Brian Mack; Anna Quinn
The traffic and transit industry continues to make significant technological strides impacting traffic safety and efficiency. New and improved traffic systems, vehicle automation, and enhanced communications all contribute to safer, more connected roadways. Each idea contributing to a new traffic system or method is considered “intellectual property,” which may be protectable under U.S. and foreign laws to prevent others from stealing and commercially exploiting the idea.
Many of the best ideas for new systems and processes are developed by those who are tasked with improving and developing the industry as part of their day-to-day job. That is, during the problem-solving phase of a project, the traffic engineers, civil engineers, and city planners will almost certainly generate new and creative solutions, some of which may be valuable intellectual property worthy of protection. Technology surrounding the timing devices for traffic lights, sensors for detecting the presence of vehicles at an intersection, automated toll collection and traffic flow systems are examples of improvements in the industry that resulted in various products protected as valuable intellectual property. So what should you do if you have a great idea impacting the traffic and transit industry? Who do you tell? What steps should you consider taking to protect your idea? How does the process of obtaining a patent work? What do you do with a patent once it is awarded? These important questions should be contemplated by anyone involved in the development of new technology.
Often, an invention can be protected in the form of a U.S. or international patent, which can be sought for systems, processes, designs, and plants. A granted patent protects your invention by preventing others from making, using, selling, or offering for sale a highly similar product or method. Receiving a patent can therefore go a long way to protect your idea and increase the value of your company because it gives the patent owner a monopoly on the invention. On the flip side, failing to protect your invention with a patent in a timely manner opens the door to a third party copying and reproducing your invention without repercussion. The following discussion offers some insight for inventors interested in securing intellectual property protection for an invention.
When it sparks
Once you have an idea for an invention, you may have an urge to share the idea with everyone you come into contact with. You may begin to test, develop and even strive to prove the idea with a working prototype. Perhaps you will take some steps toward commercializing your invention, perhaps discussing the invention with a business contact or two. However, a public disclosure of your invention such as a commercial offering for sale, or even discussing the invention with a business contact prior to filing a patent application can keep you from obtaining patent protection. The Patent Laws set forth a strict one-year bar; once you have publicly disclosed your invention, you have only one year to file for patent protection. If you’re outside that one-year, then the invention is considered to be dedicated to the public.
One way to try and prevent others from taking your invention as their own is to only disclose it to those who need to know about the invention (e.g., your closest team members) in order for you to move forward. Should you disclose your invention, consider entering into a non-disclosure agreement with the individual or company before providing any details. A non-disclosure agreement can be as simple as it sounds: an agreement not to disclose information. By entering into a non-disclosure agreement, the other party agrees that it will hear your information and will keep it secret for a predetermined period of time. Entering into a non-disclosure agreement may be enough of a deterrent that the contracting party will not disclose any confidential information. But even if non-disclosure agreements are often effective at keeping your invention secret, it’s a contract, and there is no recourse against the other party who might disclose the confidential information unless you sue for breach of contract. Therefore, although there may be a desire to prototype and/or test out your idea, it may be better to keep any such plans secret until after a patent application has been filed. If you have questions about public disclosures, consider talking to an attorney familiar with your situation to develop a tailored approach for protecting your invention.
Filing for a patent is a large undertaking, both in time and money. When done right, the patent process can be a very effective tool to protect your invention and elevate your business. When preparing a patent application, it is imperative that the application include all relevant information relating to the invention, such as a detailed explanation, written description of the invention, and detailed drawings. A patent must provide a disclosure and sufficient written description to enable an ordinary person in the industry to make or use the invention. Failing to include sufficient information will result in an application with fewer pertinent details, and could even cause the application to fail to meet the required level of detail under the patent laws. Additionally, a patent application must include at least one claim (or sentence) that describes the bounds of the invention.
Seek counsel
While it is possible for an inventor to try and protect his or her intellectual property on his or her own, due to the complexities of the U.S. patent and trademark systems, it is recommended that inventors secure the services of a licensed attorney. For obtaining patent rights, the inventor will seek out a registered patent attorney—an attorney uniquely qualified to handle the task of applying for a patent. A roster of registered patent attorneys can be found on the patent office website (www.uspto.gov). Just like doctors have specialties, patent attorneys often have specialized knowledge in a particular area of science or engineering. Therefore, it may be beneficial to understand the technical background and experience of your patent attorney. The patent attorney will help you navigate the intricacies of the patent process, and can be a trusted advisor for helping you develop a strategy for taking your invention from concept to reality.
In addition to possible patent protection, it is often prudent to consider the product’s branding scheme, or trademarks. A trademark serves as a source identifier for a consumer, and is frequently the first opportunity a consumer has to engage with your invention. A cleverly named invention has a higher likelihood of consumer recognition, and therefore repeat business. Trademarks can be protected at the federal level, and doing so ensures that third parties cannot use the same or a highly similar mark on a similar product. Trademarks can be registered for words, logos, and even tag lines.
Level of control
While the development of new technology can result in the creation of valuable intellectual property, what you can do with an invention you develop depends on the circumstances surrounding how and when you conceived of the invention. If you created the idea on your own and on your own time and with your own resources, then you can generally control what you can do with the idea. But if you jointly created the idea with another person (or persons), then each is considered an inventor, and, absent an agreement otherwise, each has a right to the invention. And if the idea was developed at work within the scope of your employment and company resources are used to further the development, then your employer may have rights in the invention. If you work for a company and have a new invention, consider contacting your supervisor or an in-house attorney, if there is one on staff, to determine what corporate procedures, if any, are in place for inventors and their ideas.
When it comes to bringing your new idea to market, there are many other important issues to consider as well, including non-disclosure agreements, business formation, obtaining investor support and some important business aspects such as operating as an individual versus as a corporation. Thinking ahead and securing a trusted team of advisors can save time, money, and potential headaches as you develop your invention and business plan.
