Sharone Godesh, Patent Attorney (ISR & US). Head of Patent Department at Soroker Agmon Nordman, IP & Beyond
Innovating is never an easy task. Becoming that person or team to come up with a great idea, that may become the world’s next Apple, doesn’t happen often. However nowadays, you don’t need to be the next Steve Jobs to be innovative, and even if you or your team simply come up with a good solution to a current problem, you may be entitled to a patent. Therefore, it is essential to be aware of certain rules during the innovation process to make sure you do not jeopardize your innovation.
Here are the Do’s and Don’ts an innovative person or team should adhere to during their everyday work:
DON’T BE YOUR OWN PRIOR ART
Be sure not to disclose to a third party (including friends and family) any information relating to an invention before it is filed as a patent application. Once you disclose information relevant to an invention prior to its filing date, your own disclosure can be used against you during the prosecution of the patent application. Let alone someone from the informed party can rush and file a patent application before you do. It is advised to disclose information only under a good non-disclosure agreement.
DO USE AN INVENTION NOTEBOOK
Though since March 2013 the US no longer follows the ‘first to invent’ practice, it is still important for an inventor(s) to have an invention notebook at hand. In this notebook, you should describe the invention, mention the date and name your fellow inventors. These details might become important during discovery or due diligence processes when there is a need to define the list of inventors and/or to recall the background of the invention. It is absolutely imperative to understand that emailing a description of your invention to yourself provides no exclusive rights and may even be used against you later to demonstrate you are no longer entitled to a patent as you did nothing with that email.
PATENT SEARCH - YES OR NO?
In some cases, before deciding to invest time and money in filing a patent application and then in R&D, a company might perform a prior art search to determine whether the invention is new and non-obvious. In other cases, the company might choose to file a patent application without performing a prior art search, since the US Patent and Trademark office requires disclosure of whatever is found during such a search. This strategic decision as to whether or not employees can perform prior art patent searches must be laid out and communicated in a clear and strict patent search policy.
YOUR OPINION DOES MATTER
Your opinion matters. However, it doesn’t need to be documented. You should refrain from stating your opinion through emails or any other documented correspondence, with respect to the validity of patents and patent applications of other companies, and of course of your own. If you want to discuss the details of a patent or patent application, do so in person, or via a telephone call but not through any recorded means of communication. Remember – anything you say can and might be used against the company.
TO SAVE OR NOT TO SAVE
Your opinion should not be documented, though any information within the company that is documented should not be saved forever. Consider the exact time during which you want documents to be saved, and after that time delete and destroy all documentation. This should be another strict policy the company is to follow. Such a policy may turn out to be especially important during patent litigation when you do not want inside emails from the past to be used against the company and its employees.
DO FILE A PROVISIONAL
Once you have thought of an idea, managed to describe its essence and preferably have provided as many details as possible, it is advised to file a provisional patent application at the US Patent and Trademark office. A provisional patent application, which is not required to be drafted in the same format as an actual utility patent application, provides you with the benefit of holding on to an early filing date, which utility patent applications filed, later on, could claim priority from. This can make a huge difference under the ‘first to file’ practice, since being the first to enter the ‘race’ provides a great advantage.
These are just a few of many aspects to consider when innovating. Creating and maintaining a safe, productive and innovative Intellectual Property environment for your employees and your company could be the main difference to being a large and successful player in today’s innovative and expanding market.