I Have the Power! "the alternative energy and sustainable power blog written by an engineer for engineers" offers
some ill-conceived "legal advice" for inventors.
In the business of intellectual property (IP) protection, the first rule is to establish the date on which a new idea was conceived. Conventional wisdom for establishing this date is to write up a short IP disclosure, seal it in an envelope, and mail it to yourself. The US Postal Service postmark legally establishes the date on which the IP within the envelope was created.
Conventional wisdom, or urban myth?
In an article headlined "
Who's Idea Is This Anyway?" published several years ago, BusinessWeek discussed with intellectual property attorneys Nadine Jacobson and Allison Strickland the pitfalls of protecting ideas:
Q: How do entrepreneurs get into trouble with copyright, patent, or trademark issues?
Strickland: I think for one thing, they listen to the urban myths that circulate. There's one that says if you write out an idea and put it in an envelope and mail it to yourself, it's copyrighted, and anyone else who uses it is infringing. That's widely believed.
Another one says that as long as you don't take more than 25% or 30% of someone else's work, you're not infringing. But neither of those things is necessarily true.
The problem is that IP concepts are confusing and somewhat sophisticated. It's a very confusing part of the law and easy to misunderstand. The safest thing for entrepreneurs to do is to step back from what they think they know and consult reliable sources to get a reality check.
Jacobson: A lot of times, people who are starting up new businesses are concerned about keeping costs down, and they don't want to hire lawyers. So they go to a family friend or a corporate lawyer who dabbles in IP and get free advice, but it's not exactly accurate.
The blogging engineer is confused now, apparently applying an urban myth about establishing the earliest date of composition of song lyrics in which an aspiring songwriter claims copyright, and confusing that with defensive publication of a technical disclosure of a potentially patentable invention.
Patents are incredibly useful tools in that they give the inventor the right to exclude others from making, using or selling the patented invention. However, this exclusive right must be enforced. If someone is using an invention for which you have a patent, you can sue for infringement to reclaim damages, as well as force the offending party to stop. Unless you initiate the infringement proceedings (or the threat of infringement proceedings), there is nothing to make the offending party stop using your innovation. In essence, patents only have power if you are willing to stand up in court to defend them.
The problem is that obtaining patents is not a trivial process. Legal fees, filing fees, maintenance fees, and lost time by your R&D staff can be quite costly. Spending this kind of money on a powerful innovation that can return hundreds or thousands of times the investment is clearly worth it. Yet, only a small portion of the items from a typical invention review qualify as such. More often, the majority of ideas that result from an invention review are good ideas that, for one reason or another, do not end up patented.
Why?
Typically, there are a number of inventions on which you may already have partial patent protection. Inventions that improve upon an existing patented invention are good examples. Another reason you may not wish to obtain patent protection on a good idea is that you don't expect to ever gain back the money that would be spent pursuing the patent. This is highly typical for inventions that improve the operation of some aspect of your business, but are not part of your general business strategy. (A computer chip manufacturer that finds a better way of packaging would be a good example. Packaging sales are not part of the core business, and most likely patents in this area would never be pursued.)
So what happens to the innovation I don't patent?
Typically, nothing. You are free to use your invention without a patent ... until someone else patents the idea. That's when the problem occurs. At this point, they could force you into paying licensing fees, or to stop using the innovation altogether. In essence, forcing you to stop using an idea you had first, but never patented.
If I had the idea first, doesn't that give me the right to use it?
Unfortunately, having the idea first doesn't do anything for you. The only way to prevent another patent from issuing, or defeating one that has already issued, is by being able to prove not only that the idea already existed, but that it was available to the public as well. This is where technical disclosure comes in. Innovation you do not patent is at risk of being patented by others. Publishing that innovation establishes a clear trail of evidence that you had this idea, and made it available to the public. Therefore, it should be considered "general knowledge" by the patent examiners, and not be allowed to be patented. In effect, allowing you to retain your right to use your own innovation, without the hassle and expense of obtaining patent protection.
Mailing yourself a written record of an idea does not prove that the idea was available to the public. To establish that an idea was available to the public as of a date certain that can be accepted as evidence by a court of competent jurisdiction, an inventor can defensively publish a technical disclosure of the invention in the
Prior Art Database, which is accessible by patent examiners at the
USPTO and other patent jurisdictions.
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