Intellectual property, a prototype and now what?

[francesy]

What is the name of your state? Virginia

I have come up with an idea for chain restaurants, have made a prototype of the product and my lawyer says he is 'working' on licensing, and/or patenting it. One of the managers at a local restaurant would like to use the prototype as he feels it is desperately needed right now. Could that be considered market research? How to protect myself while my lawyer figures out how to go about this if I do let the restaurant try it out? Maybe a non-disclosure type form, or a market research agreement?

Another question. How does a person come up with what an 'idea' is worth?

Last question. I was browsing through this forum and saw a question anout descriptions for the patent or license process. I've come up with what I feel is a description that says what it does, and for whom, and it's form, which could take many shapes. But I don't really understand anything about this process. Any suggestions?

Thanks

[marubear]

Your attorney should be able to address these questions for you, or at least I would think. At any rate, what I usually do with clients is that I usually recommend that they file a provisional patent application first and then they can perform market research, test the commerciability of the invention, and the like.

A provisional patent application is not costly (or, in reality, it shouldn't be). I don't know about other firms, but my firm charges $1,000 for a provisional patent application. You can retain the services of a patent attorney or a patent agent to do so. Generally, patent agents are less costly than a patent attorney. (The difference between the two is that a patent attorney, for instance, can litigate whereas a patent agent cannot. However, a patent agent can draft and file patent applications, prosecute a patent until it and if it issues, etc.)

Your attorney (or another) should also evaluate whether it is economically worthwhile to pursue a patent and/or a license.


And, another word of advice - if you intend on filing for international patent protection, I would not recommend any "marketing research" until after you have filed the provisional patent application. The US patent law provides for a 1-year "on sale bar" (with allows for market research, commerciability determinations, etc.). However, in many other countries, there is an "absolute novelty bar" and so there is no such grace period.


Hope this helps.