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Have I forfeited my patent by disclosing it to a company?
Hmm. That's annoying isn't it? The answers are supposed to be short but they end up being kind of long ... sort of like my recent root canal. Ennyway. You have one year from any publication, public use, public sale, or offer to sell your invention, in which to file a patent application or provisional patent application (PPA). (If you file a PPA, you will then have one year from that filing date to file a regular patent application). So if you disclosed the novel and nonobvious aspects of your invention -- that is the patentable stuff -- and if you don't file a regular patent application or a PPA within one year of your public disclosure or offer to sell, then the invention passes into the public domain and cannot be patented.
Although you haven't lost your ability to patent, you probably forfeited any claim to any disclosed concepts or ideas as trade secrets. Since the U.S. is still a "first-to-invent" country (the only one, actually), you don't have to worry about a race to the patent office (although the Dear Rich staff reports that many U.S. patent attorneys still follow the maxim, "file early and file often.") In any event, as we've pointed out before, a patent application must be filed in the name of the inventor (that's you, right?), so the other company will commit fraud if it does not list you accordingly.
What's the best way to solicit a company with an invention idea? Ideally, obtain a nondisclosure agreement. If that's not possible, make disclosures in stages, avoiding disclosing anything patentable or any trade secrets until absolutely necessary. Hopefully, if you can build up some credibility, you can then obtain an NDA, an evaluation agreement -- or even an option agreement. For more on these concepts, check out my book, Profit From Your Idea. If you're in a hurry to file a PPA, check out Nolo's Provisional Patent Application or check out this interesting new patent-filing startup site by Rocky Kahn.
Provisional Patent Application on Someone Else's Idea
Dear Rich: A former co-worker developed a new business idea. I signed an NDA and we both worked on commercializing the idea and planned to form a startup. He lost interest. An attorney reviewed the now-expired NDA and said I was fine to pursue the idea on my own, that I was under no obligation by the NDA. Can I file a provisional patent on the business idea? I would like to protect the idea by fixing a date in case I decide to file a formal patent application within the year. Any thoughts? Our first thought is that since you mentioned that you've already hired an attorney, why not ask your attorney whether to file? The Dear Rich staff provides helpful information, but your attorney knows more details about your case and could provide specific, client-centric advice (and probably has malpractice insurance to boot). Our second thought is that there is no such thing as a "provisional patent" (a common misconception). There is only a provisional patent application (or PPA) -- a document that establishes an official U.S. patent application filing date. (Nolo offers a free guide to PPAs that you can download here.)
As for filing your PPA with the USPTO, the PPA must be filed in the name of the inventor (or a co-inventor). A co-inventor is someone who contributes at least one novel and non-obvious concept that makes the invention patentable. If you didn't add anything patentable to the concept -- no Eureka! moments -- the PPA must be filed in the name of your co-worker. As for preserving the date of invention, you don't need a PPA to do so. Many inventors preserve their dates via an inventor's notebook. The important thing to keep in mind is that if you publicize or commercialize the idea, a patent application would have to be filed within one year in order to preserve patent rights. One way to avoid potential hassles is to work out a joint-ownership agreement with your former co-worker that will provide you with the right to exploit the idea while compensating him.
