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New product conversations before filing a patent

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kiamalik

Junior Member
What is the name of your state (only U.S. law)? AZ

Have an idea for a product but myself or anyone in my direct network has the expertise to construct/blueprint the product. The plan would be to work out the manufacturing kinks, build prototypes, test it, and then submit the patent request. To have these pre-patent conversations with a third party would getting them to sign off on a non-disclosure agreement suffice at this stage to protect my idea or is there another step that needs to be taken? is this the same if the company/engineer resides outside of the US?
 


PaulMass

Member
You should have a conversation with an Intellectual Property Attorney. Your conversation with that attorney is confidential, so he or she cannot disclose it to anyone without your consent.

Do not disclose your idea with ANYONE until you learn to protect it.
 

quincy

Senior Member
What is the name of your state (only U.S. law)? AZ

Have an idea for a product but myself or anyone in my direct network has the expertise to construct/blueprint the product. The plan would be to work out the manufacturing kinks, build prototypes, test it, and then submit the patent request. To have these pre-patent conversations with a third party would getting them to sign off on a non-disclosure agreement suffice at this stage to protect my idea or is there another step that needs to be taken? is this the same if the company/engineer resides outside of the US?
Inventors use non-disclosure agreements/confidentiality agreements to keep their ideas confidential until they are ready to submit their provisional patent application or their regular patent application.

The NDA will allow you, as the inventor, to work with others to evaluate and develop and build your prototype. The US has become a first-to-file country and is no longer a first-to-invent country, so keeping your idea confidential is necessary if you want to protect your idea from being developed by someone else who might file for a patent before you. You do not want to disclose your idea to others without this protection in place.

As soon as you are able to describe in words and drawings how to make and use your invention and can explain why your invention is different from prior art (is novel and non-obvious) and why your invention deserves a patent, therefore, you could be smart to file a provisional patent application. The PPA provides you with the benefit of an early filing date. You will need to be prepared to file a regular patent within one year of filing your PPA, however.

Speaking with a patent attorney first, and working with the patent attorney to draft the non-disclosure agreement can be smart and is advised.

Good luck.
 
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ronnygage

Junior Member
for filing a patent there are many websites in which you can find information. But if you want to patent something confidential you should really contact an attorney who is familiar with you. You can easily find Patent Lawyer in USA.
 

quincy

Senior Member
for filing a patent there are many websites in which you can find information. But if you want to patent something confidential you should really contact an attorney who is familiar with you. You can easily find Patent Lawyer in USA.
You do not need to contact an attorney who is "familiar with you." In fact, unless you know a whole heck of a lot of attorneys, the odds are pretty good you do not know a patent attorney.

Patent law is a legal specialty where the attorney not only needs to be licensed to practice law, the attorney needs to pass a USPTO exam and be registered to practice before the US Patent and Trademark Office.

The USPTO publishes a list of those who are registered to practice before the USPTO. The list can be accessed through the following USPTO government link:
https://oedci.uspto.gov/OEDCI/

I recommend you rely on the information provided by the patent attorney you personally see rather than rely on what you read on the internet. Although the internet can provide some good information and some direction, there is also garbage posted on the internet that needs to be ignored. The only advice you should rely on is from the patent attorney you see who has had the opportunity to review your personal needs and can advise you accordingly.

Good luck.
 

FlyingRon

Senior Member
I know lots of attorneys and it turns out only one was a patent attorney (and it was a long time that I knew him before I realized he was any sort of attorney).

In addition to the fact that you don't want someone to "take" your idea before you get it patented, disclosing things loses the novelty requirement of patentable material and can mean that you lose the right to ever patent it.

If you think you might have a patentable invention, you should be talking to an attorney about the proper non-disclosures and/or getting the provisional patent filed (and realize you are on a one year time table to complete the actual patent at that point).
 
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quincy

Senior Member
I know lots of attorneys and it turns out only one was a patent attorney (and it was a long time that I knew him before I realized he was any sort of attorney).

In addition to the fact that you don't want someone to "take" your idea before you get it patented, disclosing things loses the novelty requirement of patentable material and can mean that you lose the right to ever patent it.

If you think you might have a patentable invention, you should be talking to an attorney about the proper non-disclosures and/or getting the provisional patent filed (and realize you are on a one year time table to complete the actual patent at that point).
As a result of the America Invents Act, the USPTO is opening four new offices. There was recently a USPTO office opened in Detroit. This creation of new offices should help reduce the current backlog of patent applications. The Detroit office provides for convenient public access to the USPTO's electronic patent and trademark collections, which is nice.

There has been an active recruitment for qualified attorneys to apply for USPTO licensing. This is a legal specialty that generally requires an extensive background in science and/or engineering. For example, Dr. Christal Sheppard, the new Director of the Detroit Office, has an M.S. and PhD in Cellular and Molecular Biology from University of Michigan and a law degree from Cornell. Patent attorneys, in other words, are definitely not dummies. :)
 

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