Patents & IP: Key Take-Aways

dreamstime_xs_57295060On May 26, 2016, OCM Manufacturing hosted its quarterly Engineering Mixer. The session’s guest speakers were Jose Santos of 911innovation and Shirlee Biron, co-owner at Equinox patent and trademark agency. They gave an exceptionally informative and engaging session and these are a few of the key take-aways that we captured from the discussion.

  1. A patent is a contract between an inventor and a government. It will be different for each government/country. A patent is a privilege awarded by a government, protecting a party from others taking over an idea. Therefore, make your patent as broad as possible.
  2. A trademark is a name associated with a specific product or service. It is completely different from a company name. Just because a company name is registered, that does not guarantee you will be able to use it as a trademark for your products/services.
  3. If you disclose your idea publicly, you have no right to file for a patent for that idea. Public disclosure includes things like showing it, describing, selling it in public forums. It does not include conversations, tests, etc. carried out under a non-disclosure agreement (NDA) between parties.
  4. After filing for a patent in one country, you have 1 year to file in other countries claiming the filing date of the first filing as the priority date.
  5. Today, patents are granted for 2o years, worldwide and across all sectors. (The medical sector is lobbying to have this period lengthened for medical innovations).
  6. A provisional patent filing allows for changes to made to the idea/design/description. However, changes and additions have no effect on the 1-year period.
  7. Every patent application must declare at least one inventor (i.e. an individual or individuals). The inventor(s) may sign over the rights of the patent to a company, but they must still be named on the patent application (and any resulting patent).
  8. It is difficult to patent an algorithm/software. It is preferred that patented software be associated with hardware.
  9. Before you reverse-engineer a product, have a patent search completed to ensure that the product does not have any active patents.
  10. China is now the most active country in the world in terms of filing patents.
  11. Budgeting:
    • Provisional patent: $3,000-$5,000
    • Full patent filing: $12,000-$25,000
    • Trademark filing: $1750
  12. Patents and trademarks hold value when speaking to customers, partners, potential investors and buyers. They can also be licensed and sold.

NOTICE: This information should NOT be considered legal advice. OCM Manufacturing does not have expertise in the patent process. We encourage you to contact either of the speakers for more information:

Jose Santos, 911innovation

(519) 505-1899;

Shirlee Biron, B.A.A., Equinox

(514) 739-6770;