The 5 Things You Must Do To Protect Your Idea
Why Most Ideas Die:
The World needs Game Changers -- inventors and innovators who passionately desire to bring a creation to people who need it. Game Changers champion ideas.
This really isn’t a secret. That’s why you, the inventor, can literally own your creative thoughts. It’s the spark behind the Patent and Copyright system -- it’s even enshrined in the Constitution.
But the Government only protects your idea if you actively champion it. And, championing it requires you to take the right action to protect the idea--but you have to do it fast. If you don’t, you’re idea loses its champion and dies.
It boils down to this: have you taken the right steps to protect your idea?
At Thrasher Associates, I’ve helped Game Changers like you transform your ideas and knowledge into assets that create revenue, raise money, and gain influence so that you can bring your dream to market and change the world.
I created my first invention over 20 years ago, and for over 15 years I’ve worked with nearly 1,000 inventors and innovative businesses to protect their ideas. These are the 5 suggestions I most often make to them.
Take these five simple and affordable actions, and you’ll position your idea for profit, create fans, and avoid losing to the competition.
If you suspect that you have a creative idea, you must quickly file a Provisional Patent Application.
The invention and patent landscape has changed dramatically in the last 5 years. Where it was once sufficient to maintain an inventor’s notebook (which still should be kept faithfully), it’s now a supplement to a necessarily more aggressive effort to memorialize and capture your idea. Since 2013, the “first to file” for an idea gets the patent.
This means that almost as soon as your idea pops out of your head and onto a sheet of paper, you need to file for a provisional patent application. Today, “fast-to-file” companies are filing patent applications on ‘their embellishment’ of ideas that they see at tradeshows, literally during the tradeshow.
Can you afford to bet that your competition is not doing this?
Filing the provisional patent application, as well as following up with related blog publications, achieves two huge benefits:
1. you gain your earliest possible position in line to receive exclusive rights to your idea; and
2. you prevent others from one day suing you for their later-invented, but similar, patented ideas.
In other words, you can stop your competition, and they can’t stop you.
But, not all provisional patent applications are equal. Provisionals have a job to do and to receive the benefit of an early filing, it has to pass certain tests.
Avoiding the Curse of Knowledge
At Thrasher Associates, we quickly prepare provisionals while at the same time working with our clients to craft provisionals that are fully compliant with the law. For example, a provisional must be “enabling.” That means that a qualified provisional must sufficiently disclose the idea for others to use it.
One way provisionals are frequently disqualified is because they fail to fully disclose the idea, and this almost always happens because of “the curse of knowledge” -- when the inventor knows so much about his product or process that they project that knowledge on the general public.
Patent examiners, however, will only give your application a few minutes (at most) to make your pitch, and this means that the essence of the invention must be easy to understand. The best way to make it easy to understand is to say it in clear language, and patent applications are notoriously bad at this.
‘an apparatus’ versus ‘the basketball goal’
‘a novel methodology and algorithm therefor’ versus ‘the steps to make a cake’
‘said first converter means’ versus ‘the car’s alternator’
I’ve seen this at the patent office, when you’re hoping to see your patent application issue. When the language in the patent can be interpreted in a number of ways, the examiner will reject your request for “provisional priority” and very well may refuse to allow the application to issue at all.
Even if the patent issues, poor descriptions can hurt during licensing -- when the inventor is hoping to receive a check. When the language in the patent is unclear, the payout is always lower. Don’t pay a high-price for assuming that your audience understands what you’re talking about.
Here’s one trick to dramatically improve your provisional: use drawings, and describe them. Drawings are broadly interpreted by the Patent Office and courts to imply, well, a lot. By including drawings, and with reference to them describing them in your provisional, you are creating the foundations for broadening your inventive rights at several critical dates your invention has with destiny.
Take Action: When preparing your provisional patent application, write it as a letter to one of your parents or children -- make it as easy to understand as you can.
Non-Disclosure Agreements / Confidentiality Agreements
So many blogs will tell you that non-disclosure agreements (also called “NDAs”) are worthless. I strongly disagree. However, using NDAs is an art, and I’ll tell you more about that in a moment, but let me first share a story with you.
Not long ago, I helped a client protect their new innovation, and as part of their plan we crafted and used NDAs. In this unfortunate situation, one of the people who received the information chose to instead create his own business doing the exact same thing, and even used my client’s business plan, under his new company name, to raise money!
Because my client had NDAs, we were able to shut down the competitor, stop the infringer, and my client received an untypical judgment of over a million dollars. If my client had not had NDAs, the outcome may have been entirely different.
The Art of the NDA
NDAs form one part of a triad of confidential relationships. The three parts to this triad are:
NDAs or contractual confidentiality provisions, such as an employment contract
Duties, including Fiduciary Duties
Privileged or confidential relationships, such as with a spouse
Any one of these can be sufficient for creating a privilege.
The problem occurs when either:
(1) you ask for an NDA to be signed by someone who already perceives themselves as having that special relationship, or
(2) an NDA is signed, and the signer discovers that the “creative idea” isn’t creative at all.
In the first situation, the special feeling that the signer had before the NDA was presented is damaged. In the second, the signer may well feel “duped” into exposing themselves to a lawsuit.
The best way to manage this is to learn what your industry considers proprietary -- information that can be owned. For example, lists of suppliers and customers are treated in most industries as proprietary, as are formulas, and things and processes that are genuinely inventive. However, regarding inventions, the emotional burden will be on you to explain why and how you know your idea it is inventive. To know that, you’ll need a patent search.
Take Action: Do use NDAs, and to maximize their effectiveness use them to protect materials that are commonly recognized as being proprietary.
Get Patent Search
Patent searches (along with their related cousin the “prior art search”) protect Game Changers in so many ways.
For example, ‘The Big Two’ questions in intellectual property law are: (1) can I protect it? and (2) can someone else stop me from doing it?
Very few people think through these questions, and their differences.
All too often, I will receive a call from a business that’s been sued, but who has a patent! They of course want to know just how on Earth can they be sued for making something they have a patent on?
This stems from a common misconception: a patent is not a grant of permission to make the thing that is described in the patent application. Rather, a patent gives its owner the ability to stop someone else from doing the (sometimes small) piece of the patent application that is sufficiently unique.
This is one reason why patent searches are so important.
Now you know that patent searches protect your business by:
(1) showing you what may be inventive about your idea;
(2) identifying patents owned by others that could be used to attack your product. By either designing around or otherwise managing these patents ‘today’ you’ll save yourself tremendous amounts of money and heartache in the future trying to make up for a preventable mistake.
And, beyond protection, patent searches provide a wealth of information that can also benefit your business. For example, patent applications identify competitors you may not know about -- particularly innovative and startup competitors. Additionally, patent search results often identify new market opportunities that lie just beyond where you’re currently thinking.
So, Patent Searches protect you from infringing someone else’s patent, they guide you to your idea’s patentable aspects, and in doing so they protect you from putting at risk thousands of dollars and months or years of time.
Take Action: View your patent search as more than research into your narrow improvement, it’s a view into your market, and provides insight into competitors. So, when preparing your patent search, describe your invention in terms of not only itself, but also one or more alternative ways of achieving the end result your invention provides (which may, themselves, be patentable).
You Gotta Have a Plan!
The year you have provisional patent pending status is perhaps the most dynamic year of your invention’s life. During that year, if executed correctly, your idea will mature into a something that is safely makeable and protectable. I can’t stress this too much -- what you accomplish in this year will determine just how strong your ultimately filed patent application will be, and how relevant it is to the product or service you will sell.
To make the most of this year, you must have a plan. And, since creating my first invention over twenty years ago, I’ve helped hundreds of inventors, entrepreneurs and innovators file nearly one thousand patent applications on their way to making their dreams reality. And in that time, I’ve developed a system that gives provisional patent application owners the tools they need to accomplish as much as possible in that year. Here’s the highlights:
1. File a Provisional Patent Application as quickly as possible. Because of the America Invents Act (“the AIA”), you just have to (see Part I).
2. As quickly as possible, get a professional patent search (there are several types of patent applications, and the kind you will want at this stage is called a “prior art search” or “patentability search”).
3. After you review and understand your Patentability Search Report, you will next want to get a Market Search Report. You’re seeking validation that the market exist, and you are looking for products that are already on the market that solve similar problems.
4. With the information you’ve obtained, you can next proceed to create prototypes. There are several types of prototypes your product will use as it matures from concept to market, and I’ll tell you more about these in the near future.
5. The work that has gone into accomplishing steps 1 – 4 all come together near the end of the provisional patent pending year, as you plan to file your utility patent application. Also because of the AIA, filing for a utility patent application is, for practical purposes, mandatory if you want to continue pursuing your invention to market.
These are the high points in the process. However, the process is not strictly linear. During that year, while you are developing your product, doing market research, and continually thinking about how to make your product better, you will inevitably realize that what you have in month ten or eleven is probably different enough from the idea you started with that you will want to obtain an additional Patentability Search and perhaps additional market research. You’ll want to incorporate the most recent findings possible in your patent application, and perhaps file an additional provisional patent application.
Take Action: fill out your plan in the provided timeline, and commit to sticking to it.
There are many way to protect your idea --
Discover and Use Them!
Perhaps the most overlooked aspect I see with inventions is that ideas don’t fit in isolated invention boxes – one idea may be protected in different ways.
There are four basic types of intellectual property (“IP”): patents, trademarks, copyrights, and trade secrets. Additionally, there are related protections.
- Patents: The two primary types of Patents can be a little confusing:
- (1) Utility Patents protect functional or structural aspects of inventions, and
- (2) Design Patents protect a product’s ornamental designs -- it’s look/appearance. Some states also have common law design rights.
- Trademarks identify the business that sells a good or a service with words and logos. Trade Dress is treated in the law as a quasi (‘almost’)-trademark.
- Trade secrets are just what they sound like – secrets used in the course of business to create a competitive advantage, such as a customer list, or supplier pricing.
- Copyrights protect literary, musical, & other ‘artistic expressions’ (stuff you see/hear).
Examples to Explain the Differences, and How They Work Together
Consider Apple’s iMAC with its clean, distinctive look and shape . . .
Utility Patent protection attaches to its circuits, computer chips and software.
Design Patent protection applies to its ornamental look—the shape of its display, and unique brushed-aluminum “form factor.”
Trade Secrets protect the manufacturing process that allows the manufacturer to produce the computer at 85% of the nearest competitor's cost, and to Apple’s supplier and distributor lists.
Trademark protection applies to the name of the company (Apple®) and to the computer (iMAC®) to identify their origin, as well as to Apple’s famous logo.
Copyright protection would apply to the software on the hard drive, and to many screen images displayed by the computer.
The License Agreement you clicked when installing software also created IP — a written contract.
Another example is a simple bottle of Coke . . .
A Design Patent originally protected the shape of the bottle.
Design Rights in common law continue to protect the bottle.
The formula for Coca-Cola is perhaps the world’s most famous Trade Secret.
And Coke® and Coca-Cola® are registered Trademarks of Coca-Cola Bottling Company, Inc. (the business that sells Coca-Cola).
Coca-Cola is famous for its Santa-related Christmas advertisements that practically defined Americana for half a century. The next time you see one of these ads, check closely at the bottom and you will see that it is Copyright protected.
If you think Coke does not have patents, well, think again. The Coca-Cola Bottling Company owns thousands of patents related to vending machines, bottling machines, and software for validating cash and currency (among a dizzying array of innovations).
Take Action: Using the definitions and examples, identify the different types of protection that may apply to your idea.