

How to manage an invention? - theaeolist

I hope I can get some advice from this great community. Here are the pertinent points of my situation:<p>1. Me: Established academic researcher with international reputation. The invention is in my own area of expertise. No startup experience. Based in major university, but the city is not a hotbed of technology. The university has a poor track record in IP development, must be bypassed.<p>2. The invention: unpublished, unpatented, undisclosed. It is a technology invention, about making a (digital) device which will address a serious and documented market need, quite possibly with multibillion dollar implications. The idea is new, based on newly available technology (not developed by me), fairly technical (not likely you'll come up with it) but if I explain it to you in 15 minutes I think you could do it. I have a working prototype.<p>3. The question: I have a conundrum regarding commercializing the invention while protecting my IP. The idea can be stolen and perhaps a variation of it can be built. I don't have the financial resources to file a comprehensive portfolio of patents to protect it. I also wouldn't have the financial resources to defend the patents in court.<p>Any advice on how I might move forward?<p>The Aeolist
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markterry
Mr. Aeolist,

As a practicing U.S. patent attorney, I get this question quite a bit. What I
usually advise clients is that you should protect your invention, but you
shouldn't protect it to DEATH. Your goal is to monetize your invention, and
that means selling products or services. You can't sell something without
showing it to people, right?

I find the best balance between secrecy and disclosure is to file patent
applications for your invention, thereby starting the patent process, and then
start the process of developing it, showing it around, etc. Legal work related
to patents can be expensive, but you could get a provisional patent
application filed for $1,500, which is affordable for most. Enforcement is
another issue, which can be costly. But law firms take patent infringement
actions on contingency all the time, if you have a good case. This would not
cost you a cent.

I hope this helps.

Sincerely, Mark Terry, Esq.

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theaeolist
Thank you, this was most useful.

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worldvoyageur
Reach out to the angel investor community near you. Find an angel willing to
give money to create a business that owns your idea and give them a share of
the business. Use their money to file the comprehensive patent portfolio
needed to protect the idea and defend it in court, if required. I'd guess that
$50K and lots of your sweat ought to be enough to get critical patents in
place.

With the patent portfolio in place, you can at leisure explore licensing the
technology to major players or going into manufacturing on your own.

Going into manufacturing on your own will require additional rounds of funding
- but now you quit your day job and tap the venture capital community.

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theaeolist
Thanks. In a sense, this is what I was considering, I am just not sure how
much disclosure an angel will ask for before funding an idea. I don't want to
come across as paranoid in keeping my idea a secret, but I don't want to be
naive and give it all away either.

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asharp
Talk with a patent lawyer, generally the first consultation is free and is
protected under attorney/client privilege.

Once you know roughly how much it will cost and what you would need, you can
file for provisional patents (at least here in AUS, IANAL), which are much
cheaper and don't end up in the public domain but do establish a priority
date.

Then you can easily get any monies required to secure your patents/start work,
without having to worry about disclosing too much/etc.

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theaeolist
Thanks! This is very useful. I didn't know that a provisional patent doesn't
end up in the public domain.

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markterry
And even a regular, non-provisional patent application does not enter into the
public domain (i.e., published on the Patent Office web site) until 18 months
after you file it. In fact, you can even request that the Patent Office NOT
publish the patent application at all, until it actually becomes a patent (an
average 3-year wait).

