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BusinessColumnistsJamie Herzlich

Protecting your invention, while finding backers

Put proper safeguards in place to help protect

Put proper safeguards in place to help protect your idea during this process and deter anyone who may want to rip you off, say experts. Photo Credit: AP, 2009

Inventors, by nature, are tight-lipped, and rightfully so. After devoting so much time, energy and often funds into developing an idea, the last thing they want is to have it stolen by someone else.

But sooner or later, if you want a shot at getting your product to market, you need to pitch it to potential investors and licensees.

The key is putting proper safeguards in place to help protect your idea during this process and deter anyone who may want to rip you off, say experts.

"You have to always protect against the worst," says Stephen J. Smirti Jr., a partner in the Intellectual Property and Insurance and Coverage Litigation Practice Groups at the law firm of Rivkin Radler Llp in Uniondale. "The last thing you want to get involved with is buying a lawsuit."

You never know when you'll be called upon to protect your idea, so you must be prepared from the get-go, he says.

 Burden of proof
To start, always keep good documentation throughout the invention process, advises Don Kelly of PatentAgentPlus.com, an Alexandria, Va.-based patent agent and a former chief of staff with the U.S. Patent & Trademark Office.

"An inventor's notebook is ideal," he says. Document important dates and sketches, and include any purchase receipts to establish proof of origination.

Next, you should file a provisional patent application, Kelly adds.

Paper trail
This will establish a date of filing and gives you one year to file for a non-provisional (standard) patent, he explains.

"It's a place holder," Kelly says, adding that it is less expensive then a full patent. The provisional application fee is $110. That compares with $545 for a full patent application, not to mention higher patent agent/attorney fees associated with securing a full patent.

Melville inventor Brian Fried says it is always helpful having "patent pending" status when making a pitch.

"If I'm making an investment in time and money, that's something I can have some protection with," says Fried, founder of the Inventors & Entrepreneurs Club of Suffolk County and author of "You & Your Big Ideas" (WingSpan Press, $12.95).

Non-disclosure agreements can also be helpful, he says. Not every company will agree to sign one, but you can still make the request, says Fried, whose storage seal for plastic bags will air on the QVC shopping channel this spring.

If a company is opposed to signing one, it should be able to provide a good explanation why, Smirti says.

"I would say as a rule of thumb people who are serious about your invention are willing to enter into a confidentiality agreement," he notes.

Proceed with caution
But sometimes inventors get too excited about a potential investment and skip key steps needed to protect themselves, says Terry Morris, a Wheatley Heights inventor.

"When you're new at this, you're trusting and excited, as opposed to being wise," says Morris, who has two products on the market, the Lather Cloth, which on one side is a regular wash cloth and on the other an exfoliating mesh, and the Ultimate Sports Towel, which features a nonslip, antimicrobial backing (see ayleet .com).

Don't take any shortcuts, advises Morris, who once had to send a cease-and-desist letter to a licensee she had pitched to that she later had reason to believe was trying to develop the product behind her back. She had a patent pending on the product, and the licensee stopped.

"Take your time," she says. "If it's meant to be, it will be."

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