A post from our student blogger Catie
Maybe you have this fantastic idea in your head for a new invention, and you already did a little digging around on your own to see if your idea already exists. You scoured the internet and maybe did your own Google Patent search. From what you can tell, no one else has ever patented or sold your invention! You take your napkin sketches to a company that owns a bunch of patents in the field of your invention. You show them your sketches, explain the technology behind your invention, and give a great sales pitch on why this invention would benefit the public. Unfortunately, they look fairly unimpressed, and they quite distractedly tell you that they’ll get back to you when they can. Months go by, and you don’t hear back from them. You may have been putting in hours to reduce your invention to practice, meaning you work to create a real product out of your idea. You tell yourself that you’ll try again, but then you get distracted by school or work. A few years later, you see a commercial for your product, produced by the company to whom you originally showed your sketches. You go searching again and find that they patented YOUR idea! What can you do??
Unfortunately, there may not be anything that you can do about it. Situations like this one and ones that are more nuanced happen all the time, and this is why your patent agent or attorney may pester you with tons of questions regarding any “disclosure” you may have made. A disclosure is basically any description or demonstration of your idea to be patented that is discoverable to the public before you filed any patent application. Disclosure can be an elusive topic, as it is not always as blatant as running out to show your napkin drawings or lab data to a third party. Sometimes, it can be as simple as having a phone conversation about the technology when someone nearby overheard it, or presenting your data in the form of an oral presentation or poster to colleagues when a guest happened to stop by and overhear your idea. Public disclosure is not always a cut-and-dry event, which is all the more reason why the inventor should guard his or her idea carefully to prevent others from knowing about the technology until a patent application is filed.
The scenario described previously is a loss for the true first inventor of the technology because there is a ‘First Inventor to File’ (FITF) system in place. This means that whoever files a patent application on a certain invention first and can show that he or she has reasonable mastery over the technology of the invention will be granted the exclusive rights of a patent. In this case, the company definitely stole your invention, but they filed an application first and likely harnessed an understanding of how to make the invention function correctly. This is not to say that the FITF system is bad; it is just in the best interest of inventors to take certain precautions to protect their IP.
There are a few scenarios where you could have prevented this from happening. Firstly, it is important to keep thorough notes over your idea and always date them. That way, you possess proof that you had ownership of the idea first. Secondly, as suggested previously, avoid disclosing your technology as much as you can. No one can find out about your invention and steal it if you never tell anyone about it! Although, if you must make a disclosure, you may want to consider filing a provisional (similar to a placeholder) application or implementing a confidentiality agreement before disclosing. In this way, you are protecting your IP and claiming it as your own before others can experiment with it for themselves. Even if you don’t take this route, you can still claim rights to your idea as long as you file a provisional or non-provisional (actual patent application) within one year of your disclosure date. However, the clock will be ticking and you can never be sure who is trying to patent the same idea. Therefore: go forth, keep inventing, and don’t tell anyone about it until you have a provisional!