Chris Pinter’s 10 steps to researching your patentable idea.

Doing market research for a new innovation has a number of inherent risks related to intellectual property exposure. You need to talk about your idea but once you do so you expose your idea to the public, competition and as a result you risk not getting a patent awarded.

On one hand you cannot talk about your idea because once you do so the information becomes public knowledge and therefore not patentable. Someone could also steal your idea and in todays global market this is a real threat. Patents are important as you have the court system to help protect your idea from patent infringement. However, you can only patent an idea if it is a non-obvious [1] extension of the prior art [2] or you can prove it is something brand new.

On the other hand you need to do market research to establish value for the innovation. If the idea is really bad it has no value and no one will want to buy it. Why would anyone want to steal a patent with no value? People file for patents all the time without doing adequate market research. You could spend a lot of money in patenting an idea that no one needs or cares about. It has been done in the past and is still being done today.
popular mouse trap
Case in point, the mousetrap has been invented over 4400 times and continues to be patented. Each year over 400 new patents are created for the mousetrap. [3] This brings up two points.

      1. It is possible to patent an idea without doing market research. (My advice; don’t do it!)

      2. Even if you do patent your idea. Someone else can still get a similar patent and compete with you. Take a look at the mousetrap example. 400 people each year are hoping to sell a mousetrap without truly understanding that the market does not need yet another mousetrap!

So you need to establish a need to prove value. You need to talk to people about your idea to ensure your patent will produce a return on investment. The dilemma is how do you ask for people’s opinions without exposing your idea?


Here is a step-by-step process to avoid exposing your intellectual property while you do market research.

1. Make a list of potential Patentable Features.


Make a list of all of the features of your patentable idea. Identify each element that makes it worthy of a patent. The primary features will uniquely identify how the innovation works. Secondary features will address usability and generally help in the understanding or use of the primary features.

2. Research the Prior Art.


Research all of the publicly available information on your subject matter. You want to get as much information on the prior art as you can. Don’t forget to check for prior patents. It is a good idea to review all similar patents. These are great sources of information and can help you if you want to improve on an existing idea. Many people enlist the help of a patent lawyer to do this search. Enlisting the services of a patent lawyer is very thorough and will give you everything. However outlaying large amounts of cash to investigate an idea should be avoided.

3. Make a list of Prior Art Features.


Make a list of all of the key points that are obvious and common knowledge concerning your subject matter by using the information you collected about the prior art. This list will be very useful as you do your research. When you are finished you will have a quick list of everything there is to know about the subject matter.

4. Compare Patentable Features Against Prior Art Features.


Check your Patentable Features list you created in step 1 against the Prior Art Features you created in step 3. Make sure your Patentable Features list does not include anything from the Prior Art Features list. Make sure your idea does not contain obvious information or information that is in the public domain. Remember, if the public already know about the innovation you cannot get a patent awarded. So make sure your Patentable Features list does not contain anything that is already public knowledge.

5. Secure your Patentable Features list!


So now you have identified all of the critical ideas about your innovation that you cannot talk about. Hold the list of Patentable Features very close, lock it in a safe and do not share this information.

6. Create a Topic of Discussion.


Using your list of Prior Art Features describe your “topic of discussion” so people have an idea about what problem you want to address. If you only talk about the items outlined on your list of Prior Art Features you can freely talk about everything on that list. This list contains everything that is already common knowledge and is already in the public domain.


    NOTE: If the information is already in the public domain you can freely talk about it.


7. Verify your Topic of Discussion.


Ask someone you know and trust to review the description and ask them if they can guess at the potential patentable idea. If someone can guess at what you are doing then it could be considered obvious and you will need to hire a good lawyer to prove it is not obvious. Ideally the people you ask will not be able to guess at your idea.

8. Research your Topic of Discussion.


Now you have just created a description of something that people can talk about. You should be able to ask questions related to needs and wants without having to tell too much about your solution. Ideally the people you ask will tell you about the needs that your solution will solve.

9. Its OK to say NO.



patent
Remember, It is ok to tell people that you cannot tell them everything about your idea. Tell them you cannot share more information because you need to be able to apply for a patent and cannot share more information at this time. This is a fair statement and people should respect this position.

10. Non-Disclosure Agreements.


A non-disclosure agreement (NDA) is a legal document that is made between two parties that promise to not talk about or disclose confidential or propriety information to anyone outside of the agreement. Many industries including the technology development industry use this type of agreement to allow the discussion of “patentable ideas” to be shared with trusted partners.
They are great when working with other developers but not adequate when dealing with the general public. An NDA will have several enforceable repercussions outlined in case someone breach’s the contract. You need to be able to track all those who have signed the agreement, and be able to clearly identify who breached the contract in order to enforce the terms of the contact. This is impossible when you have asked hundreds or thousands of people to sign a general NDA.
If you need more information that this article has not covered you most likely need a more specific answer and should contact a qualified patent lawyer before you expose your ideas to the public.

______________

Further Reading

[1] http://en.wikipedia.org/wiki/Inventive_step_and_non-obviousness
[2] http://www.tms.org/pubs/journals/jom/matters/matters-9106.html
[3] http://www.uh.edu/admin/engines/epi1163.htm

Leave a Reply