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How to Lose your Innovation in Ten Easy Steps
How to Lose your Innovation in Ten Easy Steps
Michael J. Meehan, JD, PhD
Registered Patent Attorney
Knobbe Martens Olson & Bear
Michael J. Meehan, JD, PhD
Registered Patent Attorney
Knobbe Martens Olson & Bear
There are numerous types of innovation Innovation, innovation, innovation
Patent – Novel, non-obvious, protectable* Windshield and wiper for a horse (sorry, but its
taken!) Trademark – The image of my product
Nike’s swoosh Copyright – Expression of an idea, not the idea itself
Text of a book Trade Secret – Anything you can hide*
Formula for Coke
Now that I have an innovation…
How can I lose it?
So many ways
For most of these actions, you have one year
Test it out Perform a few test runs, Give to beta customers
Mechanic Lough v. Brunswick
Mr. Lough – a boat repair man that made a new seal for a motor
Tried it in his & friends’ boats & Patented it 2+ years later
Brunswick “stole” the idea – But patent invalid
Rubik’s cube (Moleculon Research Corp)
Nichols invented it in grad school, used it in private and where he had a “legitimate expectation of privacy” – not public use. Moleculon’s patent stands in later litigation
Lesson: Get an NDA from test subject and beta customers! Or just patent it before testing.
Publish it
Publish?
You have one year to file a patent
MIT Patentee spoke and distributed copies at a conference
Even distributed copies are considered “published”
Undergrad students’ theses, indexed by subject matter in a Reed College Library –”published”
Lesson: If you plan to patent, do it before publishing, but at the very least right after
Inspire, but don’t invent Dr. E. and American Cyanamid were trying to increase
absorption of iron in pregnant women They performed a test and told others
Other Drs. Performed follow up studies, & published their results in the New England Journal of Medicine
Dr. E and Cyanamid copied (literally) their results and patented them
Once the Drs saw the patent, they filed for unjust enrichment and other claims – and won over $50 million
Lesson: Even if the idea to innovate is yours, you have to be the inventor to patent
Collaborate
Chou v. U. Chicago
(Now Dr.) Chuo was a grad student of Dr. R. working on using herpes virus as an avirulent vaccine
Dr. R patented the work as sole inventor
Invention later assigned to a company
Chuo should be allowed a share of proceeds
She received a “favorable” settlement
Lesson: If you collaborate and invent, make sure you get the inventors right!
Collaborate (again – so important!)
Dr. Yoon working on a trocar (a device to make small incisions for endoscopic surgery)
Hired Choi, an electrician, to help on trocar and other projects Dr. Yoon fired Choi & filed a patent as sole inventor Dr. Yoon (“Ethicon, Inc.” ironically) later sued US Surgical US Surgical obtained a license from Choi ($300k + $100k / year!)
Then filed to get Choi added as an inventor They won
Dr. Yoon got nothing! Lesson: If you collaborate and invent, make sure you get the
inventors right!
Sell it
Paragon patented orthotics & brought suit against KLM
Paragon had sold the orthotics > 1 year before patenting
Patent invalid
Lesson: Patent before you sell – or at least within one year
Offer it for sale UMC Electronics patented an accelerometer system for
counting the times a plane has lifted off & landed It sued US government On-sale bar found – patent invalid
Prototypes (not the invention, but a “substantial embodiment of the invention”) made > 1 year before
Invention (not prototypes) was offered for sale > 1 year before patenting
Lesson: Even if your invention is not 100% built, consider an offer to sell it as triggering the on-sale bar
Forget to patent
“Theft” of your idea
Is it really stealing? Only if you have a “property right”
Facebook: Winklevosses and Narendra received settlement of $65 million, but not clear why
Contract breach?
Public relations move for Facebook?
Not patent rights
If the ConnectU team had a patent, that $65 million likely much higher
Lesson: protect your ideas or you cannot protect yourself
Abandon, suppress, or conceal it
Gore v. Garlock:
Gore invented a process for stretching Teflon
Budd created same (?) process earlier, but kept it secret
Budd’s same or not: suppressed / concealed
Public not “in possession” – not prior art to Gore
If Budd had later filed a patent application (not in this case), earlier “invention” irrelevant – cut off by concealment
Lesson: If you are going to hold off on something for a while, patent it or risk intervening innovation by another
Forget to tell people it is secret
Paragon’s orthotics again
Claimed that the sales were for experimental use and were meant to be “secret”
Forgot to tell anyone else that
Sales barring
Lesson: get an NDA, contract, or some sort of protection of privacy
Lose your patent everywhere
Most international rights lost upon disclosure
US: you get one year…for now
Proposed patent reform could revise this
Appears to be first-to-file, with one year grace period
Let me count the ways
There are so, so many other ways
Advice: Treat your innovations as trade secrets until you file a patent
Keeping it secret Forever: trade secret For now: then file a patent (or a provisional)
FinFin
PS: If this were legal advice,
you would be getting a [email protected]
PS: If this were legal advice,
you would be getting a [email protected]
