Your Idea: Protect It Before It's Too Late! – Kolkowski

Whether your idea involves a new sleep test or method; sleep diagnostic or therapeutic device; improvement to a method or device; business method or software: you need to consider the steps needed to protect your idea. Protection generally is not the end but rather just the start to beginning to effectively capitalize on your idea.

Ideas or inventions can be protected by a patent, as a trade secret or with a copyright. While copyrights and trade secrets may offer some degree of protection, a patent many times is the most effective means of creating a sustainable competitive advantage.1 A patent is a property right granted by the government to an inventor allowing the inventor “to exclude others from making, using, offering for sale, or selling the invention” for a limited time in exchange for public disclosure of the invention.2 Patents in the United States are good for 20 years from the date of filing.3

Apatent provides a barrier to competition. The patent holder or their licensee often times can charge a premium for their technology due to reduced or eliminated competition – rather than having to operate the business competitively on very thin margins.

To obtain a patent the law requires that your idea or invention is useful, novel and unobvious to someone skilled in the same art at the time the invention was made.4 In examining a patent application the patent office reviews earlier patents, patent applications and technical literature to determine novelty or unobviousness. In addition any sale or offer for sale of a product or service embodying the idea or invention; or public disclosure of the idea or invention over a year prior to filing a patent application in the United States or at any time prior to filing a patent application in most other countries by yourself or others may reduce the ability to obtain a strong patent or may even eliminate the possibility of obtaining a patent all together.5

As a patent attorney practicing in the area of sleep diagnosis and therapy I was asked by the publisher of Sleep Diagnosis and Therapy™ magazine to write an editorial outlining a few simple steps that small businesses or individual inventors can take to ensure their ideas or “intellectual property” is protected. Given that many of the readers of this magazine are clinicians or researchers in the sleep field whose main interests do not involve new product design and development I will attempt to provide the readers with simple steps that can be easily followed.

If you have an idea you believe is valuable – what do you do? Your first step should be to write your idea down if you have not already done so. Preferably you make this entry in a bound notebook and find someone who can understand your idea read, witness and sign the notebook.6 As you continue to develop the idea and possibly a prototype, your notebook should be continually updated – describing in detail efforts made to improve the idea or prototype. This not only protects you as a potential inventor by establishing a date of when you conceived of your idea, but also ensures your idea is not lost.

Reasonable precautions need to be taken to protect the secrecy of your idea. This not only prevents a public disclosure which is adverse to patentability, but also helps to prevent others from copying your idea.7 Precautions include not only limiting on a need to know basis to whom you disclose your idea, but also requiring those who receive this information to agree to a secrecy or non-disclosure agreement. Disclosure most likely will be necessary when attempting to protect, license or commercialize the product or service, but until the idea or invention is protected it only should be done under such an agreement.

At some point a search should also be performed to determine whether others have disclosed similar ideas or the invention you would like to protect. Performing your own search can not only reduce your out of pocket expenses, but may also save you time in the long run. Various resources can be used to search including for example the patent office websites, web search engines, and trade journals and related abstracts. It is helpful if you can perform your own search to determine whether anyone has described or disclosed the important features of your idea or invention. Performing a search not only helps determine patentability, but also provides business intelligence. If your search results in a reference that identically describes your invention (a “knock out reference”) and you have no doubt about it then it is unlikely you can protect your invention with a patent. If this reference is an issued patent and you still intend to commercialize your idea or invention you may want to contact an experienced patent attorney to determine your potential liability should you proceed to commercialize. At this point, you might still be able to commercialize your idea but without the possibility of the competitive advantage provided by patent protection.

If you are unsure whether you have a knock out reference you should seek legal advice from a licensed patent attorney. If, however, your search results in no knock out references, you should consider applying for patent protection. Obtaining patent protection can be expensive. While such protection can be obtained on your own and many have done so quite successfully, navigating the nuances and pitfalls of the patent office can at times be difficult, and in the end you may not obtain the breadth of protection to which you are entitled. If you hire a licensed patent attorney it is likely they will want to do a more extensive search and form a patentability opinion as well. The search and opinion will cost anywhere from a minimum of $500 to several thousand dollars. The attorney’s opinion will help determine whether a patent can be obtained that prevents competitors from selling a form of the invention that the public would most likely want to buy.

Obtaining patent protection should strictly be a commercial decision. The decision made is whether the cost of drafting, filing, prosecuting and issuing the patent is worth the coverage it will provide. Legal fees for drafting an application generally can range from $2,000 to as high as $15,000 depending on its complexity, prosecution fees can range from $1,000 to as high as $10,000, and patent office fees for the filing and issuance of a patent for an individual or small business are approximately $1,200.

By taking the appropriate steps to protect your idea or invention you will: protect your investment of time and money in developing your idea; prevent competitors from copying your idea; help you better understand the competitive landscape; and help you increase the value of your ideas or invention for commercialization or licensing. These steps take minimal effort while potentially reducing your overall costs, improving the probability that you will obtain strong protection, and ultimately improving your chances of successfully capitalizing on your idea.

Brian M. Kolkowski, Ph.D.
Executive Vice President & General Counsel
Cleveland Medical Devices Inc. dba “CleveMed”
Cleveland, OH

References

1   Donner, Irah H., Patent Prosecution: Practice & Procedure, BNA Books, Washington, D.C.; 1996; 6–12.

2   35 U.S.C. §271

3   35 U.S.C. §154

4   35 U.S.C. §§101–103

5   35 U.S.C. §102

6   Harmon, Robert L., Patents and the Federal Circuit, BNA Books, Washington, D.C.; 1994; 580–585.

7   35 U.S.C. §102; Uniform Trade Secrets Act (“UTSA”) §1(4)

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