Copyright 2007 Inventive Solutions 1 Protecting Your Invention 101 Inventive Solutions

Copyright 2007 Inventive Solutions 2 Outline of Topics Overview Introduction Trade Secrets Patents – Design & Utility Provisional Applications International Applications Questions Less More EFFORTEFFORT SECURESECURE

Copyright 2007 Inventive Solutions 3 Overview: Earliest Inventions From History of USPTO webpage

Copyright 2007 Inventive Solutions 4 Overview: Modern Inventions

Copyright 2007 Inventive Solutions 5 Introduction Are you inventing or invention-curious? Believe the patent process too expensive? Expect to develop new products for your business in the near future? Questions to be answered: How to disclose my ideas while minimizing the risks? When should I disclose my invention? Who should I disclose it to? What are the best methods to protect my invention?

Copyright 2007 Inventive Solutions 6 Trade Secrets

Copyright 2007 Inventive Solutions 7 Trade Secrets – Basic Info Legally protected as long as not in public domain & reasonable efforts to keep secret Duration Locks, Notices of Confidentiality, Not telling anyone, Virus-ware, Security Procedures. Costs Valuable & Secured (also, document well if item is a complex article of manufacture) Criteria Client lists, Formulas, Recipes, IC designs, Business plans, Sales strategies, Lab notes Examples Confidential Business InformationDefinition

Copyright 2007 Inventive Solutions 8 Trade Secrets – Theory Information used in a business, not generally known, of some economic value, and maintained in secrecy Rights protected only if reasonable steps taken to ensure confidentiality with no casual disclosures (require NDA before disclosing) Canada - Protected by common law = civil action = breach of confidence, contract law U.S. - Protected by proprietary right = criminal action = felony, may recover losses

Copyright 2007 Inventive Solutions 9 Trade Secrets – Application Use Non-disclosure Agreements if possible Identify valuable secrets, enact policies to secure from unauthorized access No Publication or Public disclosures Grace period (allows limited disclosure) If inventor applies for patent or design within year Not all countries allow grace period Advantages – indefinite protection, in any country, with no processing delay or fees due

Copyright 2007 Inventive Solutions 10 Patents – Overview

Copyright 2007 Inventive Solutions 11 Patents - Basic Concepts a discovery (idea) cannot be patented, only an invention (its physical manifestation) government certifies the origin of an invention and protects its owners exclusive rights equivalent to registering a property deed/title limited monopoly creates incentive to innovate cost of proving & keeping ownership 90% are improvements to existing inventions

Copyright 2007 Inventive Solutions 12 Patents (Utility) – Basic Info 20 years Processing time: months (*Higher fee if company > 50 employees) Duration Apply + Exam: CA$ ; US$ Allowance: CA$ *; US$ Costs New (1 st in world), Useful (workable), and Non-obvious (to person skilled in trade) Criteria Machines, mechanical devices, methods of manufacture, matter, software algorithms Examples Exclusive right to manufacture, use, or sell a specific product or process Definition

Copyright 2007 Inventive Solutions 13 Patents (Utility) – Details Front Page Background Summary Description Drawings Claims

Copyright 2007 Inventive Solutions 14 Patents – Front Page Title Inventor Number Date Classes Prior Art Abstract Drawing

Copyright 2007 Inventive Solutions 15 Patents (Design) – Basic Info 10 yrs* (Can) - 14 yrs (US) Processing: 8-12 mths (*Fifth yr maint. fee: CA$350) Duration Application: CA$400; US$ (SE/LE) Allowance: CA$0*; US$ (SE/LE) Costs application to a finished article features of shape, configuration, pattern or ornament Criteria Statue of Liberty, Coke bottle, office chair, architecture, automobile, airplane, spoon Examples Exclusive right to make, import, rent, or sell the aesthetic qualities of a functional article Definition

Copyright 2007 Inventive Solutions 16 Patents (Design) – Examples visual ornamental characteristics embodied in, or applied to, an article of manufacture Sometimes used when patent unavailable Beware of Scam Artists – design is not utility

Copyright 2007 Inventive Solutions 17 Provisional Applications Must apply for utility before one year or risk losing rights forever (if disclosed) Duration US$100; Invention Report complies with written description requirements (w. drawings) Costs Utility patent references provisional (best way) Provisional is converted to utility (difficult) Criteria Protects disclosure to manufacturers, VCs, Investors, Licensees (patent pending) Examples Low-cost non-formal pre-patent filing method used to establish priority (only in US, NZ…) Definition

Copyright 2007 Inventive Solutions 18 Provisional – Issues Filed up to one year following the date of first sale, offer for sale, public use, or publication May preclude patenting in foreign countries Only available in US, NZ, EPO… Time to refine product, test market & raise $$$ May be combined with PCT (Intl.) application Only description & drawings required Establishes earlier effective filing date

Copyright 2007 Inventive Solutions 19 International Applications Patent Cooperation Treaty (PCT) allows multiple country filings Delays national filing 30 mths from priority date More cost effective than filing in each country Begins national patent in each country filed Includes International Search Report Can be filed at National Patent Office Must meet international standards National examination delayed

Copyright 2007 Inventive Solutions 20 Patents – Process Prior Art Search to determine novelty (hours) Document invention & write patent (tens of hrs) Create patent drawings (hours) INVENTOR-IP Svc. File application & pay fees PATENT OFFICE Pay another fee to examine for patentability All examiner objections resolved (hopefully) Patent allowed & final fees paid Certificate issued (takes 18 months – 2 years)

Copyright 2007 Inventive Solutions 21 Patents – Risks Without First to file = Canada & most of world Rights could be lost if published w/o registration Premature disclosure without protection Infringement challenges or litigation possible Competitor files same idea during application No patent if grace period expires with disclosure Be forced to stop selling, refund $, pay royalties

Copyright 2007 Inventive Solutions 22 Patents – Benefits With Burglar alarm or roadblock to infringers If well written, prevents infringement & litigation Gold standard for investors (VCs) Can license to manufacturers for royalties Superior protection to trade secret (most situats) Certifies your right to sell & manufacture May be used as asset to negotiate more funding

Copyright 2007 Inventive Solutions 23 Patent & Research Services Product development experience Certified US Patent Paralegal Free confidential consultation Non-disclosure protection Affordable rates Bulletproof IP Thank You