culled from:bizjournal.com
If you’ve got a great idea for a product or service, you’ll undoubtedly want to share it with people sooner or later. But before you go making a formal pitch to a company, make sure that genius idea is protected.
Enter: the third and final installment of a series on protecting those great ideas. (Click here for part one, a primer on the world of patents and which applications to use. Click here for part two, the dos and don’ts of the patent application process.)
This time around, we’re going to discuss how to pitch your idea while safeguarding it from being stolen, with seven tips from my interviews with intellectual property attorney Barbara Luther of The Luther Law Firm in Scottsdale, Ariz.:
1. File that provisional patent application.
We discussed the provisional patent application in part one of the series, and it’s important because in the world of intellectual property, patents are issued on a first-come, first-serve basis. That means you’ve got to get your idea on file as soon as possible.
“Filing a provisional patent application gives you a government record that you had the idea first,” Luther said.
The provisional patent application, which costs $2,000 to $3,000 to file, saves your spot in line for a year. It gives you protection, as well as time to see if your business idea can work. (More on that here.)
2. Buy all relevant URLs.
Many unknowing inventors and entrepreneurs forget to buy the website addresses (or URLs) they will want to use for their business, and it can end up being a problem.
Luther said she once had a breakfast meeting with a client who was burned because he neglected to buy the relevant URLs. The night before his meeting with Luther, the client had dinner with his best friend and shared his big idea. He awoke the next morning to find his so-called friend had bought the URLs for that business name overnight.
“He looked crestfallen,” Luther said. “And I think it took the spark out of the new project for him. He decided he wasn’t going to do the project anymore.”
Many website names cost around $13, Luther said, so there’s no reason to delay.
And make sure you buy related names, as well, she advised.
3. Start using “TM” or “SM” with your company name.
You need to file for a trademark (see No. 4), but in the meantime, put TM (for a product) or SM (for a service) by the name. That makes others aware that it is yours.
It also shows that you’re savvy enough to know you need those oh-so-critical letters, Luther said.
4. File for a trademark.
A trademark is any name, symbol, figure, letter, word or phrase adopted by a seller to designate or distinguish his or her goods, products or services. Before latching on to one, do Internet and USPTO.gov searches with all variations of the name you can think of. (Think: Care, Kare, Cair, Kerr, Luther says in her e-book, “Barb’s Rules.”)
It’s generally a good idea to file this paperwork before you get too far along in product development, Luther said, because it serves as a warning to others. You’ve also got to be careful not to infringe on someone else’s trademark.
For example, Luther said that one time a man turned to her for help with his service called “LeasePal.” He applied for a trademark on the name as well as the tagline: “financial services to help renters and protect building owners.”
PayPal threatened action because the name-tagline combo was too similar. Nobody else with “Pal” in the name can have “financial services” in its description, Luther said. Once the disheartened man approached Luther, she helped him devise an easy remedy: drop the word “financial” from the tagline.
The government fee for a trademark is about $325, Luther said. She charges about $1,500 (which includes the government fee) to do the paperwork.
The U.S. Patent and Trademark Office typically has a three- to four-month backlog, she said.
5. File for a copyright certificate.
First, a reminder: a patent protects inventions or discoveries. A trademark protects words, phrases, symbols or designs that identify the source of goods or services and distinguish it from others.
And a copyright protects original works of authorship — the business plan itself, for example — giving the person the copyright the exclusive right to make copies, license and otherwise commercialize your work.
File for one as soon as your work is complete, Luther advises.
That certificate — just $85 if you file by paper and $35 if you file electronically — gives you recourse if you spot an infringer. Because you’ve got the paperwork, you can sue the infringer to stop, and the other party will be forced to pay your attorney’s fees.
“It’s very cheap insurance should you get in a dustup with someone,” Luther said.
If you file electronically, you can expect a response in four to six months. If you do it by mail (which requires government employees to manually input your information), you may not see that certificate for a year and a half, Luther said.
Luther charges $435 (including the fee) to help people pull together their electronic filing.
6. Put the copyright sign on all of your papers.
If you’re making a pitch to a company or individual, you’ve probably got designs and paperwork describing your product or service, proposed operations and business plan.
Before you let outside eyes see that paperwork, you should have a copyright warning at the bottom of every page. It shows your commitment to protecting your idea, Luther said.
Here’s how it should look: In the footer, include the circle “C” sign with the year and the name of whoever is pitching. In the right bottom corner, type “ALL RIGHTS RESERVED,” in all caps.
7. Consider drawing up confidentiality paperwork.
Luther says she regularly draws up confidentiality paperwork for inventors to give to people they’re pitching to. Luther typically charges between $200 and $500, and then the individual has a file they can use in the future, filling in different names as needed.
But always come into the meeting with the people’s names typed — not handwritten — in the blanks, she advises.
Be forewarned, however, that if you’re pitching to a large company, there’s a chance they won’t agree to sign a confidentiality agreement. In fact, some might ask you to sign a paper that says you’re not requiring confidentiality of them.
That’s because big companies have their own departments coming up with ideas, Luther said. They may already be working on an idea that’s similar to yours or have put it aside to tackle at a later date. They don’t want to sign away their ability to pursue that product.
But don’t be disheartened: If you’ve already submitted your provisional patent application and they do decide to pursue a similar idea, your claim will stand up in court.
And if nothing else, Luther says, having that confidentiality paperwork shows you take yourself — and the process — seriously.
“It shows a more professional, business-like attitude,” Luther says, “as opposed to walking in with a T-shirt and flip-flops and an idea on the back of a napkin.”
