There are certain questions that we answer all the time during our initial consultation. While our intellectual property lawyers are always interested in hearing from our clients and will happily address any questions and concerns, this Q&A may be helpful to clients and potential clients here in Texas as well as across the United States.
When in the product development process should I file for patent protection?
Typically, you should plan to: (1) file an initial application early in the development process when conceptualization is complete, but prototyping is not, and (2) file an updated or new application to capture any improvements and new inventions discovered during the prototyping process.
What mistake do entrepreneurs commonly make when they have a promising idea?
Cutting corners on foundational issues related to ownership and protection of intellectual property. Typically, one should use written contracts regarding ownership and treatment of confidential information and developed technology.
I have the idea and that should be good enough. Why do I need a business strategy?
Formulating a business strategy forces you to place a value on your idea and to develop a plan for realizing that value. Whether you intend to produce and sell a product or license or sell your idea, having a strategy will enable you to identify and address critical issues early in the process.
My employer is claiming an invention that I created on my own outside of work. Can it do that?
Maybe. This depends on things such as your position, your employer’s business and agreements between you and your employer. Generally, the closer your invention is to your employer’s business and the closer your position is to a technology creator or executive, the better your employer’s claim.
I received a cease-and-desist demand. What can I do to fight this?
If the demand is worth fighting, the first thing to do is to determine its merits. This often involves seeking legal counsel. Then, if appropriate, you can respond to challenge the facts or law on which the demand is based.
My ex-partner is now trying to sell an idea that I feel is partially mine. What should I do?
If you have a friendly relationship with your ex-partner, talk to him or her. Other than that, collect all evidence of the partnership relationship and seek legal counsel. You may wish to quickly file a lawsuit to stop the sale.
A business has made an offer for my idea, but I do not think it is offering me enough money. What should I do?
Negotiate. Make sure you have a good grasp on the value of your idea to the business and to other potential buyers. If the business does not value it enough to support your minimum price, the deal is probably not a good fit and you should seek other buyers.
A business has made an offer for my idea, but has no interest in keeping me involved and I do not think it knows what it is doing. What should I do?
Express your concern to the business. If you are passionate about seeing your idea succeed or if your compensation is tied to the idea’s success and the business resists your involvement, seek another buyer or take the idea to market yourself.