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Submission Without Patent
by kschmidt82 » Thu Dec 16, 2010 7:39 pm
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Okay. So I submitted my idea without having filed for a provisional patent or anything. It is well documented though.
Looks like this is going to move ahead to the production phase so here's the deal. I had made a prototype of my invention but it was not of the finished material or specifications of what I would expect it to go to market as. It was mainly what I would call a proof of concept. This creates a question for me.
If the company I submitted it to goes ahead with production and we reach a licensing agreement, how does the patent thing work? Will they refine the design and then patent it? If so will I retain any of the rights to the patent since the original concept and design was mine? I'm worried that they could easily take what I submitted, improve it quickly, then patent their version and cut me out. Is this a realistic worry or am I protected since the original concept was mine?
Also, at what stage do I start looking into hiring an attorney to handle licensing negotiations? Do I really even need an attorney?
I have so many questions since this is my first time submitting any invention and now it's going ahead. Thanks.
Kyle
Looks like this is going to move ahead to the production phase so here's the deal. I had made a prototype of my invention but it was not of the finished material or specifications of what I would expect it to go to market as. It was mainly what I would call a proof of concept. This creates a question for me.
If the company I submitted it to goes ahead with production and we reach a licensing agreement, how does the patent thing work? Will they refine the design and then patent it? If so will I retain any of the rights to the patent since the original concept and design was mine? I'm worried that they could easily take what I submitted, improve it quickly, then patent their version and cut me out. Is this a realistic worry or am I protected since the original concept was mine?
Also, at what stage do I start looking into hiring an attorney to handle licensing negotiations? Do I really even need an attorney?
I have so many questions since this is my first time submitting any invention and now it's going ahead. Thanks.
Kyle
Re: Submission Without Patent
by Scrupulous » Thu Dec 16, 2010 11:50 pm
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Scrupulous - Black Belt
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kschmidt82 wrote:Okay. So I submitted my idea without having filed for a provisional patent or anything. It is well documented though.
Looks like this is going to move ahead to the production phase so here's the deal. I had made a prototype of my invention but it was not of the finished material or specifications of what I would expect it to go to market as. It was mainly what I would call a proof of concept. This creates a question for me.
If the company I submitted it to goes ahead with production and we reach a licensing agreement, how does the patent thing work? Will they refine the design and then patent it? If so will I retain any of the rights to the patent since the original concept and design was mine? I'm worried that they could easily take what I submitted, improve it quickly, then patent their version and cut me out. Is this a realistic worry or am I protected since the original concept was mine?
No, it's a realistic concern. This is a common situation, and there are well-documented instances where the inventor gets bent-over for not recognizing the danger soon enough.
Best practices for inventorship, for those who would be interested in seeing patent rights on their projects at some point along the way, seems to be moving toward appreciating the advantages of sole inventorship. If a clever project stands to be improved at all, probably the best way to avoid major risks later on--risks that tend to favor the devious over the earnest--is to pre-empt a co-inventorship scenario, whenever possible.
What this means is that if you have something others would be interested in, then that is maybe your best indication that it deserves its own protection. Overzealous individuals or companies may be eager to make slight improvements, or to specify already-inherent features. At times, they may mistakenly believe that they have become inventors for it. Heck, even if they are purely enthusiastic about your concept, they may have no knowledge of patent law whatsoever, and innocently believe they can attach ownership to your work simply by recommending a material.
The important thing about all this is...avoid that situation at all costs by having a patent filed in your name only, for the part that you came to them with.
kschmidt82 wrote:Also, at what stage do I start looking into hiring an attorney to handle licensing negotiations? Do I really even need an attorney?
I have so many questions since this is my first time submitting any invention and now it's going ahead. Thanks.
Kyle
Let's be savvy now, Kyle. By now, you should probably know the difference between a contract lawyer and a patent practitioner. You may not even desire your own contract lawyer if the interested company already retains one, because that would be just more money out of your pocket. But this is putting the cart way before the horse.
To maximize your chances of getting the most out of your contribution early on, you should probably A) fully understand the benefits you are bringing to the table, and B) avoid speaking to other parties until you are very clear on how those benefits will be claimed by you. If you are not clear on that, then you may wanna consult with a patent practitioner.
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I'm Ken Campbell, a registered US patent practitioner at the Affordable Patent Serviceâ„¢.
As a forum moderator, though, any input I provide should be considered general information, and not legal advice. The ideas I express are not necessarily the opinions of InventorSpot.com or its affiliates. In general, any action taken as a result of information, analysis, or advice from any forum members on this site is ultimately the user's responsibility.
I'm Ken Campbell, a registered US patent practitioner at the Affordable Patent Serviceâ„¢.
As a forum moderator, though, any input I provide should be considered general information, and not legal advice. The ideas I express are not necessarily the opinions of InventorSpot.com or its affiliates. In general, any action taken as a result of information, analysis, or advice from any forum members on this site is ultimately the user's responsibility.
Re: Submission Without Patent
by Gizmo » Fri Dec 17, 2010 7:21 am
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How well documented is your invention, is it done the correct way?
http://www.idearights.com/invtntbk.htm
Yeah heres a perfect example ...Just so happens the inventor was smart enough to pick up the well documented paper trail along the way.
viewtopic.php?t=4311
.
Scrup is dead on correct,just because someone suggest using a certain material or size of the invention does not make them a co-inventor.It doesnt allow for someone to claim a new invention because they used a different material that they didnt invent.
The link I posted above is a Perfect example,the inventor could of proved there concept with a Tootsie Roll,Fruit Roll Up, or even a Tampon and a pc of flexible wire pushed throught it.
http://www.idearights.com/invtntbk.htm
No, it's a realistic concern. This is a common situation, and there are well-documented instances where the inventor gets bent-over for not recognizing the danger soon enough.
Yeah heres a perfect example ...Just so happens the inventor was smart enough to pick up the well documented paper trail along the way.
viewtopic.php?t=4311
.
[/quote]What this means is that if you have something others would be interested in, then that is maybe your best indication that it deserves its own protection. Overzealous individuals or companies may be eager to make slight improvements, or to specify already-inherent features. At times, they may mistakenly believe that they have become inventors for it. Heck, even if they are purely enthusiastic about your concept, they may have no knowledge of patent law whatsoever, and innocently believe they can attach ownership to your work simply by recommending a material.
Scrup is dead on correct,just because someone suggest using a certain material or size of the invention does not make them a co-inventor.It doesnt allow for someone to claim a new invention because they used a different material that they didnt invent.
The link I posted above is a Perfect example,the inventor could of proved there concept with a Tootsie Roll,Fruit Roll Up, or even a Tampon and a pc of flexible wire pushed throught it.
(this user has been banned)
Re: Submission Without Patent
by Roger Brown » Fri Dec 17, 2010 8:04 am
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Roger Brown - Black Belt
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kschmidt82, what type of agreement do you have with the company at this point? Did you each sign anything, a NDA, MOU? Are they doing anything that makes you feel they are not going to treat you correctly?
Have they stated they will pay for a patent? Do you know if a patent is even needed?What type of deal were you wanting from them? Are you looking for royalties, a partnership or something else?
Have they stated they will pay for a patent? Do you know if a patent is even needed?What type of deal were you wanting from them? Are you looking for royalties, a partnership or something else?
Come visit my sites at http://www.RogerBrown.net
or http://www.looking2license.com
I have gotten 9 products licensed spending less than $100 on each, you can too.
or http://www.looking2license.com
I have gotten 9 products licensed spending less than $100 on each, you can too.
Re: Submission Without Patent
by kschmidt82 » Sun Dec 19, 2010 11:35 am
- kschmidt82
- White Belt
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- Joined: Sat Dec 11, 2010 2:07 pm
At this point we have an NDA as well as several emails back and forth in which they have stated outright that they realize they have no rights to my invention until a licensing agreement is reached.
To be perfectly honest, my working prototype was made of a coat hanger that I bent into the proper form to demonstrate my concept. In my submission I specified that this was only a rough prototype and that a final product would be made of a hard plastic and I gave them drawings of what a finished product would look like. I did this specifically to document that I had already taken into account the obvious improvements over my coat hanger design.
I believe a patent would be needed since this is an original design and application.
At this point I am looking for a licensing agreement with royalties. I just want to make sure that I retain ownership. I have read that there are agreements where there is a minimum amount per year due to the inventor and if that is not done then I could take my idea elsewhere.
There has been nothing so far to suggest that they would be shady. From what they have said, they have a history of being "inventor friendly" and if they have a history of working with inventors I think it would be bad for their reputation and business if they were shady.
Thanks guys.
Kyle
To be perfectly honest, my working prototype was made of a coat hanger that I bent into the proper form to demonstrate my concept. In my submission I specified that this was only a rough prototype and that a final product would be made of a hard plastic and I gave them drawings of what a finished product would look like. I did this specifically to document that I had already taken into account the obvious improvements over my coat hanger design.
Roger Brown wrote:Do you know if a patent is even needed?
I believe a patent would be needed since this is an original design and application.
Roger Brown wrote:What type of deal were you wanting from them?
At this point I am looking for a licensing agreement with royalties. I just want to make sure that I retain ownership. I have read that there are agreements where there is a minimum amount per year due to the inventor and if that is not done then I could take my idea elsewhere.
Roger Brown wrote:Are they doing anything that makes you feel they are not going to treat you correctly?
There has been nothing so far to suggest that they would be shady. From what they have said, they have a history of being "inventor friendly" and if they have a history of working with inventors I think it would be bad for their reputation and business if they were shady.
Thanks guys.
Kyle
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