By Jean Sinon and Madeline Messa
For aspiring entrepreneurs and inventors, coming up with a new product, or innovation is exciting. While considering commercial prospects, there are a myriad of issues to consider. The early-stage research offered by the ILC looks at the prior art relevant to patentability and freedom to operate, relevant regulations, and market information useful to considering next steps. Seeking out the ILC about obtaining this free, NYSTAR-sponsored research starts with completing an intake form and setting up a meeting with the ILC. The following are a few caveats to keep in mind at the early stage of development:
- Make Sure to Not Publicly Disclose Your Invention
While patents are not the only way to protect intellectual property, they are a very popular method. When a non-provisional patent application is made, it is reviewed by a patent examiner who completes research to determine if the invention was already publicly known before the application was filed. He or she searches for what is known as prior art. Prior art includes patent references, publications, and existing products that fit the technology’s description. When prior art is found, it indicates that a claimed invention already exists in some form. Prior art might anticipate the invention, can affect patentability prospects, and may affect the ability to practice the invention.
A public disclosure of the invention made by, or that originated from, the inventor or a joint inventor more than one year prior to filing a patent application for the invention is also prior art and will preclude patenting.1
Unfortunately, the ILC has seen cases where a client seeks patent protection for an innovative invention but is disappointed to learn that they cannot obtain it because of prior disclosure. For example, an inventor might have published a paper detailing the technology years before.
One of the best tools to protect inventions from public disclosure are non-disclosure agreements (NDAs). NDAs are legally enforceable contracts that create a confidential relationship between two parties, one of which is disclosing sensitive information, and the other receiving said information. The party receiving the information agrees that any sensitive information they may obtain will not be made available to others.
- Your Invention Should Be More Than a Mere Idea
The ILC works both with inventors who have reduced their ideas to practice and those who are in the earlier stages of creation. However, the ILC requires that inventors interested in a meeting have more than a nebulous idea or concept in mind. Inventors should have the key aspects of their technology planned out before working with the ILC.
Otherwise, the ILC may not have enough information to complete useful research with – and nor would a patent examiner down the line. In later stages, when an inventor applies for a patent, the invention must be described in a sufficient and enabling manner.
The ILC strongly prefers to work with inventions that have been reduced to practice – embodied in some form, at least as a prototype. This is because our research relates to the invention at the stage it is presented to us; If an inventor still has problems to solve, any changes they make to their invention to address them would not be reflected in our research.
By waiting until they have determined all key aspects of their invention before approaching the ILC, inventors equip us with the information we need to provide accurate and up-to-date analyses.
- Consider What Problem Your Invention Addresses and What is the current Job to be Done
The ILC is able to conduct market research for its clients. Questions like: What is the state of the industry? How would your invention interact with the existing ecosystem? Is this a target market “pull” situation – where the market desperately wants a solution to a problem – or is your invention so novel that it needs to create a new market altogether?
To address these questions and provide comprehensive insight into potential buyers, licensees, and competitors, the ILC asks inventors to have a sense of their market before approaching us. We want to ensure the research investigates the industry and target market that the inventor finds the most relevant.
The New York I-Corps program is an important resource in providing entrepreneurs with insight into customer discovery and what problem they solve that the marketplace wants to pay for.
- Do a Quick Internet Search of Your Product
To paraphrase ILC resident engineer Dominick Danna, “Sometimes people come to us very excited to with an idea, but then we do a quick Google search and end up finding it on Amazon.”
Just as being aware of what is in the public domain, it is useful to perform a quick Google search of one’s invention or product before setting up a meeting with the ILC.
This can allow a client to get an idea of what exists on the market in a more than just speculative way and thus make an informed decision about whether to continue with their idea as is, alter it, or even abandon it. At the very least, the inventor should be able to articulate how their invention is distinct from other products.
- Be Able to Explain Your Invention and How it Functions to a Child
Consider this popular Einstein quote: “If you can’t explain it simply, you don’t understand it well enough.”
Even with the most complex ideas, clarity and completeness in the explanation of a proposed technology, idea, or product is crucial to the ILC’s work.
To do a proper patent and prior art search and market analysis, we depend on a full and proper understanding of a client’s technology. This also increases the efficiency and depth of our research, which in turn leads to more accurate reports than would otherwise be possible.
Developing a succinct and thorough explanation is also useful when applying for funding, meeting with potential licensees and investors.