by Jo-Anne Yau
Many lucrative business plans center on innovative products or processes that appeal to clients. Patents are essential in protecting the rights to your inventions and preventing competitors from using them.
There are several questions to ask when dealing with patents. First, you must figure out if the company has any inventions or works that are patentable. Patents can be anything from light accessories to an automotive tool to a business model. If no patentable inventions are found during the search, focus your attention on the other types of intellectual property listed above. If you do come across some inventions to be patented, work with your attorney to start the application process. The next step is regarding questions about both ownership and disclosure.
Who owns the patent rights to an invention? Answer…the individual inventor. If the inventor hires someone to create a prototype or design software the inventor may not be the sole owner of the patent. Getting an attorney to write an assignment of rights or draft a work for hire agreement may clear up your issues. As long as a person is specifically hired to create something or solve a specific problem (and it is all in writing–with signatures!) you should be safe.
The next issue to address when considering patents is disclosure. Under U.S. patent law, an inventor has one year after the first public disclosure of an invention to get a patent application on file, or else the invention will be deemed to have entered the public domain. The US Patent and Trademark office defines “public disclosure” to include publication, sale, offers for sale and public use. Once realizing there is a patentable invention, you must determine if the one-year filing period is still effective. Keep in mind it does take some time to file the actual application. You may need to discuss cease-and-desist letters with your client for future claims that could be brought up against them. It is always a great idea to follow your competitors’ applications and keep your attorney handy to ensure cease-and-desist letters will not show up in the mailbox.
Jo-Anne Yau and Butch W. Tanner are partners at the Yau Law Firm. Their areas of practice include Business Law, Intellectual Property, Litigation, and Sports & Entertainment Law. The Yau Law Firm is based in Jacksonville, and will be opening another office in Calgary, Canada. Jo-Anne is a member of the Jacksonville Women’s Business Center Advisory Board. www.YauLaw.com