Expert: Kacey Cahill - 5/22/2009

Question
I have a very simple invention that is easy and cheap to produce. It was suggested by an attorney friend that I just produce a few copies and market them at a industry trade show. He said by the time and the cost of obtaining a patent is complete, I could possibly obtain enough orders to license the trademark, get a small loan and go into full production. He also said even with a patent my ideal would still pop up under a different name, and be produce in some foreign country. His ideal is to make the quick bucks and get out.



IS HE RIGHT?


Answer
Hi Jackie.  
Yes and no.  I think if you have an invention that you believe and understand to be new and useful and not obvious to others in your area in light of the "prior art" (meaning products out there and articles available to the public and patents on file), then my advice is to file a provisional patent application.
This is relatively inexpensive, and you can do it yourself.  There are no hard and fast content requirements -- you should write the story of why there is a need, and why everybody else's ideas did not work, and explain in detail (with drawings) how your's will and does work.  Also, you should but in there reasonable variations of the main theme (ie where could this go in the next five years and what other markets could use it).  Once you file this with the PTO, then go market it.  People are more apt to give you money if you have protected the invention (that is, their $$).  The reason I say to do this is because you cannot file for a US patent after one year from the date you first offered it for sale or made the invention (the claimed invention) available to the public.  In Europe, however, this sale or publication prior to filing a patent app is an absolute bar to getting a patent.  
If you file the provisional, you get one year to figure it out and file a full blown app (for which you will have the provisional filing date as your priority).

As for foreign activities, from what I am hearing, your friend is correct.  The "stealing" of IP in certain areas of the world is worse than ever.  But, they cannot sell it or import it into the US without getting hit (and stopped) by your patent (if you get one).  

Trademark advice -- if you are going to sell something and hope to distinguish yourself in the market (meaning that you want people to know it came from you and not those other guys) then you must get one.  Please take the time to get one that is not descriptive of your product (ie "Dave's Avocados") but is somewhat abstract ("Oval").  you will get broader enforcement protection that way.  Also, please do not pick names that are close to others being used in your space -- one, you could get sued and two, your protection will be very limited.

I hope this helps, but please keep in mind this is not intended as legal advice but is for educational purposes only.  Should you need further advice, I do this for a living.

Kind regards,

Kacey Cahill
Principal, Kacey Cahill Law
kcahill@kaceylaw.com