Idea Protection.
November 25, 2005 12:51 PM   Subscribe

How should I protect an idea which requires collaboration and may be patentable?

My idea involves tweaking existing computer technology and combining it with medical technology to serve humanitarian ends. I would be just as happy doing good as making money, but developing this idea will involve collaboration with others, and I would not like to lose the right to patent if it shows promise. How should I approach collaborators? Is a simple non-disclosure agreement enough?
posted by weapons-grade pandemonium to Law & Government (6 answers total)
In my experience, I would say submit the patent application first, then use NDAs. Of course, that's a lot more expensive than just using NDAs. Submitting the patent first gives you priority, even if someone were to violate the NDA and submit an application of their own (and they had the funds to exhaust your court options). Even if you were to go the NDA route, I would have a lawyer custom tailor the document for you, many of the boilerplates available are deficient in one way or another.

Also, have you done a patent search yet? Talked to an IP lawyer? In my opinion, you'd have to have a miraculously innovative idea to have come up with something that hasn't been patented (or is close enough to an existing patent) already, especially in the medical/technology field. Not to discourage you, but it's extremely difficult to successfully file a patent, especially if it's a "tweak" of existing processes or products. Usually, if a reasonable person can infer your usage from existing patents (very loosely), it will be rejected. I've tried twice and was disappointed both times. Both times I didn't tell anyone about it until it was "patent-pending".
posted by loquax at 1:12 PM on November 25, 2005

It's not "extremely difficult to successfully file a patent;" that's a pretty straightforward process. Obtaining a patent, especially one that's worth something, is another matter.

Anyway, if you're really worried that your collaborators will steal your idea (despite the NDA that you'll certainly ask them to sign), you could file a provisional patent application before you get started. That's relatively inexpensive (at least as far as U.S. Patent Office fees go) and can provide some protection for up to a year, while you try to get things going.

Having a patent attorney draft your provisional app is probably your best bet, but if you're going to do that, it won't be much cheaper than having a full-blown application drafted, because a good provisional app is almost as much work as an ordinary application.

You could write your own provisional app. If you're careful to put every aspect of your idea in it, including lots of explanation and examples of how the parts work together and why you'd chose to do A instead of B, it'll be better than nothing. At the very least, it may serve as prior art if your collaborators try to screw you and patent your idea.
posted by spacewrench at 2:59 PM on November 25, 2005

Obtaining a patent, especially one that's worth something, is another matter.

Yes, poor wording on my part. Sorry.
posted by loquax at 3:04 PM on November 25, 2005

IANAL, but I have been an inventor on several patents, so a few points worth mentioning:

1) In the US, you have 1 year after a paper is published/otherwise made public in which to file a patent appication. If you were to publish your idea, you then have 1 year of priority. Unfortunately, it opens things up to competition. I am not sure whether you can patent claims beyond those which are explicitly stated in your publication. Also (and this is a key point)- foreign patent rights are generally waived if you publish before filing. This could, of course, be a big deal if a company wants to use the technology in another country.

2) Typically, the price for a professionally-prepared patent is on the order of $5,000-$10,000. I would suggest doing some looking on your own before involving a patent-preparer. That having been said- self-prepared patents are often difficult/impossible to enforce, so I would recommend a professional.

3) Licensed patent preparers can often do the same things as a patent attorney, but at a lower price. Actually, a friend of mine is a freelance patent agent, so if you're interested, let me know and I'll give you his contact information.

Again, IANAL, but I hope this is helpful.
posted by JMOZ at 4:58 PM on November 25, 2005

I would disagree that patenting something, even in a crowded art, is difficult. If your way is new, and not obvious it should be patentable. If it is better than what is now known, it will usually be considered not obvious. While it may not be that difficult, it can be expensive, say $5,000 to $10,000 when using an experienced patent attorney and including all the patent office fees, and that is just for a US patent, foreign patents are another say $10K apiece, although the prices vary wildly from country to country. This is money well spent for a good idea though.

Who is the collaborator, a friend, colleague, a company that you hire, or a company to whom you would like to sell your idea? It matters. For any of the first three some form of contract should be fine. Hire a lawyer. Even with a company who might buy your idea a contract should be fine, but as loquax said, if you file a patent application before you even show them the idea it improves your ability to duel with them in court should it come to that. Most companies are not out to steal ideas, although they can be sloppy about who contributed what to a new product. For reputable companies, and most larger medical product companies are quite reputable, a confidentiality agreement should more than suffice. You will of course show the details of your idea to your attorney, an attorney who can understand the technology, so that you establish a good record of what you have prior to revealing the technology to potential suitors.

An "experienced" attorney can really help here and that is the key, many attorneys in firms are not really very experienced in helping you negotiate with potential suitors. They can write a patent for you, and litigate against infringers for you, but are often inexperienced with the agreements. Look for someone who does confidentiality agreements every week, consulting agreements every month and at least a couple of licensing agreements every year if you can find someone like this. At a minimum, get someone who has at least a dozen or so experiences in assisting someone to present their patentable ideas to industry.

Good luck to you.
posted by caddis at 7:58 PM on November 25, 2005

Thanks to all for the helpful advice.
posted by weapons-grade pandemonium at 12:01 PM on November 26, 2005

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