More Patent Law Basics for the
By J. Nevin Shaffer, Jr.
In a previous article, some of the basic issues concerning patent
law that businesses sooner or later encounter were explored. This
article continues the discussion and provides some practical steps
for businesses to when the need arises. But first, some statistics.
• More than 288,000 patent applications of all types were filed in
the United States in 1999.
• The number one applicant for the 7th year in a row was IBM.
• The city with the highest number of patents granted per capita was
San Jose, CA with 300.4 rating .
• Austin, TX was 7th with 130.2.
• Gainesville, FL had 51.3 and was the highest ranked city in
Florida under this system.
• Pensacola had a score of 8.3, representing 33 patents issued !
• In all, in calendar 1999 a record number of patents of all types
issued and more than 3,000 of them came from Florida.
Statistics prove that the United States is a very innovative
country. Individuals and businesses in Florida, and even right here
in Pensacola, are developing new technologies every day.
FIRST PUT YOUR IDEA IN WRITING
The United States has a “First to Invent” rule regarding who wins as
between two people with the same idea. Every other country has a
“First to File” rule whereby the first to file for an invention is
the one who gets a shot at getting a patent. We have a better rule,
in my opinion, because the inventor is not forced into a “hurry up
and spend a lot of money on a patent application” situation. Here,
so long as you, the inventor, can prove you invented the item first,
you win. The difficulty, of course, is how do you prove when
something was invented? The answer is found in the question: How do
you prove anything? Typically, the person with the best tangible
evidence is going to win. If the best the other inventor has is his
Mom on the stand saying that Little Billy invented the thing 10
years ago and you have a signed, witnessed document, who’s a judge
or jury going to believe? No offense to Billy’s Mom, but she just
won’t carry the day against a properly prepared Confidential
Invention Disclosure Document.
TO BE EFFECTIVE AN INVENTION DISCLOSURE DOESN’T HAVE TO BE FANCY
Many of our clients believe that extraordinary efforts must be taken
to adequately protect their idea. I usually encourage their paranoia
to some degree because in my experience there are a lot of people
with money these days chasing a very much more limited number of
good ideas. It is not paranoia, as some have said, if they are after
you! Nonetheless, to be effective, an Invention Disclosure does not
require extraordinary measures. A good one includes:
• A brief description of the problem solved.
• A discussion of how others have tried to solve the problem in the
• A detailed description of the invention and why it is so special
in the opinion of the inventor.
[Note: No working model is required in most cases. If your invention
is a perpetual motion machine, however, the Patent Office will
likely ask to observe it for a year or so before going further with
That’s it. Further, you do not need to seal it and send it certified
mail to yourself. Instead, all that is necessary is that the
inventor sign and date it. Witnesses should also sign and date it
underneath a statement that says something like: “After first
agreeing to keep this information confidential, I have read and
understand the above Invention Disclosure” . The number of witnesses
may vary from locale to locale and there may or may not be a need to
have the signatures notarized.
Once prepared, the Invention Disclosure is a Trade Secret and should
be treated as such i.e. kept confidential and only disclosed under
the terms of an appropriate Confidentiality/NonDisclosure Agreement.
GET TO A PATENT ATTORNEY
Once again, that’s my best advice! The sooner, the better! For one
thing, although we are a First to Invent country, there are limits.
That is, our system is designed to benefit society as a whole by
encouraging individuals to share their innovations. As such, in the
end it places a higher value on disclosing your idea sooner than
later. That is, if you wait too long to bring your idea out, you
might lose to a person who invented after you, even under our
Additionally, there are other options open to inventors than
proceeding directly with a patent application. A patent attorney
will listen to what the inventor has done and what the inventor
wishes to do with the idea. From this information it may be clear
that a patent search would be appropriate as a first step. In other
circumstances, the inventor may decide to solicit interest from
businesses before investing further in the idea. It may be that the
invention has a global market so that steps must be taken to protect
it internationally. These and other issues concerning the invention
are best addressed by a patent practitioner.
Copyright 2004 JNSJrPA. The material in this article is provided for
general informational purposes only and should not be considered a
legal opinion nor relied upon in lieu of specific legal advice.
Accordingly, readers who require legal services in connection with
their specific circumstances should consult an attorney competent in
the field of intellectual property.