You may think securing a patent is the only way to protect your invention. The truth is, the process starts well before you step foot into the patent attorney’s office. Often, it is your own careful documentation, in conjunction with that final patent that proves most critical.
Pre-patent documentation provides added insurance in the event:
1: Your patent is challenged by another inventor;
2: The patent office claims “interference” because it has a similar patent application from another inventor; or,
3: You decide to delay filing for a patent to test the marketability of your invention.
Whichever case you find yourself in, being able to prove the steps you took to invent a product is crucial to your success as an inventor.
Write it Down
If you’re reading this, you’re bound to be an “idea person,” and you act on a creative bent. Ideas fly so fast that you can hardly keep track of them. But instead of watching them fly by, write them down in a notebook incapable of being altered (one bound by glue or hand stitching.)
Ilene Porter learned firsthand how important it is to document ideas. The Ogden, Utah, inventor had designed a variation of the traditional pull-on ski cap in 1964 at the request of a family friend. It wasn’t until 1968, however, that she took steps to protect her idea-visiting a patent attorney and filing for a design patent. The delay almost cost Porter dearly.
At first, everything appeared to be going great. After a sporting goods wholesaler expressed interest in selling her trendy cap, Porter sent 24 new ski caps to the wholesaler, who was convinced they would be a hot item. So far, so good.
Porter next consented to giving the wholesaler the rights to sell her caps in his stores, thinking it would be a “nice, little second income.” She figured she’d be knitting maybe 20-30 hats per week, and with the patent pending, she was still covered.
Two months later, in March 1969, the wholesaler brought samples of Porter’s ski caps to a trade show in Las Vegas. While Porter received orders from the show, other interested parties decided to simply copy her design. At this point, Porter was still waiting for official approval of her design patent. So the wholesaler’s attorney issued cease-and-desist orders to the companies producing the look-alike caps.
Fortunately for Porter and the sporting goods wholesaler, all of the companies did cease production and soon thereafter, in August 1969, Porter received her design patent.
Due Diligence
As Porter discovered, you should start documenting from the first day an idea strikes. Jot down the first questions and include whatever crude sketches come to mind to illustrate your thoughts. Be as thorough as you can be about the idea.
The remaining pages can take many different forms. Some inventors strictly detail the invention proctors strictly detail the invention process. Then, for further protection, they maintain backup logs detailing telephone conversations and meetings with potential manufacturers and representatives.
The details to be covered in a journal include:
What is the idea?
What led you to the idea? What was the thought process?
Who will use your invention?
Who are the manufacturers, suppliers, and sales representatives you’ve contacted.
As a further pre-patent protection, file for a Disclosure Document deposit. For a small fee, you can send a record of your invention and applicable drawings to be held for two years by the patent office. (While the Disclosure Document officially notes your claim to the idea, it doesn’t replace the journal since it cannot prove the date of conception for the idea.
Many die-hard inventors take this all one step beyond by having their journals notarized on a regular basis. This way you can establish a date on your ideas.
Finally, even though you can pinpoint the minute you created your invention, you still may not be protected. This is where the need for a patent comes into play. If you have not filed a patent application within one year of the first public use of your product (i.e., the first non-confidential disclosure of your invention that is non-experimental), the date of publication explaining your invention in detail, or first public sale, you will not be able to obtain a patent. Your journal, no matter how meticulously kept, will be worthless.
If you’ve taken all of these steps, and still believe you have a viable product, “Get thee to a patent attorney’s office”.