So you want a patent... or some alternative?

• + - Criteria to get one
  • Perpetual motion excluded
  • Usefulness
  • + - Novelty
    • + - Prior art
      • + - Patent search
        • when
        • why
        • how
        • who
  • + - Non obviousness
    • Skilled viewer
  • + - Documentation
    • letter to yourself - questionable
    • "lab notebook"
    • witness
• + - Types of patent
  • Design (14 yrs)
    • "Looks" oriented (Coke bottle)
    • No functional utility required
  • Utility (20 yrs)
    • Does something useful
    • Process
    • Machine
    • Manufacture
    • Material
  • Plant (20 yrs)
    • New breed
• + - What you gain
  • Prevents INNOCENT use
  • personal recognition
  • some validaton of novelty
  • + - perception of value in the mind of ignorants
    • commercial value
    • engineering viability
    • proof of market
    • protection from copy
    • many investors have been taken
  • + - true value IF...
    • HIGH VALUE IF If the concept or process is technically detailed, clearly definable, verifiable by outsiders, understandable by domain scientists AND IF its use could be integrated in existing industrial or commercial processes THEN a buyer MAY be interested without protope to prove engineering or proof of market OTHERWISE YOU wil have to prove engineering (how to build and use) and market (someone will want it when built)
• + - What you do not get
  • someone to enforce for you
  • someone to defend you from counterclaims
  • protection from emulation with work arounds
  • protetion from prior art claims
  • protection from disallowance litigation
  • any endorsement of commercial value
• + - What you lose
  • IP Secrecy - patent will be published for the world to see
  • Stealth Development - all will know what you are up to
  • Independence - someone may patent an improvement that you will need to practice your patent
• + - Any guarantees ?
  • cost of defending it
  • filing fees to maintain
  • contested patent
  • prior art
  • investors' perspective
• + - The process
  • Document your invention
  • Get a witness
  • File provisional application - good for 12 months
  • File for "Treaty Countries" at the same time - almost all foreign countries
  • WTO and Absolute novelty
  • "First to invent" (US) vs. "First to file" (most foreign countries)
  • Do patent search
  • File permanent patent
  • Prosecute (argue it with the PTO staff)
  • Determine Continuation Rules (being changed)
  • Decide what countries to file in
  • Translate for each country - expensive
  • Prosecute in each country - expensive
  • Pay maintenance fees - US
  • Pay maintenance -foreign - expensive
  • Protect/enforce wherever violation is foumd
  • Defend attempts to disallow or invalidate
• + - Alternatives
  • + - Trade secret (forever)
    • Must be not generally known
    • Must make "reasonable" effort to protect
    • Must give some benefit
    • Formulas (KFC, Coke)
    • Practices
    • Processes
    • Sales methods
    • Distribution methods
    • Consumer profiles
    • List of clients and suppliers
  • + - Trademark (10 yrs, renewable)
    • + - Must be unique
      • apple - no
      • apple computer - yes
    • Words
    • Names
    • Symbols
    • Colors & scents used to distinguish goods & services
  • + - Copiright (see Sonny Bono Act)
    • Original works of authorship
    • form of expression
    • not the subject matter
    • Literary works
    • Dramatic works
    • Musical works
    • Artistic works
    • Other intellectual authorship
• + - Credits
  • This roadmap was developed by Joseph R. Meaney, IP attorney, to assist Maricopa Colleges SBDC clients in exploring relevant considerations and making decisions pertaining to patent protection. Further information is available from : Marco Messina SBDC Business Counselor and Administrator of Technology Programs Phone 480-784-0586 marco.messina@maricopasbdc.com Joseph R. Meaney, IP Attorney, Venable, Campillo, Logan & Meaney, P.C., Phoenix, AZ Phone (602) 635-4504 jmeaney@vclmlaw.com