done for the jurisdictions where you intend to sell, and the report shows nothing close to your idea.  How quickly do you need to file an application?
     
  • When to file depends on whether you've made any public disclosures and when, whether you plan to make any public disclosures soon, your ability to pay for patent services & filing fees, whether a competitor is planning a similar patent filing, and whether your product is fully developed yet.
     
  • Usually, it is best to document and file for some form of protection as soon as possible. But sometimes it is good strategy to wait until your product has proven itself before filing because a patent application is usually posted to the public database 18 months after filing. (6 months after a provisional term expires)
     
  • These are the kinds of decisions that need to be made by an inventor and trusted advisors, or a company board of directors with their technology development management. Knowledge of the prior art of competitors is sometimes only a part of the information available to decision-makers.
     
  • The advantage of filing provisional applications or incomplete applications is that during the year you still have time to develop your product, and if you come up with additional ways to solve the same problem, or better ways to achieve your aim, you can still file this information without losing your place in the line for the original filing. For related details, see the DOCUMENTS page.

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Do you need a prototype?

  • Inventors no longer need to submit prototypes of their inventions, as any patent disclosure should be detailed enough that anyone experienced in the same field could recreate the invention based solely on the disclosure.
     
  • However, prototypes can be useful to help the inventor refine their product, convince investors to part with money, and to help the inventor communicate their idea more clearly.
     
  • Whether you need a prototype is more about what your product is, and how it will be used. It is impractical for the inventor of a nuclear power station to make a prototype, but the key novel features of a less ambitious product may be instructive to build, just so you have the peace of mind that the basic design isn't fundamentally flawed in some way. 

Now is a good time to invent!

  • The recent downturn in the economy has led to layoffs and reduced productivity, but not all is lost.
     
  • When companies have little to do, but some in house resources, they can invest in research & development with the aim to inventing new products so that when the economy recovers, they will have a head start on their less foresighted competitors.
     
  • When individuals inventors are learning that people are having to make do with less, the ones that find cheaper solutions to age old problems, can still turn a profit. Necessity is still the mother of invention.  For more, see recent press release here.  Focus on the solutions, not the problems.

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process

Free Confidential Consultation

  • For any detailed discussions or email disclosures of an invention, a mandatory Non-Disclosure Agreement (NDA) must be signed first. We will need basic contact info about the inventor, and a general description of the field of the invention to put on the NDA. Copies available to both parties.
     
  • Free confidential consultations can take place by phone, email, in person, or at one's place of business if necessary. If travel is necessary, it will usually depend on availability and other commitments. Onsite interviews are necessary if that is the only way to assess the scope of the invention, and when email disclosures are insufficient to tell the entire story.
     
  • Minimum information for a productive consultation should include enough detail about the invention for a preliminary obviousness evaluation, and to prepare an estimate of the search.

Estimate, Agreement & Deposit

  • During, or soon after the consultation, Inventive Solutions will give the prospective client an estimate of the duration of the project, based on the information provided. For a patent search, estimates commonly range from 6 to 10 hours, while a provisional with drawings commonly take from between 15 to 30 hours, depending on how much information the inventor supplies, and its quality. Duration of patent searches for multiple jurisdictions does not multiply by their number, but is usually a matter of a few additional hours, depending on complexity of the invention.
     
  • Once a verbal agreement is made, a project agreement is drawn up which includes the estimate, the work required, jurisdictions searched, filing fees included, etc. and must be signed & dated by both parties to be valid.
     
  • With new clients, a deposit is mandatory, and the work does not begin until it is received in full.  Also with new clients, final search reports and documentation will only be released upon full payment of outstanding invoice. With repeat clients in good standing, a deposit is waived, and invoices are sent upon project completion, and are due in 15 days.

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Information Required

  • For an NDA, basic contact info about the inventor or company, and a general description of the field of the invention. (no detailed disclosures until NDA signed by both parties)
     
  • For a Patent Search, we will need a detailed description of key functional elements of the invention, information which may be disclosed by phone discussion, email, or onsite interview. Any relevant patent numbers or information about competing products may also be useful.
     
  • For a Provisional application, we will need as much current information about an invention as is known to the inventor. If the product is still in development, it might be best to postpone writing until the optimal version is discovered. But if time is a factor, or there are multiple related solutions, then complete information on each variation should be available. As discussed in that section, drawings already available to the inventor can be used as the foundation for patent drawings, and will need to be available before the writing process begins.

Documents & Services available

  • As described in detail on the Documents page, Inventive Solutions can document various patent, provisional and design applications and reports for an inventor or inventive company.
     
  • As described in detail on the Services page, Inventive Solutions can also provide patent and design searches as well as drawing and graphic services.
     
  • As described in detail on the Next Steps page, various filing options and strategies are available to the inventor.
     
  • For more information about the process of inventing, marketing, investors, R&D, business issues, etc., go to the Resources page.
     
  • For a better understanding of the terminology used by patent practitioners and the basic language used in protecting inventions, go to the Glossary page.

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Who we can help and how

  • Independent inventors who need a more economical and reliable way to protect their ideas while seeking financing, investment partners, licensing arrangements or starting production.
     
  • Companies that invent new products and find they don’t have the time, manpower or resources to document their intellectual property, until their competition sues for infringement. (In Canada, patents go to the first inventor to file, not the first to invent)
     
  • Patent attorneys/agents who prefer to focus on the more interesting aspects of patent work, and who appreciate the increase in quality and comprehensiveness when a patent paralegal with technical experience does the preliminary documentation.
     
  • Venture Capitalists who need to understand a new invention for marketing or licensing presentations, as well as to protect their investment by ensuring the most economical means of infringement protection.
  • Inventive Solutions can help the independent inventor or inventive company protect their invention by providing provisional application documentation & filing services that are approximately one fifth that charged by traditional patent practitioners.
    Go to
    Documents or Services pages for more info.

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