Patent Tips : How to Avoid Common Mistakes and Pitfalls

By: Elias Borges, patent & trademark lawyer.

Losing your patent rights can be both frustrating and expensive.  Surprisingly, many companies lose their patent rights because they made one or two easily avoidable mistakes.  Here are a few simple rules, which if followed, can help any inventor or company maintain the value of their patent assets.

    Keep a Paper Trail:

    It is important to properly document and record the creation of each invention.  A proper paper trail document how, when and by whom an invention was created can be invaluable should a dispute as to the ownership of the invention arise.  I suggest that each inventor keep a bound and dated journal within which note are periodically made as the invention is developed.


    Record Ownership of Every Invention:

    Any invention created by an employee during the course of their employment automatically belongs to the employer.  However, any invention created by an independent contractor is owned by the contractor, regardless of the price paid for the contractor’s services.  It is important that any and all agreements for services, including employment agreements, contain clauses specifying who owns the intellectual property rights in any work product created.  For greater clarity, it is best to have any employee or contractor who worked on the creation of an invention to sign a patent (invention) assignment.


    Use Confidentiality Agreements:

    Before disclosing any new product or invention to a client, supplier or potential investor, it is important to ensure that a proper confidentiality agreement is executed.  A properly executed confidentiality agreement will not only help ensure that the invention remains confidential, but it also forms a vital addition to the paper trail outlining the chain of title for the invention.


    Conduct Preliminary Patent Search:

    Before investing a great deal of time and effort into a new product line or invention, it is advisable to scope out the field of the invention to ensure that there are no potentially conflicting patents blocking the development of the invention. 


    Filing a Patent Application BEFORE Disclosing:

    It is strongly advised that a patent application be filed before details of the invention are disclosed to the public and before the invention is offered for sale.  A premature public disclosure of public offering can seriously prejudice your patent rights.