What can I do if a manufacturer is producing that same basic idea that I showed him? 11 Answers as of November 14, 2013

I designed and built a prototype of an idea I had. I took it out and tested the idea. It worked well. I presented it to a manufacturer and he said no. Now, that same manufacturer is producing that same basic idea that I showed him. I tried to protect myself by taking pictures of the product and mailing them back to me USPS Registered Mail. I still have the envelope and it is still sealed. What options do I have? None of the other manufacturers are using this idea. There are at least 4 manufacturers in this industry and only 1 is producing this option and it is the only manufacturer I talked to. Thank you!

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Mark S. Hubert PC
Mark S. Hubert PC | Mark Hubert
Well, if it has been less than a year since you disclosed your prototype, you should run out and file a patent on it ASAP. Otherwise, if you were foolish enough to show your prototype to a manufactures without first having intellectual property protection (such as having a patent application filed) and without getting a non-disclosure/confidentiality agreement signed, then you are out of luck. Yes, he stole your idea but remember you cant own ideas. What exactly was the photograph supposed to do? Show you were the first to invent? So what. You did nothing with your invention. We are a first to file system. You lose! It would appear that you didn't want to file for any patent protection and yet now you want some. Unfortunately taking a picture is a good exercise for a photographer but a lousy way to protect your inventions. If everyone could protect their inventions by taking a picture then who would ever apply for a patent?
Answer Applies to: Oregon
Replied: 11/14/2013
Banner & Witcoff, Ltd. | Ernie Linek
Not much - but learn from your mistake. Your registered mail item is essentially useless. You needed to file a patent application on your idea - at least a provisional application before you showed the device to anyone. Now it may be too late for you to file an application - but you should consult a patent attorney to be sure. Did you have a non-disclosure agreement with the manufacturer? If not, again, that was a mistake.
Answer Applies to: Massachusetts
Replied: 11/14/2013
Eminent IP, P.C.
Eminent IP, P.C. | Paul C. Oestreich
Unfortunately, from the facts presented, you may have no recourse. If the concept was patentable, you should have filed for a patent application at the earliest possible time. At the very least, you should have approached your manufacturer with a nondisclosure agreement for the express purpose of giving you an action in contract if there was a breach of the agreement and to avoid a public disclosure. Finally, if the concept and prototype that you developed is already known and dedicated to the public, *i.e.*, there are no enforceable patent on the device, then everyone is free to make, use and sell the device. Under the America Invents Act, the first to file a patent application will own the rights to the invention. Your evidence of prior invention, *i.e.*, photographs mailed to yourself, might prevent the manufacturer from getting a patent on your invention, because you can show he derived the invention from your presentation of the invention. But, it does nothing more. Under U.S. law, you have only one year from any public disclosure of the invention to file a patent application. Your presentation to the manufacturer, in the absence of a nondisclosure agreement is a public disclosure. Additionally, the manufacturer making and selling the item is a public disclosure. So, if either of those two disclosures exceed more than one year ago, it is too late to seek patent rights. As always, you should seek the advice of competent patent counsel to fully explore your fact scenario and possible recourse, and the earlier the better.
Answer Applies to: Utah
Replied: 11/14/2013
Michael M. Ahmadshahi
Michael M. Ahmadshahi | Michael M. Ahmadshahi, Ph.D., Esq.
Your problem is a bit complex due to the recent change in U.S. patent laws. An attorney should review your situations because it's important to know when the events took place in relation to the date when pertinent parts of the law changed, i.e., March 16, 2013. If your idea is indeed patentable, then you should file a patent application as soon as possible.
Answer Applies to: California
Replied: 11/14/2013
Law Office of Kirk Buhler
Law Office of Kirk Buhler | Kirk A Buhler
In order to get some restitution you must have an issued valid patent that is enforceable against the manufacturer. The patent office currently operates on a "First to File" basis for patent. Mailing pictures of the invention to yourself has no value. You must file a patent application. You should contact a local patent attorney or patent agent to evaluate your idea.
Answer Applies to: California
Replied: 11/14/2013
    Sebby Law Office
    Sebby Law Office | Jayne Sebby
    If you didn't get a written nondisclosure from the manufacturer you showed your idea to, you're going to have to prove that the manufacturer deliberately used your idea after you showed it to him and didn't come up with a similar idea on his own. FYI, mailing evidence of your invention to yourself does not provide any protection against others stealing your idea. It can only provide evidence of the approximate date you developed your idea.
    Answer Applies to: Nebraska
    Replied: 11/14/2013
    Tran & Associates | Bao Tran
    You should have patented it first. PowerPatent has a patent software called ProvisionalBuilder(R) that automatically searches for similar ideas. As you enter the title and summary, the software runs an automatic search to suggest similar patents you should look at to see how similar patents are written. You should get patent application as soon as you can to prevent others from copying you. This is important as we move into the First to File era. Software costs $99 so it is inexpensive yet guides you to prepare a high quality patent application that one year later you can turn to a lawyer to convert into a utility application for you. A feature summary is at http://www.powerpatent.com/prwelcome THe software helps you organize information, and through your summary description, brings back sample patents in the same field for you to use as examples.
    Answer Applies to: California
    Replied: 11/14/2013
    Gerald R. Black, Esq.
    Gerald R. Black, Esq. | Gerald R. Black
    If the manufacturer signed a nondisclosure agreement with you, he may be liable for breach of contract. Absent a nondisclosure agreement, you sending a manufacturer a proposal for new technology does not bind the manufacturer regarding its use or nonuse. And, there is always the chance that the manufacturer was developing your technology when he received your package. A sealed envelope provides proof of the date of invention but is otherwise ineffective as to protecting the rights to your technology. The Patent System is the best way to protect inventions. You may still be able to file and protect your technology in the U.S. by filing a U.S. Patent Application. You should seek the assistance of counsel to explore your options.
    Answer Applies to: Michigan
    Replied: 11/14/2013
    DANIEL NESBITT
    DANIEL NESBITT | Hasse & Nesbitt
    Contact and work with a patent attorney to outline your options and the costs associated with them.
    Answer Applies to: Ohio
    Replied: 11/13/2013
    Microtechnology Law & Analysis | Daniel Flamm
    This is a tough situation for you. A letter mailed to yourself without more is no protection against copying. You should not have disclosed anything without having at least a prior written agreement with the manufacturer, such as a nondisclosure agreement. Furthermore, US patent priority has recently changed to a first to file system. If the manufacturer has not filed a patent application, you may still be able to file one, provided it is still less than one year since your invention was accessible to the public (accessible means- the mfg disclosed it to others without conditions of confidentiality or offered the product for sale). If the manufacturer has filed, you still can file and hope to eventually be granted a patent, provided you can show that the manufacturer derived the invention from your presentation. Even with all this, there remain the questions of whether your ideas were already in the prior art and/or obvious in view of the prior art (e.g. thereby not patentable) and whether the manufacturer derived the product from an independent source, prior to the time of your presentation (in which case there would be no derivation). Apart from these things, you might try to recover based on the manufacturer stealing your trade secret, but it would be necessary to show you did all of the things required to keep your invention a trade secret (and that it was not in the public domain or prior art). You should retain legal counsel if you are considering any of these alternatives. The first thing to do would be to file a patent application right away, providing that your idea was not in public domain or prior art. Please recognize that the suggestions above are very general, are not legal advice, nor are they intended to be any legal advice. The best course of action in your particular situation will depend on many further specific details and facts pertaining to you and your particularized issues. I recommend that you retain an experienced and competent patent attorney to advise you before taking any action.
    Answer Applies to: California
    Replied: 11/13/2013
    Brown & Michaels PC | Michael F. Brown
    Basically, unless you had a contract with the manufacturer, there's nothing you can do. Mailing the idea to yourself is no protection of any sort - the "postal patent" was never effective for anything, and with today's "first to file" law, unless you have something on file their public sale would bar your getting a patent on your idea.
    Answer Applies to: New York
    Replied: 11/13/2013
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