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Inventors Handbook
IV. Disclosure of the invention
As inventors transform ideas into completed inventions, it is often
necessary to disclose parts of the invention to third parties prior
to filing for the patent. This may include others skilled in the
art of the invention, potential investors, and persons involved
in marketing inventions.
Record Keeping: It is a good idea to maintain a record book for
the invention, which is signed and dated. In some instances, it
can be worthwhile to have documents notarized. Although many countries
are “first to file” jurisdictions, the United States
is a “first to invent” jurisdiction, and documents related
to the date of invention (as opposed to the application filing date)
can be useful as evidence.
Contracts: Contracts are also useful tools in preserving patent
rights. Non Disclosure Agreements can be a valuable safety mechanism
for protecting an invention. Although such agreements provide only
a contractual remedy in the event of an unauthorized disclosure,
such an agreement is an inexpensive deterrent against the unauthorized
use of information related to an invention. Non-Disclosure agreements
are frequently combined with Non-Compete Agreements to prevent third
parties from capitalizing on disclosed information.
Assignments: If there are multiple co-inventors, each inventor will
have an equal undivided right in the invention. Therefore an assignment
agreement should be in place before disclosing or developing an
invention with third parties. Under such an agreement, each inventor
agrees to assign their rights in the invention to another party,
such as a company or partnership that will own the patent rights.
This prevents multiple inventors from undercutting each other in
the market if the invention is a success.
V. Patent Searches
A preliminary search of an invention can be useful to assess the
current state of the Art regarding the invention, understand potential
prior art references, and to avoid infringing existing patents.
If a patent has already been granted on an invention, no subsequent
patents may issue on the same invention. However, improvements to
patented inventions that are themselves novel, useful and non-obvious
are patentable.
Inventors can search issued patents and published applications online
at http://www.uspto.gov/patft/index.html,
or in person at a USPTO patent depository library.
Professional searches can be conducted using a patent search firm,
or patent law firm. Using professional services is frequently advisable,
since patent searchers are familiar with the USPTO classification
scheme, and will search entire classes and subclasses of inventions.
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