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[PFuniciell]

  New to the forum here. I have a question, well a couple infact. I have a potentially lucrative idea that I thought of while hanging out at a resort in Las Vegas a year ago. I say lucrative only because there is potential for a global market of this item. There are resorts around the world, so that's why I know if I play my cards right, it can be very rewarding.
 My question is 1) How do I go about disclosing my idea to a patent lawyer or patent firm without getting back-doored by that person and coming to realize they patent it themeselves and I'm left in the breeze. 2) This item, once fully materialized in it's operational phase, is low-cost, virtually maintenance-free and can be very profitable. Needs very little start-up $$, so I don't need a financial backer. How do I go about getting a patent licence, what are the costs, limitations, duration of patent licenses, etc. etc.
  I'm new in this, haven't even popped my cherry yet, but I know I have something good and I wanna do it the right way without getting screwed. Curious? Any input is great input. Thanks.

[Isaac Clark]

Most practitioners would have no problem signing a non disclosure agreement, but even without doing so they are ethically bound not to steal your invention or to reveal it except to the extent required to accomplish what you want them to do.   In fact it is not uncommon for patent attorneys to provide an NDA but you can certainly find your own form.

You can also provide some insurance by keeping an inventor's notebook documenting your idea and signed by witnesses who could verify the date of conception.  You'l  want to have your witnesses bound to maintain confidenitiallity as well because once your idea is known to the someone who is not so bound, you have only 1 year to file a patent application.

[eric stasik]

Dear PFunicell,

Mr. Clark is correct. You will want to document your invention. Buy a bound notebook whose pages are numbered, write down you idea in as much detail as possible, in INK, sign it and date it and then get someone who you can trust who is capable of understanding the invention to sign it and date it too. Normally, they would sign "read and understood" and the date and place. If you are paranoid, get it notarized (not usually necessary, but can't hurt).

Now this is only a start. Patents in the US are awarded to the first person to INVENT not the first person to file. The important word here is INVENT. You have to have an invention not just an idea. There are two ways to make an invention: 1) reduce the idea to pratice by building a working model, or 2) filing an application for patent with the USPTO (the latter is called a constructive reduction to practice.)

The important date is the DATE OF INVENTION

[eric stasik]

Continued.....

The important date is the DATE OF INVENTION. This is not the date when you had the idea in Las Vegas, this is the date when you built a working model or filed the application. Here is where the notebook comes into play.

If you can show that you worked DILGENTLY

[eric stasik]

continued again.... (sorry, new keyboard, my fingers are not landing properly)

If you can show that you worked DILIGENTLY on the idea from the time you had the idea to the date when you reduced it to practice, you may be able to claim the date of conception as the date of invention. So a well-documented record of this (as would be kept in your notebook) may be evidence of this.

As for an agent or attorney stealing your idea, the risk is very, very, very small. There are professional codes of ethics which prevent this, you can sign an NDA as Mr. Clark suggests, and your notebook would be evidence of prior conception if there was a dispute. Also, agents and attorneys regularly deal with inventors who think they have the world's greatest idea and so this is more or less business as usual.

As a final comment, spend a little time doing some research to see if anyone has already patented the idea. If it has, you can save yourself some time and money. There are more than 6 million US patents in existence and you might be surprised at what you find...

http://www.uspto.gov/patft/index.html

Good Luck,

Eric Stasik

[M. Arthur Auslander]

Dear PFuniciell,

Lawyers have over the millenia earned their bad reputation. That reputation does not USUALLY include, patent practicioners stealing clients inventions.

The biggest abuse is their being paid for the legitimately obtaining of patents which on there face have no value or practical use and or are avoidable.

I cannot recall ever hearing of a registered practicioner ever stealing an invention.

Even, no good patents, are not cheap. They are going to cost several thousand dollars.

Frankly that is why we start with a Reality Check®, to save time money and worry. Get straight answers as to what your chances are with or without a patent and if a patent is issued, "will it give you what you want?"

Just seeing an after product on the market does not mean that it was stolen and I am not aware of anything
that has even been imputed to $100M a year industry that gets patent, where only one in 10,000 get back more than they pay.

[JimIvey]

I'll go ahead and toss in my 2 cents as well, though most of the ground has been covered already.

1.  Attorney/Firm stealing your idea.  It's more than an ethical obligation not to do so -- it's a legal obligation.  Violating a client's confidence, along with mixing their money with the attorneys, are grounds for "virtually automatic disbarment" (quoting my ethics professor).

Now, please don't take this the wrong way, but very few patent practitioners will *want* to steal your idea.  Not that it's not a great one, but keep in mind that patent practitioners have to pay their mortgage (or rent) every month for 30 years or more.  Stealing people's ideas is not a good way to meet that obligation long term.  Patent practitioners have spent many years developing a highly sought-after skill so that they can provide a service.  Most patent practitioners would much rather develop a long-term, rewarding relationship with a prolific inventor providing that highly sought-after service than steal one of her/his ideas and take a huge risk that it might not churn out the big bucks.  And ... you can only steal so many ideas before people stop bringing them to you. ;-)

Given that context, I've never signed a client's NDA.  Not by always refusing, but by explaining this to them -- then they forget about the NDA and get down to business.

2.  How to get started.  Just a matter of semantics, you said you wanted a patent license.  I think you meant you wanted a patent that others might be able to license from you for a fee.  It might sound nit-picky, but I find it best to clear up exactly what the question is before proceeding.

Mr. Auslander's admonition that not all patent applications are worthwhile is appropriate here.  A patent practitioner can help you estimate the costs of going forward.  You'll have to figure out the benefits (potential market size, ability to preclude competitors, etc.) against which to balance the costs.

Mr. Stasik is correct about the US being first-to-invent rather than first-to-file.  However, I wouldn't rely on that too long -- especially since you perceive your market to be worldwide.  All other countries are first-to-file jurisdictions and you'll want a US application on file ASAP for those jurisdictions, just in case you want protection outside the US.  That's a decision you can generally defer up to one year after filing in the US.

Here's my take on the "Most Important Thing You Need to Know About Patents:"
http://www.iveylaw.com/index.php?option=articles&task=viewarticle&artid=3&Itemid=3

In short, it's timing.  Things you may be doing now might preclude you from getting a patent in the future.  If you do the wrong thing now, the ability to get patent protection may be lost and the decision as to whether it's worthwhile to file an application then becomes moot.

Good luck!

[PFuniciell]

I would like to extend my appreciation for your guys' input and information. I feel a little more level-headed as far as the legal parameters you have laid out in relation to someone stealing a potential idea. And yes, I am fully aware of the fact that so many people think they have the world's greatest invention, only to be shot-down and told it's not gonna happen. I could very well fall into that category as well, but I really see a market for this invention (it's economical, low-maintenance, low-cost, and profitable while it's operating, and it pertains to resorts. (Hence, the global market craze)      Thanks again and if it's o.k. with you, I would like to ask if I can keep in contact vie e-mail for any further advice?

PFuniciell

[M. Arthur Auslander]

Dear PFuniciell,

The heartbreak in this business is when a really good invention gets patented and then goes nowhere.

[JimIvey]

... and if it's o.k. with you, I would like to ask if I can keep in contact vie e-mail for any further advice?

It's fine with me, but don't use the address associated with my username -- it's heavily spammed (more than 1,000 per day) and heavily filtered.  Go through my website instead.

And, if your question is a general one (not specific to your facts), why not post it here so others can learn too?  And, you might search the archives in that a lot of issues seem to repeat.

And, there's a limit to how much time each of us can spend with an issue before we have to start charging for it.  In my case, it's not so much an issue of money as an issue of time, having a line of paying clients waiting for their patent applications.  I generally don't have enough time to do anything more than an ocassional tidbit of patent law off the top of my head.  I hope you'll understand.

Regards.