Do I need to protect my idea prior to having a market feasability study? If yes, what steps do I need to take? 7 Answers as of December 14, 2010

Are there any specific forms or application that need to be processed to protect an idea?

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DANIEL NESBITT | Hasse & Nesbitt
First, let me say that many an "idea" may not be patentable because it is only an idea, and not an invention. Inventions must be capable of being described in such detail as to enable a person of ordinary skill to make and use the invention. An idea or invention must also be new and non-obvious (not predictable) in view of the present state of knowledge and art at the time the invention is made.

A market feasibility study is usually not needed for preparing a patent application and for filing the same with the US Patent Office. A market feasibility study may be helpful to the inventor for determining the market value of a patented invention, which allows the owner of the patent to exclude other persons from also making, using and selling the patented invention, either when the inventor makes and sells the patented product directly, or when licensing the right to make, use and sell the patented invention to a third party.

Independent of any market feasibility study, you should contact a patent attorney or patent agent concerning the patentability of your invention, and to determine the steps needed to proceed. I also suggest you proceed with great caution and healthy skepticism if you decide to work with a company that merely provides a marketing feasibility study, but which does not represent you in an attorney-client relationship, and to discuss the same with your patent attorney.

Please contact me at your earliest convenience to discuss the services you may need to address your concern.
Answer Applies to: Ohio
Replied: 12/14/2010
Law Offices of Daniel Richardson
Law Offices of Daniel Richardson | Daniel R. Richardson
The only protection for an idea is a contract of confidentiality, often referred to as a non-disclosure agreement.
Answer Applies to: California
Replied: 12/9/2010
Devon & Associates
Devon & Associates | Marcia A. Devon
I would need more information to provide you with a complete answer, but based on what you have stated, you should consider using a Confidential Disclosure Agreement.
Answer Applies to: California
Replied: 12/9/2010
Mark S. Hubert PC
Mark S. Hubert PC | Mark Hubert
Use a confidential disclosure form.
Answer Applies to: Oregon
Replied: 12/9/2010
Fish & Associates, PC
Fish & Associates, PC | Robert D. Fish
The short answer is yes. Once you do a market feasibility study, its likely that the cat will get out of the bag. If that happens before you get an application on file, disclosures made during the study (1) may destroy patentability in most foreign countries, (2) start the one-year window ticking for filing in the US, and (2) increase the possibility that someone else will file on your invention before you do.

Note that you don't need to file a full blown utility application. You can file a relatively inexpensive provisional application. You can do that yourself or have an attorney/agent help out. But remember, for a provisional to provide an effective priority date to a subsequent utility, the provisional must satisfy the enablement, best mode, and written description requirements.
Answer Applies to: California
Replied: 12/9/2010
    Young Basile
    Young Basile | Denise Glassmeyer
    What issues should I be worried about if I hire a company to do a marketing feasibility study prior to filing a patent application?

    1. Public disclosure - an inventor has one year from any public disclosure to file a patent application in the United Sates or Canada. If more than one year elapses, the inventor will be barred by statue from receiving a valid and enforceable patent. The US and Canada are the most liberal in this matter. Many countries and jurisdiction require filing prior to any public disclosure. Check with your attorney for more details.

    2. Independent development - the US is a first to invent country. However the process for resolving contested inventorship can be very costly. Being the senior application on file is very desirable.

    3. Scope of claim coverage - there are new inventions every day. Every invention is potential prior art that can limit the scope of the claims in your invention. If your invention is in a "hot" technology, you may want to consider establishing that priority date prior to market feasibility.

    Ask your patent attorney to provide you with advice specific to your situation. In the meantime read up on provisional patent applications at
    Answer Applies to: Michigan
    Replied: 12/9/2010
    Handal & Morofsky LLC
    Handal & Morofsky LLC | Anthony H. Handal
    The best thing you can do is to file a patent application, if that is appropriate for the subject matter of your idea. However, if disclosure will be limited, a well drafted confidentiality agreement will also protect you.
    Answer Applies to: New York
    Replied: 12/8/2010
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