How To Protect an Invention
Disclaimer: This Virtuoso Legal article should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents are intended for general informational purposes only, and you are urged to consult your own solicitor on any specific legal questions you may have concerning your situation.
by Todd Bateman
In this FAQ we will look at some key points you’ll need to take into consideration when it comes to protecting an invention.
Doing so can involve cost, but exclusive ownership of an invention that has real potential has no price tag.
In this post, we provide a general outline of the process you need to follow to keep your "next big thing" under wraps.
The first step
Before applying for intellectual property rights to protect your invention - it is important to make sure that you maintain secrecy around it.
In practice, this means keeping quiet about the invention and only sharing it with others when absolutely necessary.
You would be surprised how often we hear of people taking their latest and greatest invention to a trade show, or sharing schematics with manufacturers before having everything in place to make sure that this wouldn't backfire.
Invariably it does (!) and then the inventors find it really difficult when the copycat takes off with the invention - because they hadn't taken the early steps to protect the invention.
Even though Nikola Tesla developed some great technology, it was Edison who applied for the most patents and became the more successful businessman of the two in the long run.
The power of patents
A patent is a registered intellectual property right that protects an invention for a set period. Patents allow the inventor to make exclusive use of the invention and take legal action against anyone who tries to copy the invention during that time.
Instead, parties who wish to make use of the invention apply to use it under license - which typically results in payment of royalties to the inventors. Usually, this is awarded on a discretionary basis by the patent holder. In some rare cases mandatory licenses can be arranged - should the invention be critical for, military defence for example.
This exclusivity period usually lasts around 20 years. During this time inventors are able to reap the rewards of their invention safely in the knowledge that it has the protection it deserves. The caveat is that the invention is made public. However, this does not mean the invention is free for anyone to use - legitimate use by a third party must be subject to license or they risk the patent holder bringing a claim for patent infringement.
Despite this, patents aren’t cheap and require quite a bit of investment up front to apply for. The invention also needs to meet specific requirements in order to successfully acquire a patent. To learn more about patents, click here to read our patent FAQ.
The IP "Thicket"
When it comes to protecting your invention, many think applying for one patent will be enough.
Unfortunately, this is where competitors can work around your registered invention to make a variant or derivative.
Whilst a patent is a cornerstone of protecting an invention - creating a broader IP "thicket" will make sure that competitors are unable to get close and circumvent your protection.
Think outside the box, if you were a competitor how would you approach achieving the same result without infringing the patent?
Look at your invention from different perspectives and gather ideas on how a would-be copycat would approach circumventing the IP.
You may find that other intellectual property rights come into play, such as copyright and brands via trade marks in protecting what is truly special about your invention to end-users.
Design rights could also protect your invention only if the invention is a tangible product that has a distinct shape that does not contribute to its function. Characteristics that come under the protection of both types of design rights can include:
- The physical appearance
- The physical shape
- The configuration or how different parts of a design are arranged together
- The decoration or surface ornamentation of the object
If your invention meets one of the attributes listed above, you will be able to claim unregistered design rights to start as basic protection.
However, we recommend registering the design of your invention to gain even more protection should protecting the above be of interest.
You can discover more about unregistered and registered design rights in our dedicated FAQ here.
One of the most overlooked areas of protecting your invention concerns the parties you are working with. This could be the manufacturer of your invention or employees who has helped develop the invention with you.
Without the right agreements in place between you and the parties involved, it can be difficult to stop them from leaking critical secrets to other businesses before you have the right protection in place.
Whilst you may be able to deal with this post-hoc, having your ducks in a row in the first place avoids the difficulty that comes with defending your intellectual property solely through copyright, or as trade secrets.
Therefore, before discussing with a manufacturer; NDAs, contracts and confidentiality agreements should be in place with employees and other involved parties to prevent details of your invention from being leaked.
Get the experts on board
When it comes to protecting your invention, you should seek out IP specialists straight away. There are narrow margins to follow in the process of taking your invention to the main stage while making sure protection is in place to counter any threats.
What will you gain? Security, knowing your invention and it's potential as an asset to be capitalised on is protected.
From signing NDA’s to applying for patents, IP specialists will be able to take care of this for you, allowing you to free up resources and focus on your invention.
The last thing you want is to find out your invention has been stolen and there is little you can do about it. Bring experts in from the moment you are ready to take your invention forward.
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Virtuoso Legal is a team of intellectual property specialists based in Leeds and London - operating worldwide. Virtuoso Legal's team of IP experts have successfully tried cases in the IPEC, High Court, Court of Appeals and United Kingdom Supreme Court. In addition, the team assist companies in creating, commercialising and protecting the big ideas that make their business unique. The firm and its professionals are ranked yearly in legal directories such as the Legal 500 and Chambers and Partners, cementing their status as a Top 2% law firm in the world.