SHIELDING YOUR INVENTION - 3 TIPS FOR THE EARLY DAYS

If you are an inventor you will face, or will already have faced, a dilemma in the early days of your invention – do you protect it or not.

There are specific legal tools to protect inventions and designs. These 'tools' include patent and design registrations.

If you elect to not make use of these tools you will find yourself exposed to normal free-market forces. Price and availability rules, and competition (read 'copying') is allowed and encouraged. Only in very limited cases can an inventor rely on the ability to keep his ‘trick’ secret. This is notoriously difficult to achieve and very few companies get it right.

There is only a narrow window or opportunity to obtain proper patent or design protection and the process for this has to commence before the invention generates an income.

This makes it difficult for an inventor to obtain proper protection at the right time. But all is not lost - there are some clever ways in which inventors can improve the shielding of their inventions.

TIP 1 - TAKE EARLY ADVICE AND KEEP IN CONTACT

Some patent attorneys provide free first consultations and are easily accessible by phone for a quick check on specific legal aspects of a project. Your patent attorney should become part of your extended development and commercialization team and should be kept in the loop with project developments. This allows the patent attorney to sound a warning on any legal aspects of the project.

It also provides you with early advice to identify the exact nature of possible protection, clarify requirements, guidelines, timelines and costs for protection, and provide you with a proper NDA (it is amazing which versions of NDA's float around the internet).

This places the inventor in the best possible position to consider his options properly, budget for the expense thereof, and make informed decisions.

So, tip 1 is to build a relationship with a patent attorney and take advice on your invention as early as possible.

TIP 2 - NON-DISCLOSURE AGREEMENTS

NDAs are often punted as an essential tool for inventors, but for the wrong reason. Too often inventors are placed under the impression they can effectively enforce rights to their inventions by using NDAs.

This is bad practical advice. Litigation is expensive and an inventor suing on the basis of an NDA is fighting from the back foot. The burden of proof is high, and convincing a court that your opponent obtained and used your confidential information as the basis for his business is difficult. Very often a confidential disclosure was made to a third party, and proving your opponent received your confidential information from that third party is even more difficult.

The real value of a proper NDA is the paper trail it provides, long after the fact, that you considered your invention confidential, treated it as such, and actively protected it before you obtained a patent or design. This can form an effective counter against a defendant in a patent or design infringement suit that alleges you disclosed the invention before you obtained formal patent or design protection.

Keep those signed NDAs safe, and provide your patent attorney with copies.

So, tip 2 is to use an NDA for any party to whom you disclose anything about your invention.

TIP 3 - BALANCE OPTIMISM WITH REALISM

Patent attorneys regularly hear about inventions that will take-over the world. Understandably each inventor wants to protect his invention is as many countries as possible, to maximise the potential for earnings from it.

Inventors have to remember that filing patent or design application is a costly process, which takes several years from lodging to grant. Most patent offices perform some form of patent and design examination. While a patent or design is alive it needs a patent attorney looking after it.

Inventors often don't really want to consider future costs when they file a number of patent or design applications in several countries. The optimism of the invention being a ‘world beater’ easily overrides the reality that it generally takes a long time for the product of any invention to generate enough income to become self-funding.

This is especially true for foreign patent and design applications, i.e. those lodged in countries other than the inventor's base country. It is already difficult enough for an inventor to launch a business based on his invention in his base country, which he usually knows very well. Achieving this in a foreign country is far more difficult and costly.

Be conservative with the number of foreign patent and design applications lodged, and don’t be afraid to continually evaluate their value after they have been lodged. Business plans and budgets change and when they do all aspects of the business, including patents and designs, should be evaluated again to ensure they still add value to the business.

So, tip 3 is to be conservative with the number of foreign patent and design applications and to ensure these continue to add value to your business.