Top 3 Inventor Mistakes: Disclosure, Search, and Ownership
Dec 29, 2022
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This podcast discusses the top three mistakes made by inventors: disclosing inventions too early, not conducting a proper search, and improper contracting for invention ownership. They also explore the components of a patent and available search tools. Additionally, they cover the importance of targeting patent applications accurately, common drafting mistakes, and the significance of clear ownership and assignment agreements.
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Quick takeaways
Publicly disclosing an invention before filing a patent application can hinder patent protection, striking a balance between seeking feedback and protecting the invention is crucial.
Conducting thorough prior art searches using tools like Google Patents and USPTO database helps build a strong patent portfolio and ensures patentability and freedom to operate.
Deep dives
Importance of Public Disclosure and Patent Filing
Publicly disclosing an invention before filing a patent application can hinder the ability to obtain patent protection. The podcast emphasizes the need to strike a balance between seeking feedback and investment while protecting the invention. Understanding the nuances of public disclosure and when to file a patent application is crucial.
The Value of Prior Art Searching
Searching for prior art is a valuable tool for inventors to determine the patentability and freedom to operate of their invention. Various search tools, such as Google Patents, SpaceNet, and the USPTO database, can help in identifying existing products, sales, or patents related to the invention. Conducting thorough searches can contribute to building a strong and enforceable patent portfolio.
The Importance of Ownership and Assignments
Clear ownership of an invention is necessary to ensure that the rights to the invention are conveyed to the proper entity. This involves proper assignment agreements and understanding the role and rights of inventors. Ensuring legal and contractual clarity in ownership helps avoid disputes and ensures the successful separation between the inventor and the company.
Understanding the Complexity of Patent Processes
The podcast highlights the non-linear nature of the patent process and the need for inventors to navigate various rules, jurisdictions, and subtleties throughout the process. It emphasizes the importance of seeking professional guidance and understanding the different considerations that arise, such as differing rules for foreign filings and jurisdiction-specific requirements.
If there were a guidebook we could hand to inventors on the first day following the conception of their idea, this episode would be it.
When is it safe to talk about or sell your invention? How do you hedge against invalidation and rejection from competitor IP? How do you ensure you actually own your invention?
In this month’s episode, Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora, leads a discussion along with our all star patent panel, exploring the most common patenting missteps taken by inventors and startups. The focus largely centers around three key areas:
1) Publicly disclosing your invention before you have filed a patent application. 2) Not searching to see if your invention or something similar already exists commercially or in publicly available resources. 3) Not carefully contracting with outside vendors and employees to make sure you own your invention.
The group highlights best practices for not making the mistakes in the first place and explores available remedial options should you already be in need of a rescue line.
Ashley is also joined today by our always exceptional group of IP experts including: ⦿ Kristen Hansen, Patent Strategist at Aurora ⦿ Ty Davis, Patent Strategy Associate at Aurora ⦿ David Jackrel, President of Jackrel Consulting
** Aurora is Hiring! **
Join us in the trenches and on this podcast! Aurora is looking for a part-time Biotech Patent Agent to help with patent portfolio management, application drafting, prosecution, and strategy. This is a salaried, fully remote position with a flexible work week and benefits. Work where you want, when you want, with a great team, on engaging subject matter, and even get the opportunity to be heard on this Podcast and featured on IPWatchdog! Learn more and apply at https://www.aurorapatents.com/careers.html.