Sunday, October 21, 2007

POOR MAN'S PATENT

NOTE: Recently, the "Patent Reform Act of 2011" has been signed into law, which has altered several aspect of Patent Law since this article was written.   Most notably, we have transitioned from the "first to invent" system to the "first to file" system, which effectively KILLS OFF the concept of the "Poor Man's Patent".  Mailing things to yourself, if it ever had any benefit at all, now has absolutely NONE, whatsoever.   CONSULT AN ATTORNEY for more details.   The information provided here is for educational, and at this point, historical purposes and is quickly becoming outdated.


THE "POOR MAN'S PATENT" - APTLY NAMED!

About once a week I get a call from an inventor who proudly tells me that he mailed a copy of his invention disclosure to himself to "prove" his date of invention. I always tell such inventors that I hope the Post Office doesn't lose their mail!

Losing your invention disclosure in the mail is really the least of your worries, however. Mailing things to yourself is really a waste of your time and provides yourself with a false sense of security. Unfortunately, a lot of do-it-yourself invention books and websites promote this concept as the "Poor Man's Patent" and in that regard it is aptly named. You'll certainly remain poor using such homespun techniques to protect your invention.

To begin with, under the Federal Rules of Evidence, documents cannot be entered into evidence by themselves. Despite the courtroom drama we see on television, one cannot simply waltz into court waving the postmarked envelope (while a dramatic hush falls over the courtroom) and expect to prevail. Rather, one must establish a foundation for entering a document into evidence. Otherwise the document will not be entered into evidence at all!

Such a foundation is usually provided by a witness, who testifies as to what the document is, and what its significance is. If you are the one who mails the envelope to yourself, then that witness would be you. The credibility of yourself as a witness can be attacked, as obviously it is in your best interest to say on the stand that this envelope was mailed on such-and-such a date and has not been tampered with or opened. In other words, such testimony is ripe for impeachment. Opposing counsel will imply that you are lying and discredit your testimony.

The other wisecrack I always offer to the mail-it-to-yourself crowd is to mail several empty, unsealed envelopes to yourself at the same time to "backdate" future inventions. Of course I am not serious with this suggestion. However, it illustrates how the mail-it-to-yourself concept can be easily compromised. The Post Office WILL deliver unsealed and empty envelopes all the time, and anyone could later insert contents into such envelopes and then seal them, claiming they were earlier mailed. Also, it is not hard to steam open a letter and later reseal it. The Post Office does NOT operate as a date-stamping service!

There IS an official invention date-stamping service provided by the Patent Office. The Document Disclosure Program allows an inventor to have his documents officially stamped by the Patent Office for a $10 fee. Two copies should be submitted, as the Patent Office will not return a single copy. The Patent Office copies are destroyed after two years, so without a second stamped copy (which is returned to the inventor) you could not prove what exactly was submitted to the Patent Office for date-stamping. (Update 2007: The Patent Office has discontinued this service)

However, I have rarely advised clients to use this Patent Office service for the simple reason that it is unnecessary. A much more foolproof way of establishing your invention date is to SIGN AND DATE each page of your disclosure and have each page WITNESSED (signed and dated also) by a third party with the notation "Reviewed and Understood by me". Notarization is nice, but not entirely necessary.

Why is this a better technique? Well to being with, it is one that the courts have recognized over the course of 100-odd years of jurisprudence as a legitimate way of documenting your date of conception. There is an ample track record of such "invention disclosures" holding up in court, whereas self-addressed envelopes have a somewhat dubious history. Why not follow the technique that the courts clearly allow?

In addition, since a disinterested third party has witnessed the document, testimony providing foundation for entering the document into evidence can be provided by someone other than yourself. A jury is more likely to believe such testimony from a disinterested third party than from a self-interested party such as yourself.

Having your witness signatures Notarized makes the document "self authenticating". In other words, if your witness dies or is unavailable, the notarization will prove that the witness signed the document on the date indicated. So Notarization is a good idea. Note that using the Notary as the witness is not a good idea. The Notary's job is only to authenticate signatures, NOT to act as a witness to your disclosure document.

Which brings up another good point. Your witness needs to have "reviewed and understood" your invention before signing. You cannot simply have a witness sign blank pages or sign the document without looking at its contents. The witness is "witnessing" your invention, not date-stamping it. The case law is full of cases where witnesses were asked to sign blank pages (to be filled out later) or to sign documents where the invention details were covered up or obscured. As you might guess, such inventors later found themselves out of luck in court.

Inventor's always argue that the witness or Notary will steal their idea if they allow them to see it. While the Notary might not need to see all the details of the invention (remember the Notary's job is to authenticate signatures, the witness's job to authenticate the invention) your witness will need to see the invention in order to authenticate. If you are really that paranoid that the witness will steal your idea, have them sign a Non-Disclosure Agreement - so that they cannot steal your idea without a breach of contract.

Who should be your witness? Preferably someone who can understand the technology and is friendly, but not intimate. Family members are not preferred as they are not really "disinterested" parties. Similarly, your Lawyer is probably not a good candidate either. Hopefully a friend or colleague can provide the necessary signatures to authenticate your invention disclosure.

Why document your invention? The U.S. is still an "first to invent" country - we award Patents to the first to invent, not the first to file. Thus, an Invention Disclosure, properly documented, can be useful in determining who should be awarded Patent Rights in the case of a dispute. However, in most cases, the person who is first to file usually wins such disputes ("Interferences"). Moreover, an early filing date allows your Patent to anticipate (pre-date) more references that could be applied to your invention.

Thus, I always advise clients to file as early as possible. Date of conception is always a factual matter that needs to be proved in court with ancillary evidence such as your invention disclosure and your testimony. It is never a guaranteed result that your "date of conception" will be recognized by the courts. But a filing date at the Patent Office is absolute. An early filed Provisional Patent Application is a much more powerful document than all the invention disclosures and postmarked envelopes put together. There is no question about the filing date of a Patent Application.

Relying upon an invention disclosure or self-mailed letter to "protect" your invention by itself is false security. Those who advocate the "Poor Man's Patent" argue that you can approach large companies with your idea, have them sign a non-disclosure agreement, and get them to pay you royalties for your invention without ever having to apply for a Patent!

While this concept sounds appealing, it is mostly a fantasy. Most large companies are not going to go along with this idea. Companies that are willing to even consider outside ideas usually have a invention submission policy that requires you to relinquish all rights to your invention except U.S. Patent rights. Thus, if you want to have these companies consider your idea, you'll end up having to get a Patent anyway - or at least get a Provisional on file. The "Poor Man's Patent" will provide no protection to you unless you timely file at least a Provisional Patent Application.

While we are on the subject of Provisionals, be aware that the same folks giving the bad advice about mailing envelopes to yourself tend to give bad advice about Provisional Patent Applications as well. In particular, I've heard several of these self-help gurus advise inventors that they can "renew" their Provisional Patent Application by filing a second Provisional Application within a year of the first. This is flat-out wrong!

In order to claim priority from a Provisional Patent Application, you need to file a Formal Utility Patent Application within one year of the date of the Provisional. You cannot "chain" provisionals together - it simply doesn't work. While you might obtain benefit of the last filed Provisional, the lapse of the earlier filed Provisionals could provide an opponent with grounds to argue that you "abandoned" your invention. Bear in mind that any Patent Application must be filed within one year of the date of first public use, sale, offer for sale, or publication or your invention is deemed "public domain".

Documenting your date of conception and protecting your Patent rights does not require heroic efforts - just dating, signing, and witnessing of your invention documents. Mailing envelopes to yourself does little good, but if you want to do that, mail a COPY of your dated, signed and witnessed invention disclosure. The best course is to get at least a Provisional Patent Application on file. Save those stamps - find a witness!


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 Again, this article is of historical interest only at this time.   As of March 15, 2013, we are now a "first to file" country and a "poor man's patent" is worthless.

Also note that if you come up with an idea and never do anything with it, for years and years, it may be deemed "abandoned" under 35 USC 102(c).