January 5, 2015

From The Denver Business Journal

by Sal Christ

Protecting a business idea or invention is, on the surface, as simple as filing the proper paperwork with the United States Patent and Trademark Office – usually with the assistance of an attorney.

But while obtaining a patent is an end goal, getting there requires far more foresight and planning.

First, patent law requires that an idea be new, useful, and specific. Patents are not granted on the basis of abstract ideas, natural phenomena, or ideas that cannot be implemented or operated. Per legal statute, patents may be issued for processes, machines, designs, manufactured goods, and composition of matter such as new chemical compounds.

Once the idea or invention has been established, protecting its development before it reaches the patent office should take top priority.

Gregory Durbin, partner at Polsinelli PC in Denver, stresses the value in pre-litigation steps before involving an attorney – something people often do too early. "People should do some of the legal lifting themselves beforehand. …You want to invest the time upfront instead of trying to fix things later," he said.

Durbin recommends that inventors research their industry and current patent trends as much as possible before approaching an attorney to pursue patent applications – steps that will ultimately save in fees.

Beyond non-disclosures forms, Durbin recommends that inventors look at their own employment agreements before pursuing patent protection for an idea. "Does your current job prohibit you from doing something or creating something on your own time? Are there other prohibitive clauses in your employment contract? These are questions you need to ask yourself before you pursue anything," he said.

Durbin also suggests investigating obligations to colleges and universities if someone is working with a professor or if an idea originated from within a university program or group. 

The full article is for paid subscribers only.