Originally Posted 3/15/07

FOR ANSWERS TO MORE QUESTIONS CLICK TO VISIT: OUR WEB SITE

We are in the process of redesigning our web site to add more content and make it more useful to potential clients. We have beefed up the patent section and added a substantial amount of new content to the business, trademark, copyright and other sections. The new site will truly be one of the most comprehensive law firm sites on the web. We are very excited about its launch in the next month or so.

Anyhow, we thought we would make some of the FAQs that will appear on the website available now on the Blog in several new blog series. This is the first installment in the Patent series. Enjoy, and please leave comments or follow up questions,

1. Who can I tell about my idea/invention, and what precautions should I take?

Loose lips sink ships. Or applied to inventions, disclose and lose your patent rights! OK, not immediately, BUT if you do not get a patent application on file within one year of a public disclosure or offer for sale, you have just dedicated your invention to the public meaning anyone can make it, anyone can sell it and anyone can use it and you cant stop them. This one year grace period applies only to the United States and select few other countries. In most other countries, you lose the right to patent the invention the minute you make a public disclosure. Luckily, the filing of a U.S. application will preserve your right to foreign file for one year provided the filing is made before a public disclosure or offer for sale.

Accordingly, it behooves an inventor to avoid making a public disclosure for as long as possible. Luckily, this isn’t very difficult: have anyone you disclose the invention to sign a Non-Disclosure Agreement (or NDA). We even have one that you can use right HERE. Simply, an NDA prevents a disclosure to a third party from being a public disclosure meaning the one year clock DOES NOT start ticking and your rights to file for foreign patent protection are preserved. So if you want to talk with a machinist about making a prototype, have him sign an NDA. If you want to talk to an injection molder about the cost of producing your invention, have him sign an NDA. If you want to talk with marketing specialists about whether you invention is marketable, have them sign an NDA. If you want an engineer to help you design your invention, have him/her sign an NDA. If you want to tell your friends or co-workers about your invention to get their opinion, have them sign an NDA. Although a disclosure to close friends may not be a public disclosure, it is wise to play it safe. About the only people you do not need signed NDAs from are your family and your attorney.

Yes, you read that correctly, you can tell us about your invention and not jeopardize your patent rights. Attorneys have a legal duty to keep communications from clients and prospective clients confidential. IF we were to break such a confidence, we could lose our licenses and find ourselves on the wrong side of a legal malpractice lawsuit.

You must be careful, however even with a singed NDA, not to offer your invention or a product or service embodying your invention for sale because just like disclosing your invention to the public an offer for sale will start the one year clock ticking. In the case of an offer for sale, unlike a mere disclosure of your invention, an NDA WILL NOT prevent the one year clock from beginning to run.

In the end, you are always advised to seek legal consul before making any disclosure. The answer provided herein is simplified and cannot take into account the various particulars of your situation. Accordingly, extreme caution should be exercised before making any disclosure whether under an NDA or not. Remember to play it safe you may want to get a patent application on file prior to any public disclosure or offer for sale. We do realize, however, that this may not be practical for all inventors in all situations, SO it bears repeating, get advice from a qualified patent attorney as soon as is reasonably possible.

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