I have an idea that I think is/could be patent-able based on the requirements of patent-ability, but I do not yet know exactly how to make it. For example, I want to add a certain useful feature to a shoe, but do not know the best way to add that feature because I do not work in the manufacturing of shoes.
I believe I have found a company that could develop a prototype for me, but I am worried who would own the idea if they are the one’s adding expertise and deciding the best way to add the feature.
Would a provisional patent with general language about the feature and it’s useful benefit be enough to protect this idea while working with a manufacturer to develop a prototype, or would a specific description of how the shoe with the new feature is made be necessary (which I would not know until after the prototype is developed)?
Provisional patents, in large part, are designed to help the inventor secure their patent priority date while they take their invention from a ‘concept’ to a reality. During this process, you will be interacting with many parties: investors, engineers, developers, manufacturers. All of these parties may be better funded and better equipped than you are to bring your idea to market. Having a provisional patent on file will help ensure that, if anyone is entitled to a patent on your invention, it would be you. This protects you against potential misappropriation of your invention by the parties you engage in helping you bring your idea to market.
That being said, how much do you need to know about actually making your invention for a provisional patent? Well – at the provisional level, you should be able to describe your invention conceptually. You may not know all the tricks, but the requirement is that you describe your concept such that an engineer will be able to derive how to make your invention based on your description. So, as an example, you don’t need to know how to be a programmer to patent a software application – you just need to have an understanding of how the software application what the software application should be built to do.
As another example, you don’t need to be a shoe-maker to patent a new feature/design on a shoe. You just need to describe your concept sufficiently to enable a shoe-maker, when reading your patent description, to make your concept into a reality.
So, I would agree that filing a provisional patent application is very important – and, if you know enough about your invention to describe it to someone who has the means to build it, then you have enough information for a patent application filing.
I will also add that it’s important that you should have good agreements in place with the manufactures/engineers during your work with them in creating your invention. Even if you have a patent filing, you make sure that these manufactures/engineers sign IP Assignment agreements. These agreements require the people you work with to transfer their IP rights to any contributions they may make to your patent-pending invention during their work for you.
If you are interested in more detail related to your situation it is best to speak with an attorney.
Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.
Source: Smartup Legal