AboutPenny Ballou Expertise The Invention Process; Royalties; Licensing Inventions/Products; Pricing; Direct to Market; Marketing/Promotions; Patent Searching; DIY patent writing; Types of patents/costs/how to's; Funding (grants and Angel investors); Prototyping; Off-Shore sourcing.
Experience I am founder of an inventors group; Advisory Board President of www.inventored.org; former Licensing Executive Society member; researcher for www.piausa.org and a consultant; plus moderate and contribute to several online inventor discussion groups.
Publications Enter my email address into any search engine to find them.
Education/Credentials Invention development: well-studied and applied in all aspects of the process and an inventor myself with one invention in patent pending and others ramping up. Lived and attended schools in Mainland China and the UK.
Expert: Penny Ballou Date: 7/3/2008 Subject: Protecting an Idea while Selling your Idea
Question QUESTION: I have a new product concept that I have taken the time to completely outline its functionalities and the revenue model. I don't want to manufacturer the product, I simply want to sell the idea to an existing manufacturer.
What do you suggest would be the best way to protect this idea while I make appointments and presentations to these manufacturing companies?
They are not likely to sign a non-disclosure.
Thanks.
ANSWER: Hi John,
Realizing I am not an attorney or agent, there are minimally two options (assuming you're in the US):
1. Keep the technology as a trade secret talking only in terms of product "Benefits" and not technology or know-how. For example, if I told you my latest invention is in the RV field enabling me to stay out longer in the boonies without having to drive to a town to refill with water, propane, et al you would know what the Benefits are but you wouldn't know the technology or know-how in how I make this happen. You could make lots of guesses but you wouldn't know for sure. Get it? If/when they seek to know "the how", they sign a customized-to-your-invention NDA. If unwilling you do what anyone else of sound mind does, MOVE ON TO THEIR COMPETITORS!
2. Your other option is to write/file a "Provisional Application for Patent" (PAP) because generally it takes three (3) years for a formal "Non Provisional (Utility) Patent Application" to issue or perhaps longer depending on the backlog of the Art Unit it will go to at the patent office. A PAP provides one year of "seeming" protection on its face but the truth is, all it does it secure a filing date (priority date) for anything in the application that is patentable. One of its advantages after it is filed is that it allows one to legally mark the document, DVD, paperwork etc with "patent pending" if only for a year from date of patent office filing. Mail it electronically or via Express Mail to acquire instant "patent pending."
Unless you open your mouth revealing its registration number (Provisional numbers are different from formal Non Provisional numbers) no one is going to know all you filed was a PAP. Disclose it and worse also provide its filing date and those of ill-intent are given a green light to produce it as they probably know it's going to take awhile for the average inventor to find the funds to have an attorney or agent convert the PAP into a formal Non Provisional. By not opening mouth all anyone knows is that you filed a formal Non Provisional that could issue tomorrow - as long as you don't mention the filing date!
Let me give you a personal piece of advice you can ignore : if you are talking submitting to mega corporations, have a patent attorney or seasoned patent agent look over the PAP before you file it to possibly ratchet-down any gaps and maybe add at least one broad legal claim - -even though they are not required. The higher up the corporate chain one traverses the tighter the application should be, IMO. I mention adding a broad claim only because a patent attorney friend of mine mentioned that in his opinion it counted for something were the PAP to later be converted to a formal then filed in Europe.
The meat of any formal Non Provisioanl Application is its legal Claims (as you probably know) so these are not shown until one has something on the table in writing and preferably an upfront good- faith payment before they are disclosed. Frankly I wouldn't be showing any legal document to a company until talks became serious. You should learn the difference between technology and know-how too. Unlike technology, Know-How may not be patentable but it is licensable therefore potentially worth money and/or an increased percentage too over what the technology was licesned for.
There are downsides to filing PAPs - if you're interested I can look up a bunch of references for you to read.
Regards,
Penny Ballou
Disclaimer: the above is educational and not legal advice. Visit a patent attorney or agent for legal advice.
---------- FOLLOW-UP ----------
QUESTION: Penny,
I appreciate your frankness. It is not my intention to produce this concept, only capitalize from the idea. I DO NOT believe it is patentable. It is a conglomeration of other, existing technology, with a twist leading to an extremely marketable added benefit.
Any idea what the "idea" market bears? ;)
Thanks again,
John
Answer Hi again,
It's an urban myth there's an "idea market" in the first place.
Not much advice I can give you if all you have is an idea lodged in your mind. You're going to have to be a creative salesman to sell someone on investing in a mental image, that's for sure.
