5 Questions Novice Inventors Should Ask Themselves About Intellectual Property Protection
Written by Francesco Sardone, Partner, Carter, DeLuca & Farrell, LLP
Part I in SFIA’s Legal Task Force Blog Series
Following countless hours of thinking and re-thinking, designing and re-designing, building and re-building, only to go back to the drawing board, over and over again, you’ve just had that ah-ha moment, realizing you may have finally hit on something: creating an innovative sports and fitness-related product for children/adults to enjoy or use for hours, days, weeks and/or years to come. But believe it or not, coming up with your idea was the easy part.
Even though it may have taken a large amount of creativity, ingenuity, and resourcefulness to think up a great new sports and fitness product, it will take a good deal of additional hard work, dedication, and commitment to transform that sports and fitness idea into a living, breathing viable commercial product.
Through asking yourself the right kinds of questions, and consulting with vetted resources and guides, you can improve the chances that your idea for a new sports and fitness product will be on a better path to commercial success.
In this regard, here are 5 initial questions that you should ask yourself about Intellectual Property protection during the development process, and hopefully enough so as to make a positive difference.
1. Do I Own My Idea?
Many inventors may not realize that they do not own the idea for the innovative sports and fitness product that they have developed. The question becomes, who actually has ownership over the idea for the innovative sports and fitness product that you came up with?
While, in general, the originator of the idea is the owner, ownership rights can be assigned before or after the innovation through various legal contracts that may be in place prior to the innovation. It is important to note that certain industries, such as higher education, healthcare and perhaps the sports and fitness industry, may have their own policies relating to works or innovations created during a person’s employment with an organization, which could result in the employer/organization becoming the owner of that innovative idea of yours.
Accordingly, before embarking on seeking Intellectual Property or Patent protection for the idea you came up with, if applicable, make certain that the idea actually belongs to you by consulting your employment contract or the like.
2. Should I File for Intellectual Property Protection?
Intellectual Property protection encompasses three main types of protection, namely, Patent, Trademark, and Copyright protection, with each providing its own unique scope of protection. Depending on the kind of idea you are looking to protect, Patent, Trademark, and/or Copyright protection may be options for you to consider.
Initially, a Patent is a granted by the U.S. Patent and Trademark Office that allows the owner of an innovative idea (which meets some basic criteria) to maintain a monopoly on that innovative idea for a limited period of time on the use and development of that innovative idea. Types of Patent protection include Utility, Design, and Plant patents. However, Patent protection can be a time-consuming and costly proposition, sometimes taking years to secure. While Patent protection is not necessary to commercialize your product, it may be a powerful deterrent to help keep competitors from entering the commercial space.
While the focus of this paper revolves around Patent protection, as mentioned above, there is also the possibility for Trademark and/or Copyright protection.
Trademarks are used to prevent competitors from trading off of your goodwill by providing confusingly similar goods/services, and, in many instances, inferior goods/services. Trademark protection is used to generally protect names/logos which identify the source or origin of the goods/services being provided.
Copyright protection may be used to stop others from copying, adapting, distributing, renting, or performing another’s original artistic work without permission.
While Patent protection will likely provide more peace of mind, if available for a commercial product/service than that of Trademark or Copyright protection, it is important to ask about and understand all of your options before committing to the Patent protection process.
3. Does My Idea Qualify for Patent Protection?
Intellectual Property protection, including Patent protection for your innovative idea, can be an intimidating subject matter for virtually anyone, seasoned or novice. It is recommended that you consult with an intellectual property attorney (or the like), at various stages of the innovation process for your sports and fitness product, so they can counsel and provide you with information and resources about the Patent protection process. Across the board, inventors most frequently ask about whether or not their idea is patentable. While the answer is not simple, there are key points that inventors should take under consideration before starting the long, expensive process of securing Patent protection.
Generally speaking, in order for an idea to be patentable, the idea needs to have a practical purpose, or “utility,” while still being a novel and inventive concept. That’s the basic starting point.
If the idea for the sports and fitness product meets this minimum practical purpose criteria, it is now time for you to research your idea, in an effort to make sure that nothing too similar to the idea has already previously been published or invented. To start, we recommend that you try searching for the idea in public databases that are provided by the U.S. Patent and Trademark Office[i] and Google Patents[ii], for example.
If the idea is not found in these databases, or elsewhere, that is a positive sign, but it does not necessarily mean that the idea is certainly patentable. There are novelty loopholes, and there is the risk that another person may have filed for Patent protection for the same, or very similar, idea before you file for your idea.
4. Have I Done Enough Research?
Before pursuing Patent protection for the sports and fitness-related idea/product, it is important to determine whether the same or similar idea/product exists in the market today, or whether a pre-existing Patent or Patent Application exists (see item 3 above) for the same or similar idea/product. This research will not only help you obtain Patent protection more easily, but it will help you determine whether or not you actually have a market of consumers who will ultimately buy the product or use the idea. This is the kind of research we recommend that any inventor can, and should, undertake before putting any money toward protecting and/or developing the idea/product.
So, what is the best way to conduct this research? There is no one way for conducting the research, however, here are some recommended options. First, search the Internet using a variety of keywords to see what you find. Then, speak directly to your target consumers, asking them what types of sports and fitness products they are currently using, have used, or would like to use. If you find that your idea is similar to their answers, but not identical to existing sports and fitness products, there may still be room in the marketplace for your innovative sports and fitness products.
An important factor when conducting your research is knowing what alternative sports and fitness products are currently available for purchase, all the while taking an honest look at all these sports and fitness products, in order to decide if your innovative toy or game is different enough to justify further personal investment.
Finally, it may be advisable to discuss the results of your research with an attorney that specializes in Intellectual Property or hire such an attorney to conduct some research on your behalf.
5. Have I Shared My Idea(s) with Anyone?
If so, When?
When you think you have the next big innovative idea in the sports and fitness industry, it is only natural that you would want to share your idea or vision with your colleagues, friends, family, and pretty much anyone in between. It is important to understand the potential consequences of oversharing your innovative idea, especially if you have not yet filed for Patent protection. By oversharing, the possibility increases that someone else can file for Patent protection on your innovative idea before you do so, you could unintentionally take on a “co-inventor” by incorporating a friend’s advice for a slight product improvement, and/or you can interfere with your ability to even file for Patent protection altogether. So before filing for Patent protection, and before sharing your innovative idea, consider your end goal and reflect on any conversations you may have had regarding your innovative idea, taking care that you have not shared, and do not share, too much.
The timing of the sharing of the idea, and the amount of time which may have lapsed from when you shared your idea to if/when you file for Patent protection may impact your ability to file for Patent protection altogether. Once again, it is advisable that you discuss the circumstance around the information that was shared, and when, with an attorney (or the like) that specializes in Intellectual Property.
The Non-Disclosure Agreement
However, there are situations where you absolutely have to share your innovative idea with a third party, for example, when the innovative idea for your sport and fitness product is being developed, tested, and manufactured, the process may have to be somewhat visible or transparent to those that may be doing work on your behalf. Whether you are seeking business advice, shopping around for materials, or securing a manufacturer, you will likely have to share your innovative idea with many different people along the way. As a result, inventors should ensure their idea, whether patented or not, is protected throughout this process. This is where a Non-Disclosure (or Confidentiality) Agreement plays a vital role. When the Non-Disclosure (or Confidentiality) Agreement is signed by multiple parties, no one can legally disclose details or benefit from your innovative idea unless you specifically say otherwise. The Non-Disclosure (or Confidentiality) Agreement can serve as a portable asset that can be used to enforce the privacy of your idea or to seek damages if needed.
In closing, these are only a few of the initial questions to ask when considering if Intellectual Property, or Patent, protection is worth spending time, effort, and money in pursuing. It is recommended that these questions, and many others, be asked, explored, and answered, as early as possible in the product development process.
For additional information about some, or all of the topics, discussed in this paper, it is recommended that appropriate counsel be contacted for a consultation.
Francesco Sardone, Esq.
Carter, DeLuca & Farrell, LLP
576 Broad Hollow Road
Melville, New York 11747
Phone: (631) 501–5700
Fax: (631) 501–3526