Protecting Ideas: Can Ideas Be Protected or Patented?

Unfortunately, despite what you may have heard from late night television, satellite radio commercials or snake oil salesmen, there is no effective way to protect an idea. Copyrights protect expression and patents protects inventions, and neither protect ideas. In both cases the idea is the first critical step, but without some identifiable embodiment of the idea there can be no intellectual property protection obtained and no exclusive rights will flow unto you. This does not mean that you should give up when you only have an idea, but it does mean that you will need to proceed to flesh out your idea to the point where it is concrete enough to be more than what the law would call a “mere idea.” The moral of the story is that ideas alone cannot be protected, so you need to think in terms of invention.  Inventions can be patented. You just have to get from idea to invention.

On your journey from idea to invention to patent and ultimately, hopefully riches, please stop thinking that you will get rich by selling your idea to industry and sit back and collect royalty checks for doing nothing. If inventing were that easy everyone would be a filthy rich inventor! Ideas are a dime a dozen. What is valuable is not the idea that it would be wonderful to have this or that functionality, but rather the valuable piece to the puzzle is how to specifically provide that functionality you identify.

If you get stuck in the idea phase don’t just throw in the towel. Many good many inventors will become stuck in the idea phase from time to time, so if that is where you are you are not alone. It may surprise you to learn that you just think you are stuck in the idea phase and you might actually have an invention without even knowing it yet. United States patent laws do not require you to have a prototype in order to apply for a patent, all that is required is that you be able to describe the invention so that others could both make and use it. So while you do need to have some kind of identifiable embodiment you can start by proving your concept on paper.

With some guidance to coax out your idea you might actually have more than you think, then with the help of a professional illustrator or some 3D renderings you might soon realize you have an invention and not a mere idea. We are getting a little ahead of ourselves, but for now it is important not to despair. If you were clinging to the belief you could make millions from an idea alone you would likely have already stopped reading. The road to riches down the innovation path not only takes inspiration but it also takes perspiration.

Many people will have great ideas, but what separates those who can turn their ideas into money from those who cannot is a strategy to define the idea enough so that it can become an asset that can ultimately be protected. If you are having difficulty moving out of the idea phase and into the invention phase take a look at Moving From Idea to Patent and About the Invention Process. These articles will provide some insights and help you formulate a plan for reaching the invention stage, which is where you want to be in order to commercialize and monetize your ideas. I also recommend you take a look at One Simple Idea: Turn Your Dreams into a Licensing Goldmine, which is an excellent book written by Stephen Key of Invent Right.

If what you have is not an invention, but a story idea for example, you should be thinking about protection afforded under the copyright laws.  Here the best thing you can do is simply start writing, drafting or otherwise creating your work. A copyright exists immediately upon the original creation and fixation thereof, which is the legal way to say it exists upon creation (i.e. writing it down). You do not need to do anything special to claim a copyright, and you can immediately place the c in a circle and call the work copyrighted. Nevertheless, in order to sue for infringement you will need to have a federally registered copyright. The filing fee is only $45, so applying for a copyright should be done as a matter of course whenever possible.

With respect to inventions, you should be thinking about getting a patent of some kind. The options are getting a utility patent, getting a design patent or both. If your invention has a unique visual appearance you should be thinking about a design patent, but if you can get both a utility patent and a design patent that is the way to proceed.

Unfortunately, many people will have great ideas, but will not be able to put that idea into a package appropriate for a patent because there is no invention, only a concept. To be sure, the idea is the all critical first step in the invention process. After you come up with the idea or concept you now need to put together a game plan on how to carry that idea through. The idea and game plan together form what the law calls conception. Recently the United States Court of Appeals for the Federal Circuit explained:

Making the invention requires conception and reduction to practice. While conception is the formation, in the mind of the inventor, of a definite and permanent idea of a complete and operative invention, reduction to practice requires that the claimed invention work for its intended purpose.

See Solvay S.A. v. Honeywell International (decided February 12, 2014)(citations omitted). While it is ultimately necessary to have a reduction to practice, a reduction to practice is satisfied either by an actual working prototype (which the law calls an “actual reduction to practice”) or by fully describing the invention in a filed patent application (which the law calls a “constructive reduction to practice”).

Conception used to be the singularly most important concept when deal with patents because  because it was the first person to invent that will ultimately receive the exclusive rights on an invention. Invention was synonymous with conception. But the America Invents Act (AIA) changed that completely. Effective March 16, 2013, the U.S. is now a first to file country, although our brand of first to file is peculiar and unlike the first to file laws of other countries. It is only a slight exaggeration to now say that the U.S. version of first to file means you must file your application first. There are very narrow exceptions to that, but those exceptions are not tested by judicial decisions and are extraordinarily narrow. Inventors must now operate with the belief and understanding that a patent application of some kind, even a provisional patent application, must be filed as soon as possible in order to establish rights and prevent others from beating you to the Patent Office and ultimately receiving a patent.  So there is new urgency to move forward with a patent filing as soon as practicable.

Back to ideas — the myth that an idea can be protected frequently stems from what many call the “poor man’s copyright.” With the poor man’s copyright you simply mail your work to yourself and that is believed to somehow protect the idea. It is absolutely critical for everyone to understand that mailing your idea to yourself will do absolutely nothing to give you any protection. If you do have original expression that is fixed in a tangible medium of expression it is copyrighted immediately, but not federally registered. All that mailing your work to yourself will prove is that you had whatever is in the envelope as of a certain date, and that is only assuming there is a postmark on the envelope (which does not always happen) and further assuming the envelope is not opened. It provides no rights whatsoever.

Similarly, the myth that mailing your idea or invention to yourself somehow protects the idea or invention in the form of some kind of poor man’s patent. Many believe that if there is a poor man’s copyright there must be a poor man’s patent. First, there is no poor man’s copyright and, second, there is no poor man’s patent. Mailing your invention to yourself creates absolutely no exclusive rights. To the contrary, mailing the invention to yourself and then doing nothing with it could be used against you later on to demonstrate lack of diligence, abandonment or even suppression and concealment, none of which would be good things!

The one thing that mailing a description of your invention can do is demonstrate that as of the date of the postmark you were in possession of whatever is included in the envelope, given that it is unopened and you may be able to prove that it was unopened, which is not a given. Even if you can prove that you were in possession of the invention at some previous date and time since the U.S. converted to a first to file system it doesn’t matter when you conceived/invented. All that matters is when you filed your patent application! Therefore, it is all the more important to disavow yourself of the notion that there is such a thing as a poor man’s patent. There never was and under a first to file regime you really must file before anyone else if you want to obtain a patent on your invention. You also really should file a patent application before you disclose your invention to anyone or demonstrate your invention. While you do not need a confidentiality agreement with an attorney, the law already places a confidentiality requirement on attorney-client communications, as well as communications with prospective clients, you should not show, disclose or demonstrate to anyone else without a confidentiality agreement in place at least until you file. After filing that decision is up to you, and I discuss the pros and cons at Justified Paranoia: Confidentiality Before and After Patent Filings. 

But there must be a way to protect my idea somehow, right? Well, the answer is yes, at least to some extent. As already mentioned in the previous paragraph, if you can get someone to sign a Confidentiality Agreement then they will be promising not to use your idea without your permission and to keep it secret. This is not a form of intellectual property though, and can be various levels of extremely difficult to impossible to achieve.

With a confidentiality agreement you are extracting a contractual promise and if the person breaks that promise you can sue them for breach of contract. Getting folks to enter into such agreements can be exceptionally difficult. While manufacturers and suppliers are normally familiar with and willing to sign, those who you approach about funding (i.e., venture capitalists and angel investors) are likely to reject the notion of signing. Similarly, if you approach a company in hopes that they might be interested in acquiring or licensing your invention, they may refuse to sign a confidentiality agreement.  Companies have different philosophies on the issue.

A number of companies refuse to sign confidentiality agreements because signing a contract that says they need to keep your idea confidential only opens them up to liability where liability did not exist prior to the promise. They may also have employees or contractors working on bringing into being your invention, so if they accept your submission, promise confidentiality and then don’t use it you might erroneously think they stole your idea. It can be a messy situation, so a lot of companies steer clear. Other companies that want to accept inventions do so in some cases only after a patent application is filed, some will only accept outside inventions that are already patented, and others may accept outside submissions vetted by a licensing agent or found through an invention call or contest.

Still further, investors and companies that might otherwise be interested in reviewing your invention are likely to be uninterested at least until you have some type of patent application pending, whether it is a provisional patent application or a nonprovisional patent application. It is also in your best interest to have at least some kind of a patent application filed prior to any disclosure. In this new first to file world the inventor’s most helpful tool is a provisional patent application that meaningfully describes the invention. Aside from your own protection, the reason investors and companies will want to see at least a patent application is because once you have a patent application pending you have defined your invention. You are also moving forward in a prudent manner, which is important because those who do not file patent applications and just submit ideas are far more likely to wrongfully claim that an investor or company has stolen their idea. By pursuing the patent path you are acting in a business appropriate and responsible way, which sends a not so subtle message.

If you do not have some type of patent protection, and you cannot get a signed confidentiality agreement, telling someone about your idea or invention means they are free to use the idea or invention without paying you! For this reason, before shopping your ideas around it is always prudent to refine the ideas into a working invention, or something that seems to work on paper. Then file some kind of patent application on the invention — a provisional patent application will suffice at this point. By having a patent pending you have laid the groundwork for securing some rights, and you have an asset even though it will not mature into an exclusive right until a patent is ultimately issued.

Throughout this article I’ve discussed provisional patent applications, which are a very good tool. Having said that, inventors need to be very careful. A poorly prepared and hastily filed provisional patent application will provide little or no benefit.

For more information please see:

• Turn Your Idea into an Invention with a Good Description
• Keep Your Money in Your Pocket Until Proof of Concept
• The Benefits of a Provisional Patent Application
• Good, Bad & Ugly: The Truth About Provisional Patent Applications
• Working with Drawings to Create a Complete Disclosure
• Describing Your Invention Completely in a Patent Application
• Defining the Full Glory of Your Invention in a Patent Application
• Tips & Tricks to Defining an Invention
• Protecting Your Invention When You Need Help

Good luck, and happy inventing!