Patent Attorney: Colorado’s Mark Trenner Answers Questions…
Patent Attorney: Colorado's Market Trenner
When can I tell others about my invention?
Inventors often want to know when they can tell others about their invention. Patent attorney Mark Trenner always recommends his clients do not disclose anything about their invention to anyone before applying for a patent. And applying for a patent means actually filing at least a provisional patent application or full utility patent application with the US Patent Office.
Note that provisional patent applications cannot be used to protect a design. You must file a design patent application.
In addition, disclosing, using your invention in public, publishing anything about your invention, and even selling or offering to sell your invention may cause you to lose rights to your invention.
While there are some exceptions for those inventors who inadvertently disclosed their invention before realizing that they should have filed a patent application first, important legal rights can be lost. If a panicked client comes into Trenner Law Firm worried that they have lost rights to their invention by making a public disclosure, we may still be able to file a patent application if it has been less than one year since the public disclosure, depending on the circumstances.
But it is not a good idea to rely on a grace period, especially under the new patent law effective March 17, 2013.
In addition, many foreign patent laws require that a patent application be filed before any public disclosure. So if you are considering filing for patent protection outside of the US, you often must file a patent application before disclosing your invention.
Moreover, the US patent law changes in 2013 from a “first to invent” to a “first to file” patent system. This makes it even more critical that you do not disclose your invention and that you file a patent application as soon as possible – or you can risk losing important legal rights in your invention.
Is my invention protected?
Inventors call Colorado based patent attorney Mark Trenner all the time and ask “is my invention protected?” The first question I ask is “what have you done to protect your invention?” Often, the inventor answers, as expected, that they have done nothing to protect their invention. At least, they have not taken any legal steps to protect their invention. And if an inventor has not taken any legal steps to protect their invention, they really haven’t done anything at all to protect their invention.
There are two basic ways to protect an invention. An inventor can keep their invention secret. This is typically known as trade secret protection. Trade secret protect is inexpensive, in fact, nearly free. All that is required is that the invention be maintained in secret. Of course, I say “nearly free” because there may be some expense associated with a safe to keep the invention locked up, stamps which can be purchased at the local business supply store to mark everything as confidential if the inventor is going to show their invention to someone under a non-disclosure agreement (NDA) or confidentiality agreement, and the cost to have an attorney prepare a solid NDA to use.
The “free” or “nearly free” aspect may seem very appealing to some inventors. But unless the invention can be maintained in secret forever, this isn’t likely a good option for protecting the invention. That is because as soon as an invention is made available to the public, the invention can no longer be protected by trade secret law.
So for things like a favorite recipe (think about the recipe for your favorite soda), trade secret protection may be a viable option. But for most inventions that can be unassembled and reverse engineered, trade secret law does not offer any protection. Keeping these types of inventions locked up in your safe provides no benefit to society (or to the inventor financially).
Instead, the inventor should consider patent protection. An inventor can only claim patent protection for an invention which has been filed as a patent application in the US Patent Office. So back to the original question “is my invention protected,” the answer depends on whether the inventor has received an issued patent from the Patent Office. If not, then the inventor should waste no time contacting a patent attorney to discuss filing a patent application with the Patent Office.