How to seek input on a non-patented invention

[Daniel Sellers]

I am an undergraduate physics student and I've been working on a personal research project for almost a year which has turned into a design for an invention. I am waiting on a physics professor and a friend who's a mechanical engineer, both very busy people, to review my design and tell me if they can find any major flaws (Both have given me positive feedback on the preliminary idea but haven't had time to review the "finished" proposal yet).

In the mean time I am continuing my research and seeking input on my design where possible. I currently have no means to procure even a provisional patent, but I'm far too excited about my idea to drop it, and there's a lot of work to be done optimizing it.

I live in the US and I'm asking this both because I could use some advice and because it seems like an interesting topic for discussion anyway: how does one with a (hopefully) good idea and limited means seek input on a process or invention without publicly posting the specifics?

 

[Dr.D]

This is a tough situation you are in. If you really have a good idea, whatever you expose to the public may well be stolen from you. You have some minimal protection if you have dated and initialed notebooks showing the date and development of your idea, as a possible means to establish when you conceived of the idea. Even so, defending your position in a lawsuit would be expensive, time-consuming, and nasty. I don't recommend that at all.

Your best bet is to work only with people you can trust.

 

[CrysPhys]

There are several issues to consider, including:

(1) Does your university have any rights to your invention? Some universities have written policies; some don't. If your university does have rights to your invention, you should deal with their IP dept (or IP representative).

(2) There is the issue of public disclosure. In the US, if you publically disclose your invention, you have a 1-yr grace period in which to file a patent application. Beware, however, that if you plan to seek patent protection in other countries, many countries have no grace period at all. The tricky part comes in deciding what does and does not constitute public disclosure. So even if the people you discuss your invention with don't steal your invention, there may be an issue of whether you publically disclosed it. This can be a very tricky legal issue.

(3) You can file a provisional application yourself (pro se in legal jargon) for on the order of $100. Many inventors do, only to find out later that what they did was worthless. I wouldn't recommend counting on a provisional application for protection unless you really know what you are doing.

If you really want to protect your rights, you'll need to engage a patent attorney. And that costs money.

 

[OmCheeto]

There are several issues to consider, including:

(1) Does your university have any rights to your invention? Some universities have written policies; some don't. If your university does have rights to your invention, you should deal with their IP dept (or IP representative).

This was true of my university. I contacted mine and said they would only work with me if the invention was developed at the university, in which case they would own the patent. I said it was not, but the idea was worth potentially a BILLION DOLLARS, and I would cut them in for half. They said they were not interested. If you attempt to file your own patent, it's possible the university may sue you for theft. And universities usually have a team of lawyers. I think ours had at least 3 devoted strictly to IP (Intellectual Property).

(2) There is the issue of public disclosure. In the US, if you publically disclose your invention, you have a 1-yr grace period in which to file a patent application. Beware, however, that if you plan to seek patent protection in other countries, many countries have no grace period at all. The tricky part comes in deciding what does and does not constitute public disclosure. So even if the people you discuss your invention with don't steal your invention, there may be an issue of whether you publically disclosed it. This can be a very tricky legal issue.

(3) You can file a provisional application yourself (pro se in legal jargon) for on the order of $100. Many inventors do, only to find out later that what they did was worthless. I wouldn't recommend counting on a provisional application for protection unless you really know what you are doing.

If you really want to protect your rights, you'll need to engage a patent attorney. And that costs money.

All good points.

Your best bet is to work only with people you can trust.

I was discussing my patent problem with a co-worker, and he said he'd developed some software that was worth several million dollars. He claims his business partner, because of "legal problems" with the patent filing process, absconded with all the profits. I would say; "Trust no one".

He also mentioned that $10,000 was the minimum you should spend on a patent lawyer. I learned in lecture put on by my IP department said that international patent costs start at around $100,000.

ps. I've never discussed my invention here at PF, other than to say; "It's worth a TRILLION DOLLARS!".
pps, @berned_you , any further suggestions, or corrections? My data is a tad old, and I'm not really an expert in this field.

 

[Daniel Sellers]

It does seem like a tough situation, but I don't think my university can claim any rights to this IP. I'm not faculty and I haven't used any university resources.

On a related note, I've heard that many companies will patent ideas just to prevent competition from building the invention, and I want to see this invention produced more than I want the profit from it (although I do, of course).

I suppose for now I'll have to work with the few people in the scientific community I know well enough to trust and keep studying physics and engineering in the mean time

 

[OmCheeto]

It does seem like a tough situation, but I don't think my university can claim any rights to this IP. I'm not faculty and I haven't used any university resources.
...

It was a carpenter, that invented "something" at my university that caught my eye.

Just found our email conversation:

On, or about, April 25, 2013:

Hi [Joe],

Did you get help from [the university] to file your patent?
I have 10 patents that I intend to file in the next 5 years, but I heard they cost $10,000 each.
I was just going to file one at a time, and use the royalties to fund each subsequent patent.
The last one might be worth several billion dollars, so I don’t like discussing it with anyone.
Thanks!​

[Om]
Ps. Awesome invention! And can I just pay you the royalties if I build one myself? I do a lot or woodworking myself.
---
Hi [Om]

[So and so] from [the university]’s technology development dept is working on the patent thing and since the device was developed at work and is [the university]'s property. So don’t know about the making one yourself thing. Only the ones I have made have been approved for [university] use.​

[Joe]
[the university]/[some department]
Carpenter​

Inventor emptor.

ps. @phinds , I'll send you the design. Freaking brilliant!

 

[phinds]

ps. @phinds , I'll send you the design. Freaking brilliant!

cool

 

[berkeman]

how does one with a (hopefully) good idea and limited means seek input on a process or invention without publicly posting the specifics?

Your best bet, IMO, is to hire a consultant in the field for a few hours (probably around $1000 total) to review the design under a Non-Disclosure Agreement (NDA). That way you get quality advice and your proprietary information is still protected.

 

[OmCheeto]

cool

Actually, it's something you've probably known for 50 years, so I won't bother you with it.
It's more a "Hey! This idea can be translated from woodworking, to; 'I'm a carpenter, and why do I have to deal with all this sheetrock dust problem? Bazinga!'"

 

[Daniel Sellers]

Your best bet, IMO, is to hire a consultant in the field for a few hours (probably around $1000 total) to review the design under a Non-Disclosure Agreement (NDA). That way you get quality advice and your proprietary information is still protected.

I had considered hiring a consultant, I even found a few based in my area but upon closer inspection they all specialized in buildings (integrated systems, networks, security...). The main problem is still that engaging a specialist consultant is currently outside my means. As I mentioned in the OP I'm fortunate to have a good friend who's an experienced engineer, but saving for some consultation fees may not be a bad idea.

So far I have been researching on my own and sending occasional cryptic emails and forum posts to get specific questions answered. It's been effective but frustrating and slow going. One company contact-line told me they couldn't answer a question about one of their products without knowing the application specifics. I was asking for the numerical value of a widely known physical quantity.

 

[CrysPhys]

I had considered hiring a consultant, I even found a few based in my area but upon closer inspection they all specialized in buildings (integrated systems, networks, security...). The main problem is still that engaging a specialist consultant is currently outside my means. As I mentioned in the OP I'm fortunate to have a good friend who's an experienced engineer, but saving for some consultation fees may not be a bad idea.

So far I have been researching on my own and sending occasional cryptic emails and forum posts to get specific questions answered. It's been effective but frustrating and slow going. One company contact-line told me they couldn't answer a question about one of their products without knowing the application specifics. I was asking for the numerical value of a widely known physical quantity.

Whether you hire a consultant for pay or ask a buddy for a freebie, you run the risk of that other person becoming a co-inventor, with rights in the invention. To mitigate that risk, you need to engage the services of a patent attorney. The vast majority of patents never lead to anything of commercial value, but when one does, amazing what crawls out from under the floorboards.

 

[Daniel Sellers]

Whether you hire a consultant for pay or ask a buddy for a freebie, you run the risk of that other person becoming a co-inventor, with rights in the invention. To mitigate that risk, you need to engage the services of a patent attorney. The vast majority of patents never lead to anything of commercial value, but when one does, amazing what crawls out from under the floorboards.

I do see your point. In my case the only people whom I've shared details with are people I would gladly sign on as co-inventors. All the same, the main message I'm getting from these posts is 'be very very careful of vultures trying to steal your idea or part of your profits.' That's probably sound advice.

 

[Dr. Courtney]

Is there likely more value to you in a patent or in simply publishing the details of your invention and letting people use it without selling a product?

Colleagues and I have a number of inventions of scientific instruments. We chose not to patent them, but to publish them and assist parties who want to in constructing their own versions of our invention with the only expectation that they would cite the paper.

Occasionally, we make a few bucks consulting helping them install and operate the scientific instrument. There are several appropriate journals. Review of Scientific Instruments is our preferred journal.

My point is, a patent is not the only way to go. A peer-reviewed journal article may be a bigger boost to your career at this point.

 

[Daniel Sellers]

I would say the ultimate goal for me is simply to see it produced and put to good use. However it could be worth a whole lot of money and be very useful if it works. So I can't say I'd be happy publishing and watching others profit just because they have the means to produce it and I don't.

If I had to sign away the majority of any profit in order to get it produced that would be alright. A fraction of a fortune is a lot more than 100% of nothing.

Before I came up with the current design iteration I actually did present my research at a symposium at my university. At the time though, the most I had to publish was "Here's a detailed explanation of why this hasn't worked so far."

 

[Vanadium 50]

but I don't think my university can claim any rights to this IP

I actually did present my research at a symposium at my university

Look carefully at the university policies and anything you signed. If it can be argued that you received academic credit for this, the university may have rights.

 

[Daniel Sellers]

I'm looking into my university's policy now, but I'm pretty sure that nothing I've done so far as an undergraduate relinquishes my rights to intellectual property. The relationship between what I presented and what I'm hoping to eventually patent is pretty thin. I'm not a university employee or a research partner.

On the other hand, I have absolutely no experience with patent law or anything of the sort so I'll keep that in mind.

 

[Nidum]

Why can't you just do the technical work on this project yourself ? Where is the difficulty ?

 

[Daniel Sellers]

Why can't you just do the technical work on this project yourself ? Where is the difficulty ?

I can and have been doing the technical work myself. The difficulty comes from the fact that I've taken no engineering courses so far, and only fundamentals series for physics and chemistry. This project involves all of those subjects. As a result, I've had to teach myself a great deal of what I need to know to proceed with the project, or reach out to those with more experience than I to answer specific questions.

I've had a lot of fun learning new topics, but it's slow going and I'm not too proud to accept help . As long as the 'help' doesn't result in someone stealing my idea completely anyway.

 

[jedishrfu]

I haven't read the whole thread but felt you might benefit from another inventor's point of view.

1) A lot of folks come up with great ideas.

You need to really search hard to make sure no one has invented this before and be prepared to be challenged by the USPTO for your invention claims. They will send back a list of inventions asking how is A different from B...

2) A patent attorney is important here.

They can write up the application in a way to prevent other from circumventing your idea with slight modifications that are basically a new invention. Patent disclosures are several pages of description with figures and some claims. It is the claims that really define the invention and are often used in a patent court case to prove infringement.

3) Inventions are never complex ideas.

They are very simple ideas. Things like a computer have numerous small patents that are the bulk of the design. Some patents protect the product from copycats and some are truly novel making the product highly desireable.

4) Companies and Universities do have the means to file patents on your behalf in exchange for you handing over the rights to it.

At the BIG company where I worked they would hand out $1500 awards to inventions that were accepted for patenting. They did all the leg work which amounted to filing it, defending it when it got rejected (a common scenario), amended to address the patent office concerns... roughly $50,000 on average per patent.

5) Patents are first to file not first to invent (used to be first to invent).

IF you tell someone enough about your patent for them to figure out the rest and then they file it before you THEN they win and you'll be hard pressed to prove otherwise.

One famous case, was when two programmers came up with the idea of file sharing over the telephone, started a company, hired an expert in Series-I minicomputers and brainstormed a lot but never got it to work so they disbanded the company. A couple of years later the "expert" they had hired filed several patents related to their work and with the help of a major patent troll began sueing other companies for patent infringement. These were any company who did file sharing such as Carbonite, podcasters, mp3 music and the list goes on...

Carbonite stopped them when it was discovered that one of the original inventors was mentioned in the notes filed with the patent request in the form of John's suggestion... The court ruled that John was a co-inventor and that since he wasn't listed then the patent was invalid. Carbonite won the case but many other comapnies before them paid millions to settle.

(see the When Patents Attack podcast references below in #8)

6) Patent ideas don't have to a working implementation before they can be filed.

Patents do have to be novel (not invented before), usefulness (it has some use), non-obvious (ie an expert in field would not know how to implement it).

A patent (/ˈpætənt/ or /ˈpeɪtənt/) is a set of exclusive rights granted by a sovereign state to an inventor or assignee for a limited period of time in exchange for detailed public disclosure of an invention. An invention is a solution to a specific technological problem and is a product or a process.[1]:17 Patents are a form of intellectual property.

The procedure for granting patents, requirements placed on the patentee, and the extent of the exclusive rights vary widely between countries according to national laws and international agreements. Typically, however, a granted patent application must include one or more claims that define the invention. A patent may include many claims, each of which defines a specific property right. These claims must meet relevant patentability requirements, such as novelty, usefulness, and non-obviousness. The exclusive right granted to a patentee in most countries is the right to prevent others, or at least to try to prevent others, from commercially making, using, selling, importing, or distributing a patented invention without permission.[2][3]

from https://en.wikipedia.org/wiki/Patent

7) If you publish something about it, you could compromise your right to patent it.

When a new patent idea came before our review committee, we would do searches online to see if it was invented before. In some cases, we'd get an immediate hit and then ask the inventor how is your invention different from this one. Or we'd find that the inventor was obvious as an example the inventor glued a compass to his radio (any kid could do that). Sometimes the invention was unique to one industry but common to another.

An inventor once came to us with an idea of a calorie collecting device. It looked like a PDA with a specialized stylus. He did a lot of work designing the invention from a need to manage his diet. He described all the menus and how you'd stick the stylus in your food and it would record the calories in it. There was nothing like it in our searches. We then asked how does the stylus work and he said he was hoping we'd help him with that part of the design.

We explained that that was his invention not all the other stuff (things an expert in PDA software/hardware development could have easily developed). The stylus was the invention and without a working idea on how to make it function the invention was useless. I suggested a using a bar code scanning stylus where restaurant menus would have bar codes and online databases describing the caloric content of any meal. Once again, an expert in the field could easily have designed it even though at the time there was no bar codes on menus, there were barcodes in use in other industries for inventory control and retail sales which meant the new invention was useful but not novel.

8) Some interesting talks/videos on patents:

https://www.thisamericanlife.org/radio-archives/episode/441/when-patents-attack

https://www.thisamericanlife.org/radio-archives/episode/496/when-patents-attack-part-two

http://ip.education/patent-myths/?g...HN-dywsTWDIfq4JNst_WyerWNWoNsHAYaAlyeEALw_wcB



Hyconn update: http://gazettereview.com/2016/10/hyconn-update-happened-shark-tank/

9) Patents are filed for a variety of reasons:

- the great new idea, we are teaching the world a new way to do things.

- steal the idea from an inventor:

Sears vs Roberts Socket Wrench:
http://articles.latimes.com/1986-07-14/business/fi-19337_1_wrench-case
https://www.washingtonpost.com/arch...5f5-ae47-99b6e419ca9b/?utm_term=.9d375e1896bc​

Sears vs Loggerhead and the Bionic Wrench:
http://www.chicagotribune.com/busin...s-patent-lawsuit-0517-biz-20170516-story.html​

- protect a proprietary company product: by patenting unique features preventing another company from doing the same feature

- prevent an idea from becoming real (at least for 20 years), one company buys another, inventor hates the notion of super-duper infomercials so invents the idea to prevent from happening

10) Some interesting patent cases:
- invention of the computer: Mauchly / Eckhardt vs Atanazov (see patent dispute in the wikipedia article where Mauchly got the idea from Atanazov's design)

https://en.wikipedia.org/wiki/John_Vincent_Atanasoff​

- invention of the laser: the paper on Lasers by Townes and Shadlow -vs- the notebooks of Gordon Gould -vs- the invention by Thomas Maiman

https://en.wikipedia.org/wiki/Laser
​

- Greg Chavez, a firefighter on American Inventor TV show, invents the Christmas Angel:

http://archive.vcstar.com/business/a-man-a-plan-and-a-christmas-tree-ep-375207366-352824441.html/​

but there's some controversy afterwards:​

Controversy[edit]
The makers of the program were accused of modeling American Inventor on a similar program called https://en.wikipedia.org/w/index.php?title=Million_Dollar_Idea&action=edit&redlink=1.[5]

The validity of the claim that the Guardian Angel was invented by Greg Chavez is unclear. This same "invention" was actually a gag product on The Tonight Show with Jay Leno on December 16, 1993, the first night Julia Roberts was a guest on the show. Leno used a lighter to trigger a smoke alarm within a Christmas tree which then caused the star on the top of the tree to spray a strong burst of water, putting out any potential fire. Several similar patents have been granted over the years, and Season 1 judge Doug Hall has also called it unoriginal, writing in his blog that he once worked on something similar for a client.

from wikipedia: https://en.wikipedia.org/wiki/American_Inventor

- modern stories:

http://www.ipwatchdog.com/2016/12/29/top-10-patent-stories-2016/id=76298/​

 

[infinitebubble]

Agree with the others... University IP agreements would be the first thing to investigate... any intellectual property while at the university belongs to them regardless... only way is if you designed/invented something that wasn't using university property, computers, etc. I would hire a patent lawyer with non-disclosure agreement and see where you stand. Documentation of everything you've done will insure it will not be taken from you and trust me there are unscrupulous individuals including professors that will steal your invention.

 

[jedishrfu]

I agree with @infinitebubble , the Sears case on the wrench invented by an 18yr old working at Sears is a case in point. The lawyer colluded with Sears to defraud him of his invention.

 

[CrysPhys]

Agree with the others... University IP agreements would be the first thing to investigate... any intellectual property while at the university belongs to them regardless... only way is if you designed/invented something that wasn't using university property, computers, etc. I would hire a patent lawyer with non-disclosure agreement and see where you stand. Documentation of everything you've done will insure it will not be taken from you and trust me there are unscrupulous individuals including professors that will steal your invention.

<<Emphasis added>>
Documentation won't prevent theft of your idea. Perhaps it might provide evidence that it was stolen. But then be prepared for lengthy expensive legal action.

 

[jedishrfu]

I think @infinitebubble meant they can't formally take it from you as opposed to someone stealing your notes and running to a competitor. You must keep your notes them secure and you must document everything so as to prevent them from grabbing your invention.

This can be especially tricky at a company where you often sign an IP document to say that all ideas and inventions are the company's if developed using company resources, company time or company IP and sometimes extends to company businesses.

This last one means that even if you are a programmer in Company X working at a computer center and invent a new kind of light bulb, then if Company X is in the business of selling light bulbs they own your idea because you signed that right away when you were hired. You also might have to get their permission before pursuing your idea on your own time.

 

[infinitebubble]

<<Emphasis added>>
Documentation won't prevent theft of your idea. Perhaps it might provide evidence that it was stolen. But then be prepared for lengthy expensive legal action.

But after exhaustive courtroom drama it will be proven without a shadow of doubt it belonged to you as long as documented evidence existed it was originated by you. Many cases have been won because of this existing documentation, dated and signed either by you or other witnesses. Microsoft was one who tried for years using the 'mouse' technology as their own but later proved by a small company in Florida (less than 7 people) who created the mouse technology in court and won against Microsoft and over $250 million dollars plus royalties given to the small company in damages.

The patent in the case, U.S. Patent Number 5,313,229, is entitled “Mouse and method for concurrent cursor position and scrolling control.” It was issued in 1994 to inventors Fernando D. Falcon and Federico U. Gilligan.

https://www.law360.com/articles/22858/microsoft-sued-again-over-scrolling-mouse

https://partners.nytimes.com/library/tech/98/12/biztech/articles/16microsoft-mouse.html

Even with patent disclosures Microsoft stole the mouse technology but still lost to the original inventors in California (Goldtouch Mouse). Such is how documentation of inventors proved to be of upmost importance if one expects to win in court.

 

[jedishrfu]

In contrast, Gordon Gould's case went the other way because the US government had classified his notebooks preventing him from asserting his rights on inventing the laser. Later, when they were declassified he was able to claim the patent but lost much of the potential royalties from it.

 

[CrysPhys]

It's important to emphasize that a patent has value only insofar as the inventor or patent owner has the resources to enforce it.

 

[jedishrfu]

It's important to emphasize that a patent has value only insofar as the inventor or patent owner has the resources to enforce it.

Again this depends on the patent, there are law firms that will take your case if it is seen as a valuable patent. They will take on the risk and percentage of the what is won. The podcast When Patents Attack talks about a major law firm that represents the little guy, paid him quite well but make a real killing on infringement lawsuits.

Other times, an obscure patent may save a company from oppressive royalties by canceling out the effect of a litigious patent i.e. By invalidating one or more of its claims and so the inventor gets support that way.