HOW TO CHEAPLY PROTECT YOUR IDEA

In the New York Times’ “You’re the Boss” column dated February 21, 2011 subtitled “The Art of Running a Small Business” the author, David H. Freedman, wrote “Got a Great Idea? Tell Everyone!” In that column, he cites the example of an individual who started a company that got off to a great start only to be eclipsed by Facebook’s decision to allow outsiders to develop applications for its site. In my opinion, that individual’s mistake was not in not telling others of his idea but rather in not investigating whether his idea was already being used by others.

There is this amazing app called the Internet and there exists a variety of search engines on it; Google, Bing & Safari, to name the most popular, that will allow you to see if your idea may, in fact, already have been developed by someone else. You can also go to the main Google page, click on “more” then click on “Scholar” and search patents that may have incorporated your idea.

IMPORTANT NOTE & DISCLAIMER-I do not recommend doing this in lieu of having a patent attorney conduct a search for you nor will the disclosure of a similar invention to your idea in this database mean that your idea either infringes a patent or is unavailable for your use; this can only be determined by the opinion of a licensed patent attorney.

As shown in the movie, “The Social Network,” telling someone your idea may have unforeseen consequences. Just ask the Winklevoss twins who suggested to Mark Zuckerberg the idea of creating an on-line social network for Harvard students named HarvardConnection which was to be expanded to other schools around the country.

Therefore, before you show your idea to anyone other than your lawyer with whom you should have a privileged relationship; such as a potential investor, customer, etc. (even a girlfriend or boyfriend), have them sign a nondisclosure agreement. They’re short, and inexpensive insurance that a lawyer can prepare for you that obligates the person or entity to whom you describe your idea not to disclose or use it without your permission.

If your idea is fixed in written form, such as a script or computer code, you may wish to consider obtaining a copyright registration for it. Consider before you do so, however, that once you do this, that work will become a matter of public record in the U.S. Copyright Office. On the other hand, once registered, you can obtain statutory damages for its later infringement.

If your idea is that of a distinctive brand name for a product or service that you are likely to market in the future, you can file an intent-to-use application to register that brand name as a trademark or service mark with the U.S. Patent and Trademark Office.

If your idea is a new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, you may wish to file a provisional patent application for it. It allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It provides the means to establish an early effective filing date in a later-filed non-provisional patent application and allows the term “Patent Pending” to be applied in connection with the description of your invention. Note, however, that a provisional application for patent (provisional application) has a pendency lasting only 12 months from the date the provisional application is filed and cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding non-provisional application for patent (non-provisional application) during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application. The provisional application filing fee for a small entity is currently $110.00.

So don’t tell everyone about your Great Idea before contacting an attorney who concentrates in trademark, copyright or patent law and spending less than a couple of thousand dollars to obtain initial protection for that idea. In most cases you wouldn’t be pursuing that idea if you didn’t think that ultimately you would be making a living off of it; you’re not pursuing it as a hobby.

Don’t blow that opportunity!

About the Author

ERIC WACHSPRESS

The material on this website is for informational purposes only. It should not be considered legal advice and is not intended to create an attorney-client relationship. If you have questions regarding any material presented herein, we recommend that you consult an attorney. This web site and information presented herein were designed in accordance with Illinois law. Any content in conflict with the laws or ethical code of attorney conduct of any other jurisdiction is unintentional and void. I am a Chicago attorney practicing in the areas of trademark, copyright and information technology law as well as general corporate law. Formerly a trademark examining attorney with the United States Patent and Trademark Office, I have been in private practice since 1987 representing clients in a wide variety of industries, including the consumer products, financial services, information technology and entertainment industries. You can contact me at markscounsel@gmail.com, by phone at 773.934.5855 or by mail at 417 S. Jefferson St., #304, Chicago, IL 60607 USA

http://WWW.MARKSCOUNSEL.COM

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