How To Protect Your Invention

by Gil Zeimer on February 22, 2011
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Let’s say you’ve invented something that you believe has a potential market. Perhaps you only have a napkin sketch, a slightly better drawing that’s not exactly to scale, or a non-functional prototype you built in your garage.

What are the next steps you should take to protect your invention before you start hunting around for a manufacturer or other partner? How do you make sure no one else has already created something just like this?

As a follow-up to our “How To Protect Your Brand” article, we interviewed Jessie Reider (pictured), an Associate Attorney at the regional full-service law firm of Buchalter Nemer.

ISBB: What is the first thing a small business should do when pitching an invention?

Reider: Even before pitching an invention, it’s important to have your ideas protected by consulting an intellectual property (IP) attorney. There are a great many ideas that are protectable and a great many ways to seek protection. For example, copyrights are original works of authorship; patents are issued for a new and useful process,  machine or other invention, such as an ornamental design; trade secrets are proprietary information protected from public disclosure, and can include recipes or customer lists; trade dress covers a product design or configuration, and can provide protection against knock-offs. Once you have these protections in place, it’s a good idea to have your audience sign a non-disclosure agreement before you pitch your invention.

How do you protect the intellectual property behind the invention?

By working with your IP attorney, you can determine the best process to secure your rights. Sometimes, that would include filing a patent or copyright application. But in some cases, like a formula or a recipe, it might be better not to disclose your secrets at all.

Another important element of protecting intellectual property is making sure that your employees sign confidentiality agreements and invention assignment agreements, as appropriate.

Approximately how much does that cost in legal and other fees?

The cost will vary greatly. A design patent, which is a type of patent for ornamental elements of an item, can cost between $2,500 and $3,500, while a utility patent can cost upwards of $5,000 to 10,000. Copyright applications are fairly inexpensive, with a filing fee of under $50. Confidentiality, non-disclosure, and invention assignment agreements can usually be drafted in an hour or two.

What other advice would you give to small businesses who may be inventing items?

I would recommend that small businesses document their invention process, step by step. Keep track or keep a diary reflecting who has worked on what, dates of creation, and possible improvements or refinements. Be very careful with whom you share your invention. Even though it’s exciting and you’re proud of your work, you don’t want someone to  “borrow” your concept or idea and beat you to market. Small businesses must also be very careful when and where they publicly disclose their inventions, as it may affect their ability to file for a patent in the United States or other countries.

What’s the best success story for an invention on which you’ve consulted?

I think that all of our clients have wonderful ideas across a wide range of industries, products and services. No one invention has a better story than another because they’re all so unique.  But, consulting with an IP attorney is usually the first step to a success story.

For more advice about protecting your idea or if you have an invention you want to pitch, contact Reider her at Buchalter Nemer in Los Angeles.

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