You must file your U.S. application within one year of the first disclosure or commercial application of the idea. Either disclosure or sale (including an offer to sell such as a quote) will start the one-year clock. Most foreign countries require that you file before any public disclosure or commercial application.
You may safely disclose information and not start the one-year clock, by having each and every person and company that you give information to sign a non-disclosure agreement.
Try To Avoid Starting the ClockThe following is a partial list of things you might do, which could start the clock or at least create a gray area that an infringer would try to exploit to avoid paying damages. This is an area that is evolving in the law and you should seek counsel before any disclosure.
- Tell a customer or others about the invention.
- Distribute a data sheet.
- Distribute price sheets or quotations that don't clearly state that the product is not yet available and that it is experimental.
- Give a paper or publish information about the invention.
- Sell the product at a profit, you may be able to supply free samples or samples at cost without starting the clock.
Know The Business of Your InventionA person seeking a patent should be knowledgeable about technical, business practices, and marketing issues of the market where the invention will be used. Many people end up with a useless piece of paper because they had a unique idea that was not cost effective or truly useful. They did not realize that their idea was not worthwhile because they did not understand the market.
A person who does not thoroughly understand the area and market their invention is meant for, could receive a patent on something that is already in use. The idea would be considered prior art, and their patent would be deemed invalid. A patent search will not always show all prior art.
Spend - But Spend WiselyExpect to pay for services that you require including patent searches. I have come across many would be inventors that expect to get services for nothing. There is no faster way to sour a service provider on all independent inventors than to leave him with a bad receivable. There are no free lunches.
A clear write up of the idea and neat detailed sketches will help convey the proper information to do a prior art search. I recommend that you do not have the same patent attorney do the search and the patent application. While most patent attorneys are honest, having the search and prosecution done by different parties helps keep them that way.
About the Patent SearchThe search is the second step to determining if your idea has merit. The search if performed by an attorney will take one to three months and cost less than $1000.00. You may go to a service provider that does searches and get one for between $150.00 and $450.00 depending on their rates and the amount of work involved. You do not have the benefit of an attorney's advise when using this approach.
Scope & ImprovementsIt is difficult to come up with ideas that are broad in scope in areas that have well-established technologies. The most valuable patents cover the basic idea of a process. Those that are improvements are not as valuable unless they are critical to the commercial success of the product. A patent on a specific circuit will not have much value if it is easy to design around that circuit and there is not much cost or performance penalty associated with the alternative circuit.
If you are involved in an area that is ripe for development consider all the other methods that could be used to solve the problem. It is important to build a fence around your main idea, locking up as many of the possible solutions as possible. This is necessary because a competitor could use a solution that you consider inferior. If his marketing is better than yours is, you could still lose the market. A good example of this is the VHS videotape standard winning the market over BETA.
Multiple PatentsA fence built with multiple patents also acts as a deterrent to infringers, because it will usually cost them at least $500,000 per patent they attempt to invalidate. The uncertainties of prevailing when they are facing multiples make it more likely they will negotiate a settlement.
Before FilingCarefully study the results of the prior art search to determine if your idea is unique before proceeding to the third stage, which is filing for the actual patent. Your attorney will work with you to draft the actual application. Expect this to take three to six months and to cost between $5000.00 and $10,000.00.
Once the application is filed you can expect to wait one to three years to receive the patent. If anyone infringes on your idea during this time you can notify him or her that you have filed for the patent but you cannot sue until the patent is granted. The infringer is liable for damages starting from the latter of the time you filed and the time when they were notified. This is the most frustrating part of the patent process.