I hope I can get some advice from this great community. Here are the pertinent points of my situation:
1. Me: Established academic researcher with international reputation. The invention is in my own area of expertise. No startup experience. Based in major university, but the city is not a hotbed of technology. The university has a poor track record in IP development, must be bypassed.
2. The invention: unpublished, unpatented, undisclosed. It is a technology invention, about making a (digital) device which will address a serious and documented market need, quite possibly with multibillion dollar implications. The idea is new, based on newly available technology (not developed by me), fairly technical (not likely you'll come up with it) but if I explain it to you in 15 minutes I think you could do it. I have a working prototype.
3. The question: I have a conundrum regarding commercializing the invention while protecting my IP. The idea can be stolen and perhaps a variation of it can be built. I don't have the financial resources to file a comprehensive portfolio of patents to protect it. I also wouldn't have the financial resources to defend the patents in court.
Any advice on how I might move forward?
The Aeolist
As a practicing U.S. patent attorney, I get this question quite a bit. What I usually advise clients is that you should protect your invention, but you shouldn't protect it to DEATH. Your goal is to monetize your invention, and that means selling products or services. You can't sell something without showing it to people, right?
I find the best balance between secrecy and disclosure is to file patent applications for your invention, thereby starting the patent process, and then start the process of developing it, showing it around, etc. Legal work related to patents can be expensive, but you could get a provisional patent application filed for $1,500, which is affordable for most. Enforcement is another issue, which can be costly. But law firms take patent infringement actions on contingency all the time, if you have a good case. This would not cost you a cent.
I hope this helps.
Sincerely, Mark Terry, Esq.