skip to Main Content
Call for a Houston Patent Attorney! 1-832-621-0353
Dark Blue Serif Type Over Image Of Tools

Do I need to Make my invention before I can patent it?

Don't Wait! I get calls from entrepreneurs and startups all the time who want to patent their invention but tell me they're not ready yet because they have not had a chance to make their invention yet. This can be a huge mistake because waiting to file your patent application until you've made your invention may cause you to lose the race to the Patent Office. There are NO second chances in Patent Law. No, you do not need to make a prototype or working example of your invention before filing a patent application. Many inventors, especially startups, know exactly what they need to do to make their invention or perform their process. They just don’t have the money, time, or access to the resources right now. That’s fine. Patent law gets it. All you need to be able to do is tell me how to make and use your invention. I need the recipe, not the drug. I need the design, not the medical device. But that’s for an invention that you know will work. For example, many entrepreneurs and inventors in the mechanical, electrical, and software fields know their designs will work. If your invention is in the…

READ MORE
Dark Blue Serif Type Over Image Of Clock

When is it TOO Early to file a patent application?

I get calls from entrepreneurs all the time who want to know if they can patent their invention. I have 2 answers to this question: a legal one and a business one. Legal Timing If you cannot tell me how to make and use your invention, then it is too early. For example, “I have this idea for a flux capacitor. When installed in a DMC DeLorean and driven 88 miles per hour and powered with 1.21 gigawatts, then the car can travel back in time.” Sounds great, but my main question will be: How exactly do you make a flux capacitor? We don’t need generalized concepts; we need recipes, formulas, blueprints, or wire diagrams, etc. If you cannot tell me how to make it or do it, then you do not have an invention, you have a research goal. By analogy, a movie pitch is not enough to make a movie: “Hey I've got this great idea for a movie. It's goanna be like Wonder Woman meets Godzilla meats Star Wars!” That’s sounds great, but before we can protect your idea, you need a script. Business Timing You can patent an invention as soon as you can tell someone…

READ MORE
Dark Blue Serif Type Over Image Of Calendar

When is the Latest you can file a patent application?

I get calls from entrepreneurs all the time who want to know if they can patent their invention. And in true patent lawyer fashion my answer is: well it depends... on the answer to this one simple question. Have you sold or publicly disclosed your invention? If yes, did you do so over one year ago? Patents are based on a deal you make with the government. In exchange for you coming up with an invention and publishing how to make and use your invention, the government will grant you the exclusive right to make, use, sell, offer for sale, or import your invention into the country. But if you have already sold your invention or publicly disclosed how to make and use your invention, then why would the government grant you a patent? The public already has the benefit of your invention. Most countries will not grant you a patent on an invention that you have already published or sold. However, as with the metric system, the U.S. does things a bit differently. You may still be able to file a patent application to protect your invention up to 1 year after selling or publicly disclosing it. After that,…

READ MORE
Dark Blue Serif Type Over Image Of Mug, Calendar, And Pen

When is the Earliest you can file a patent application?

I get calls from entrepreneurs all the time who want to know if they can patent their invention. And in true patent lawyer fashion my answer is: Well, that depends... on the answer to this one simple question: Can you tell me how to make and use your invention? Patents are based on a deal you make with the government. In exchange for you coming up with an invention and publishing how to make and use your invention, the government will grant you the exclusive right to make, use, sell, offer for sale, and import your invention into the country. So the earliest you can file a patent application eligible of being granted by the government is when you can describe how to make and use your invention. I have worked with inventors who literally brought me their ideas written on a napkin because as soon as they conceived it, they can file a patent application to protect it. As long as you can provide me with a recipe for how to make your product or perform your process, then you can file a patent application that is enabled. And the more recipes you can provide, the broader you can…

READ MORE
Dark Blue Serif Type Over Image Of People Running In A Race

Will you win the race to the Patent Office?

There are NO second chances in Patent Law. Just ask Elisha Gray. Who? Exactly. Elisha Gray filed his patent application for the telephone just 2 hours after Alexander Graham Bell. Alexander Graham Bell went on to become one of the richest and most famous inventors in history. He co-founded AT&T. Elisha Gray — did not. Bottom line: if someone else files a patent application on your invention before you, then you lose the race to the patent office. Oh wait, it gets worse! If anyone else in the world sells or publicly discloses your invention before you file your patent application, then you still lose the race to the patent office. If innovation is important to your business, this may be the most important race of your life. For this reason, my next few posts will focus on when you can file a patent application. Want to win the race to protect your invention? Don’t wait! Call us now at 832-621-0353 before it’s too late.

READ MORE
Texas Taiwanese Biotechnology Association Symposium Graphic Featuring Speakers

William Childs to Speak at the Texas Taiwanese Biotechnology Association Symposium

Hi Everyone, I have been invited by the Texas Taiwanese Biotechnology Association (TTBA) to give a FREE presentation about patent law and my experiences working as a patent attorney. My FREE presentation is entitled: “What You Need to Know About Patent Law” and is scheduled for Saturday, November 21st at 3:20pm CST. My presentation is part of a larger series of presentations by the TTBA regarding careers after graduate school. Over 15 years ago, I was lucky enough to attend a similar presentation in graduate school, where a patent attorney spoke to us about his practice. I am delighted to have this opportunity to give back. If you would like to register for FREE, follow this link: https://www.eventbrite.com/o/texas-taiwanese-biotechnology-association-8220470289.

READ MORE
Dark Blue Serif Type Over Image Of Person With Illustrated Bags Of Money In Background

Can You Afford to Enforce Your NDA?

As a patent attorney, I talk with inventors and entrepreneurs all the time. They will often mention that they have an NDA (non-disclosure agreement) that protects their innovation. Then when I ask where the manufacturer, marketing guru, or code writer is located, they will say anything from a different state to a country on the other side of the planet. NDAs are contracts, and like any contract you have to sue to enforce them. Can you afford to sue a contractor located in another state? Can you afford to sue a computer programmer based out of, say, Mumbai, India? My guess is “no,” and they know it even if you don’t. I suggest that you still want to have an NDA in place because it gives you options. But I would not rely on it. Instead, I suggest that you focus on the reputation of the business and their referrals and references. You know how you’re supposed to look before you leap. Well, research before you sign contracts or checks. If you are going to have a company in India or China write your code or make your products, you want one of the highly reputable ones that is making…

READ MORE
Dark Blue Serif Type Over Image Of Person Signing A Document

Who Should Definitely Sign NDAs?

Of course, all employees, collaborators, and contractors should sign NDAs. That is standard practice. But these are a few people you might not have thought of: Manufacturers, Engineering Consultants, and Testing Facilities Are you freaking kidding me? I cannot tell you how many entrepreneurs will get or try to get their mother, their patent attorney, and every venture capitalist (VC) they meet to sign their NDA – and then they do not require the person helping them manufacture their invention to sign the NDA. Your soccer mom, patent attorneys, and VCs usually do not have the equipment, contacts or desire to steal your idea and start competing against you. A contract manufacturer or engineering firm usually has ALL of the equipment and contacts necessary to make your product. That was the whole point of contacting them in the first place. Do not be fooled by the “free consultation.” Without a contract in place, they can easily steal your invention and start competing against you. Co-Founders, Partners, Co-Owners Most entrepreneurs require their employees to sign an NDA. But they do not think to have their co-founder, partner, or co-owner sign an NDA. The reasons for this range from “we’re such good…

READ MORE
Dark Blue Serif Type Over Image Of People Looking At Documents

Who May NOT Be Willing to Sign an NDA?

Not everyone will or should sign an NDA (Non-Disclosure Agreement). Here are some groups of people that probably will not sign your NDA. Potential Investors Most potential investors will NOT sign NDAs during early investment discussions because they have so many businesses to meet with per week that it exposes them to tremendous liability. Instead, they will generally ask you to keep the confidential parts a secret. Most potential investors will only sign an NDA when performing due diligence for large, post-seed round investments. Asking a potential investor to sign an NDA at the beginning of most discussions instantly marks you as an amateur. Click here to read more in my previous post: What do I do if potential investors won't sign an NDA? Patent Attorneys or IP Attorneys Most IP attorneys I have spoken with, and I am one of them, will not sign your NDA or will do so at great reluctance. There is a reason for this. Our engagement letters are already superpowered NDAs. To put it mildly, our engagement letters have confidentiality provisions that are required by law and legal practice to go far beyond the confidentiality provisions of most NDAs. More importantly for us and…

READ MORE
Dark Blue Serif Type Over Image Of People's Hands At A Meeting

What do I do if potential investors won’t sign an NDA?

I talk all the time with investors who get annoyed when small businesses and startups try to get them to sign an NDA. Even asking potential investors to sign an NDA is an instant sign that you are a total newbie to fundraising. There is a reason for this. Most savvy investors will not sign a Non-Disclosure Agreement (NDA) or at least not early on. This is because an NDA is basically a hunting license for suing people. Does that sound harsh? "I allege that you disclosed my confidential information. Now pay your attorney a lot of money to prove you didn't!" The goal of a potential investor, especially an institutional investor, such as a venture capitalist, is to quickly determine if your business is worth investing in. It's a numbers game for them so they meet with lots of potential businesses. For them to sign everyone's NDA would expose them to massive and unnecessary risk, which defeats the whole purpose of them meeting with you in the first place. So how do you protect your intellectual property without an NDA? Do not tell them the recipe for your secret sauce! Imagine that you are opening a restaurant and you…

READ MORE
Back To Top
×Close search
Search