Issues for Inventors in Intellectual Property (IP)
Use this checklist as a starting point for preserving your IP legal rights
Note that if you are interested in international IP protection, see that section of this Website also
What you need to do
Do documentation of the invention-conception, reduction to practice, and prototyping
Invention documentation must be a permanently bound and / or stitched lab type notebook (no spiral or 3-rings) wherein the pages are not removable, (Typically known as a “Lab Notebook”), with each and every page marked as follows:
"Confidential"-to give notice that this is a trade secret.
Title of the Invention-to identify.
A docket number-to serialize.
The activity-to summarize the information on the sheet.
The inventor(s) signature(s) that are dated.
At least two witnesses’ signatures wherein the witnesses have “Witnessed and Understood the Invention” that are dated and are prefaced with the statement “Read and Completely Understood”.
Space for signature Notary stamp who witnesses all of the signatures to help prevent forgery.
Separate sheets – for large drawings and other independent data sheets, each must be marked with all of the above information and signatures, note always articulate the independent sheets to the lab notebook and vice versa (i.e. cross reference the documents to each other).
All information must be in blue ink (this makes a better differentiation for the original). Also, witnesses cannot be family members or anyone with an interest (financial or otherwise) in the invention, (NO spouses, relatives, co-inventors, or your patent practitioner), the witnesses must be impartial outsiders who have witnessed and understood the invention, always use a confidentiality agreement with the witnesses.
This notebook will contain all thoughts, impressions, sketches, drawings, records of activities, experimental test results, and any other information pertaining to the activities related to the invention. Do not write opinions in the notebook, only factual based information. Other items should be included such as, circumstances surrounding your conception of the idea, proposed utility of the new invention, use lots of sketches, and completely document all of your testing i.e. setup, procedures, results, and conclusions.
Also document all disclosures, sales, experimental testing, publications, presentations, consultants, and commercial uses. Put complete contact information in the lab book such as, inventors name, address, phone, fax, email, websites, etc. Articulate sheet to sheet wherever you can, i.e. cross reference figure to figure, calculations, subjects and headings. Numbering ALL figures, photos, printouts, graphs, sketches, etc also helps articulation. If the separate document such as a picture is smaller than the sheet in the lab book, permanently attach the separate document to the lab book sheet. If you make mistakes or leave blanks space on the pages, never remove pages or use whiteout, you should simply draw a line through the incorrect data, or make a big X in the blank space and sign and date by the mistake or by the space.
Never remove pages or ship sheet numbers. Use blue ink for everything you record in the lab book. Also, keep all receipts, invoices, contracts, and the like related to your conception and reduction to practice activities, such as a receipt for materials purchased for the invention.
Anyone you disclose the lab notebook to must be under a confidentiality agreement, also never leave the lab notebook in a public area, never allow anyone to copy from the lab notebook, and control access to the lab notebook, i.e. do not leave the lab notebook out in the open, it must be locked in a file cabinet for instance when you are not using it. As you are trying to preserve the legal “trade secret” status there are a number of precautions you need to take, see under the “Articles” button going to “Trade Secrets” for more information.
The objective of the lab notebook is to unequivocally prove your trade secret activities that occurred in the past, as the lab notebook may become important in litigation 10-15 years from now, it should be safely retained indefinitely in a secured place.
If you do not now have a lab notebook, start one.
Note that other forms of proof for the invention, i.e. videotapes, audio tapes, compact discs, the actual prototype part or assembly, etc. are NOT acceptable disclosure materials, as a disclosure requires a document with all information as required above for the Lab Notebook.
Also, it is a good idea to keep two lab notebooks (and all other documentation) with all the requirements as listed above for each lab notebook that are stored in separate places, in case of misplacing the lab notebook, or loss of the lab notebook in a fire, or flood, and the like.
Do preserve confidentiality of the invention, also known as keeping the “Trade Secret” Status of the Invention.
Do take security and confidentiality measures related to where your inventive work takes place, i.e. lab, workshop, and office.
Do control access to others for your inventive workspace allowing access only to those with a need to know that are all under confidentiality agreements.
Do have confidentiality agreements with those individuals who have a need to know.
Do mark ALL documents related to your invention “Confidential” on each and every page.
Do have a confidentiality agreement with all outside individuals whom you disclose your invention to.
Do have access to the World Wide Web; it will be invaluable for you to:
Do preliminary prior art searches to learn the “State of the Art” related to your inventions technology.
Do marketing research to ascertain your inventions commercial potential.
Do business research to create a business plan.
Do use the “Resource Links” section of this Website as a starting point for resources of interest to inventors.
Do keep a confidential record of all your research.
Do product promotion after you have secured your intellectual property rights by filing a patent application.
Do seek the help of others who have been there.
Do join a reputable inventors organization or support group.
Do be aware of inventor’s fraud issues (See “Resource Links”) to enable you to make informed decisions about using inventor’s services.
Do focus on commercialization of your invention.
Do make a serious assessment of your inventions commercial potential and make it a priority prior to securing a patent or trademark.
Do get professional help for creating your business plan; marketing studies, and evaluating manufacturing options, always remember to use confidentiality agreements with all individuals you disclose your invention to. The business plan should include as a minimum; a marketing plan and campaign (repetitive schedule) that includes distribution and sales, also management and other personnel requirements, manufacturing needs, and physical facility needs. In additional an intellectual property plan, a schedule for implementing all of the above and a budget for all of the above with amounts required and timing of these amounts. The business plan in total need not be excessively detailed, it just has to have enough information to provide a roadmap for you to follow to initiate the commercialization process for your invention and to be used to attract investors.
Do be realistic on your capital; timing, scheduling, and financing needs, launching a new product is a significant undertaking.
Do realize that commercialization and the structuring of your intellectual property rights are interrelated.
Do consider these commercialization decision points: Are you going to license your technology or manufacture and market yourself? Are you going to prototype the invention, do you need to test the invention, what changes need to be made for quantity production.
Do realize that if your commercialization plans go outside of the United States, in other words being international there are additional considerations, see the International Issues section of this Website.
Once you are convinced that there is a high degree of commercial potential for your invention.
Do have a professional prior art search done and obtain a professional patentability opinion and preliminary literal infringement opinion.
Do make sure that your commercialization plan and intellectual property rights creation plan are coordinated.
Do remember the “Absolute Novelty” requirement if you are interested in international intellectual property rights, i.e. your must file your patent application prior to public disclosure if your invention.
Do use and be aware of every legal right you have that can benefit you.
Do realize that there is much more to intellectual property protection than just patents, ask yourself if your invention can benefit from a trademark, a copyright, different types of patent protection, or maintaining a portion of the invention as a trade secret.
Do be aware that intellectual property is very dynamic and needs various forms of maintenance to keep your intellectual property rights through time.
Do treat your intellectual property as an asset to be optimized, see “General Intellectual Property” going to “Portfolios” page of this Website.
Do be aware of product liability issues that can affect you
Anyone in the manufacturing, distribution, and sales of a product can have liability.
You can be liable for a “Reasonably Foreseeable Misuse” of the product by the consumer irrelevant to your level of care in the design, manufacture, distribution, and sale of the product. Thus, you must accommodate the potential misuse in the design of your product for user safety.
You should always have adequate warnings on the use of a product that state:
The nature of the risk.
How to avoid the risk.
The consequences of the risk.
Always have clear, detailed, and adequate instructions on how to use a product.
Have well documented design records using your lab notebook to show that the industry standard of technology was used at the time of design of the product.
Know all applicable codes and standards that apply to your product for compliance, remember the Patent Office does not check for standards compliance.
Consider obtaining product liability insurance, it will probably be required by 3rd party manufacturers, distributors, and retailers for your invention.
Doing all of the above does NOT eliminate your risk of product liability; it only helps to reduce it.
What you cannot do
Do not disclose your invention to anyone anywhere without a confidentiality agreement. If you have made a disclosure without a confidentiality agreement you are precluded from an international patent, as the “Absolute Novelty” requirement on your invention is not meet. For a United States patent you have a one-year grace period after a disclosure without a confidentiality agreement to file a United States patent application. If there has been more than a year since the disclosure without a confidentiality agreement, you are also precluded from obtaining a United States patent.
Do not launch a new product (even if you do not have a patent) until you have had a professional prior art search and opinion to ascertain for your products possible infringement of existing patents.
Do consider the risk of losing your economic investment in commercializing your invention if you launch the product without a patent to protect it, besides the independent risk of your infringing someone else’s patent, in other words another company could simply steal your idea and sell it themselves, and in either case you will have lost your investment in commercializing your idea, or you could risk infringement liability also.