This is one of several blogs about patenting an invention.

  1. Are there different kinds of patents?

Yes. A utility patent can protect a process, a machine, an article of manufacture, or a composition of matter. Most patents are utility patents, but there are two other kinds of patents: design patents, which protect ornamental designs, and plant patents, which protect new varieties of asexually reproduced plants.

Other kinds of intellectual property include copyrights, which protect writings and works of art; trademarks, which protect brands; and trade secrets, which protect valuable secret information relating to a product or service.

  1. How can I determine if someone else has already patented my idea?

You can never be sure… And frankly, this is a question you should raise with your patent attorney. It’s an issue that involves several interconnected concepts that depend on your specific situation.

But remember: if you decide to find out what other people have invented or described, you must disclose to the PTO every relevant thing you find. Failure to disclose known and relevant prior art can result in a patent being rendered unenforceable and therefore worthless.

  1. Who should be named as an inventor?

An inventor is someone who actually contributes to the conception and/or realization of an invention. Some people contribute more than others, which means inventorship can sometimes become a contested issue. If you have questions about inventorship, you should talk to a patent attorney.

  1. Who owns a patent?

By default, inventors jointly own the patents covering their inventions. Most inventors either explicitly assign their ownership rights to their employers, or they are obligated by an employment agreement to do so. If the inventors have assigned their rights, then the assignee (for example, the employer) owns any resulting patent. If you have any questions about ownership, you should talk to a patent attorney.

  1. How long can I wait before I apply for a patent?

The U.S. is a first-to-file country. This means the longer you wait, the more you risk someone else filing a patent on the same idea you came up with.

One key thing to remember: As soon as you go public, either by a sale or by describing your invention in a public setting, a 1-year clock will start. If you do not file a patent application within 1 year of going public, you will lose your right to file, period. If you have any doubt about whether a given action might constitute a public disclosure, you should talk to a patent attorney immediately.

  1. If I can keep my invention a secret, should I still get a patent?

The quid pro quo for getting a patent – which gives you a right to exclude everyone else from making, selling, or using your invention for 20 years – is public disclosure. You must teach “one of ordinary skill in the art” how to make and use your invention.

If you can keep your invention secret, and if others cannot easily figure out how your invention works by reverse-engineering it, etc., it may make sense not to patent your invention and keep it a trade secret; but you really have to keep it secret.

  1. Final Thoughts.

Always talk to a patent attorney when you are thinking about filing a patent application. The benefits of receiving good personalized advice to fit your situation can be priceless.

Clyde Findley is Special Counsel in the Intellectual Property practice at Berenzweig Leonard. He can be reached [email protected].