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James Muskal, Partner
Leydig Voit & Mayer Limited
2 Prudential Plaza Ste 4900
180 N. Stetson Avenue
Chicago , IL 60601-6780
(312)616-5600
www.leydig.com

Is it the automobile? Should the radio or light bulb get top billing? America’s greatest invention can be hotly debated without conclusion—but there is no debating the inventors, thanks to US patents held by Ford (#1,005,186), Marconi (#586,193) and the very prolific Edison (#223,898).

“The ideas out there today are incredible, but they quickly become worthless unless they are patented,” said Jim Muskal, attorney with Leydig, Voit & Mayer, Ltd. “That’s a scenario that always has been, always will be. Inventors can’t wait; they need to apply for a patent as early as possible after the idea is made public or put into use.” If they don’t, he cautions, rights to the invention will be lost after a one-year grace period. And any claim to fame—along with potential profits—can vanish into unpatented purgatory.

What is an invention?
An invention is not just a great idea. The legal definition of an invention includes any new and useful process, machine, manufacture, or composition of matter—or any new and useful improvement on any of the aforementioned. Inventors should take note that laws of nature, physical phenomena and abstract ideas are not patentable.

Patent law specifies that an invention must meet three conditions: usefulness, novelty and nonobviousness—it has to be sufficiently different from what has been used or described before. Any idea is patentable if it meets the three criteria, Muskal said. A case in point: Amazon.com patented its invention—one-click shopping—after determining it fit the bill.

What steps do I take?
As with the trademark application process (Play T-07), Muskal suggests entrepreneurs begin with a search of patented ideas. The first step can be accomplished by hiring an attorney or by visiting www.uspto.gov, the website of the US Patent and Trademark Office, which issues US patents.

If there is no infringement, and your idea meets the three criteria listed above, then you can take the next step and file a disclosure document, which requires a drawing and written explanation of your idea. “Some inventors become unnecessarily nervous about the disclosure filing,” Muskal said. “The ideas submitted are preserved in secrecy—and the government can only protect what is known.”

Next, you file a provisional application, which lays the groundwork for foreign filing (a patent is required in every country of trade)—a lengthy process that often takes one year to complete. The final step is filing a full utility application. Although the steps may be few, the patent process is much more technical and rule oriented than in trademark application and is best done by retained counsel.

What’s in it for me?
It typically takes two to three years to obtain a utility patent and costs between $2,500 and $15,000, depending on technical complexity. Design patents range from $1,000 to $2,000. Additional maintenance, issue and prosecution fees and costs may be encountered, Muskal noted. A patented invention is protected for 20 years from the first application, which grants the inventor the right to exclude others from making, using, offering for sale, selling or importing the invention.

Some companies keep their inventions cloaked in trade secrets, rather than patent protection. The most famous example is Coca-Cola’s syrup formula. “Trade secrets are practiced,” Muskal said, “but there is nothing to prevent a third party from analyzing your product and reconstructing it through reverse engineering.”

Indeed, reverse engineering is one test used in patent law to determine whether an infringement has occurred, as is a claim comparison. “Technology is moving faster than ever, and heavy competition is on the rise as well,” Muskal said. “Today’s market dictates that entrepreneurs obtain patents to stay in the game.”