By far, one of the most common concerns raised by inventors when meeting with a patent attorney is, “What if someone steals my invention?” It’s not unusual for this fear to be at a fever pitch, with the inventor convinced that as soon as they give voice to their idea within hearing range of a single person not locked down by an NDA, unauthorized copies will start flying off the shelves.
The reality is, the theft of inventions is very rare. In large part, this is because of practical considerations: an invention needs to generate somewhere in the ballpark of $1 million in revenue before it makes sense to go to the trouble (and financial cost) of developing a knockoff product. And to be quite frank, very few inventions actually meet this threshold.
However, despite the innumerable times I say to clients, “Patent theft almost never happens,” the reality is that it does happen. Just last year, Sears was hit with a $6 million judgment for copying a product they had previously sold and selling the copycat as part of their Craftsman line.
So, in the unlikely event that someone steals your idea and attempts to patent it as their own, first and foremost, you’re going to need the help of a patent lawyer. Addressing unauthorized patent filings is no small matter, and requires the assistance of someone with significant experience in patent law. The Law Office of Michael O’Brien can help. For assistance, call us at (916) 760-8265, or send us a message using our contact form.
To give you an idea of what to expect, here are the two options available to inventors when someone tries to steal their invention and patent it.
Option 1: Institute a derivation proceeding, if the patent application’s earliest priority date was after March 16, 2013.
In the context of patents and inventions, the word ‘derivation’ means ‘theft.’ Thus, in a derivation proceeding, the USPTO holds a trial in which they attempt to determine if the applicant (the infringer) stole the details of the invention from the true inventor (you).
To prepare for this proceeding, you need to first submit a patent application of your own for the invention in question. Thankfully, this part is quite easy. Believe it or not, you can just duplicate the duplicator’s patent application (obviously, you’ll want to replace their personal information with yours).
Once you’ve done this—and before a year has lapsed since the publication of the illegitimate patent as an issued patent or in a pre-grant publication—you can submit a petition to the USPTO for a derivation proceeding. Unfortunately, derivation proceeding petitions are incredibly complex, and usually run about 50 to 100 pages in length.
These petitions are structured as follows:
- Part I: A construction of the claims detailed in the copycat’s patent application. This construction “translates” the application’s claims into plainspoken English, to better understand the scope of the invention.
- Part II: An examination of how the real inventor (you) developed the entirety of your invention, in extreme detail and backed by detailed evidence. This is typically the biggest hurdle to clear, as the USPTO uses a “heightened pleading standard,” which means that you must provide evidence—via documents not produced by you, or from records of communications between you and another party—that you invented each and every claim element before the earliest priority date of the infringing patent application.
- Part III: Demonstrates how each claim limitation was communicated to the earlier (infringing) applicant. They had to learn of the details of your invention somehow, and this is where you show how they did it. This is typically in the form of emails and documents that were exhibited in Part II, but can also involve other documentation as well.
Part II is likely the section that will present the highest barrier to inventors, as they cannot simply present personal documents dated prior to the infringer’s priority date. Every backing document has to have been produced by a third party, or must have been communicated to another person. This demonstrates the need for keeping a detailed record of your invention process, and involving others in that process.
Some ways that you can ensure you keep others involved—and thus have the independent record necessary in the case of patent theft—is to work with suppliers and customers as you craft an invention that reflects the realities of what can be made for a profit, and that people will want to actually buy. During this process, be sure only communicate invention details using email. This ensures that you have a complete record of who sent information to whom, and when. In the case where email isn’t possible, such as sending printed documents, take photos of other communications and email these photos to yourself, which creates a verifiable timestamp for the communications in question. Lastly, when working with suppliers, be sure to use an NDA. Unfortunately, this will not be feasible when working with individuals.
Bear in mind, prevailing in a derivation proceeding is extremely difficult. To date, only three individuals have been able to provide the evidence necessary to win their case.
Option 2: Institute an interference proceeding, if the patent application’s earliest priority date was before March 16, 2013.
An interference proceeding more or less accomplishes the same thing as a derivation proceeding, but there are some differences in detail. First of all, you don’t need to submit your petition within a year of the illegitimate patent’s publication. Instead, an interference petition can be made in response to either an issued patent within a year of issuing, or a pending patent application.
In the case of an application, you may have to wait a bit, as the application must be at the point where at least one patentable claim exists. Once that is the case, you can submit your petition.
Once this process is started, the senior party—the first, infringing applicant—and the junior party—the true inventor—must each provide as much evidence of their invention process as possible, so that the USPTO can determine who created the invention first. Whichever party was first to invent is awarded the patent.
No matter what, you’re going to need the assistance of a patent lawyer.
Derivation and interference proceedings are not for the faint of heart. You’re going to face a serious uphill climb, and you will need to have legal representation on hand. Part of the value of working with a patent lawyer is that they can help you identify simple alternatives to these proceedings, such as contacting the applicant and telling them that you need to be added to the patent application paperwork.
In addition, patent attorneys can help you find profitable solutions in what might seem like a hopeless situation.
Case in point: Some years ago, I represented a gentleman in an interference proceeding. He had previously worked for company as part of a team developing a piece of machinery. Surprisingly, the company never had him sign an agreement saying that he granted his employer full rights to any technology developed within the scope of his employment.
He and the company parted ways, and a while later he saw that his employer had not listed him as the inventor. He got in touch with me, and was able to provide me with emails sent between he and another patent attorney during his employment period. These emails included the full specifications of the invention in question, describing everything in enough detail to satisfy the “heightened pleading standard.” From everything I could see, he—unusually—had an open and shut case on his hands.
We sent a letter to the patent attorney who filed the patent application which said, in essence, “Hello, you ‘forgot’ to list my client as an inventor in the patent application, and we would greatly appreciate it if you could remedy this oversight.” The letter was ignored. So, I then copied the original patent application, amending it to add my client and the other individuals who worked on the project.
But there was a bit of a roadblock: How could we get his old boss to sign the new application? As it turns out, we didn’t have to. I informed the USPTO upon mailing the application in that my client’s old boss had refused to sign it, and they were satisfied.
As I was preparing the paperwork to file a request for a patent interference proceeding, the other side settled the case and agreed to add the client as an inventor.
This should serve to highlight a reason for why there have been very few successful patent interference cases. Yes, the bar is high. But in situations where the other side is likely to lose, they will likely settle. Thus, the number of successful interference cases is artificially low.
If you’re in doubt as to what route to take in the case of someone stealing your invention, the Law Office of Michael O’Brien can help you identify the most advisable action to take. For more information, contact us today by calling (916) 760-8265, or sending us a message using our contact form.