Category: Invention Help

You have an idea, and you think its going to be the next big thing. If only you could find someone with the manufacturing and marketing expertise to get your invention in front of customers. Ideally, you’d like to get your invention on the shelves at Walmart or Home Depot, so you can makes tons of money for doing nothing and retire to the Caribbean.

Of course, you file a patent application so that no one else can take your idea. Then you sit there and wait for an investor or mega-retailer to approach you. Unfortunately, this tact rarely works.

Let’s say you find an investor and ask if the investor would like to license your invention. You supply the idea, and the investor does all the rest. Of course you only take a small cut of the profits. What are the first questions the investor is going to ask?

Conversation with a potential investor. Have you protected your idea? Answer: no, I was hoping you would pay for a patent application. Have you made the product? Answer: no. How do you know that your idea will even work if you haven’t made the product? Answer: it should work. Is there a market for your product? Answer: I think so, because everyone I tell about my idea says they like it. Just because your family and friends say they like your idea, does not mean there is a market for the product.

Bottom line, if you’re unwilling to invest any time or money, or take any risk with your idea, why should an investor be willing to do so?

Another conversation with a potential investor. I did a patent search for my invention. There doesn’t appear to be anything like it in the market. I applied for a provisional patent application, so I have patent pending status and its going to be hard for anyone else to compete once I finish the patent process and have an issued patent. I built several prototypes of my invention, based on feedback from focus groups. I took the best prototype and made a product, which sold out on my website in less than a week. Conservative estimates based on these actual sales indicate that an investment of X dollars should result in a return of Y% within the first year. Investor: this sounds like a great opportunity. Let’s talk about an investment or licensing deal.

All too often, inventors come up with great ideas and fail to pursue their ideas through to fruition. Not because the invention itself is a bad idea. But because they just don’t want to put the time and effort, or risk any money to take their invention out into the marketplace. Remember the old adage – nothing risked is nothing gained.

It’s not uncommon for an inventor to think that there is nothing like their invention on the market already. This is probably because the inventor has just come up with this idea and has not seen anything similar since coming up with the idea.

But the reality is, that there is often something else already out there that is at least similar, if not the same as the inventor’s idea. This is why I always urge inventors to do a prior art search before investing a lot of time and money on their invention.

There are several fairly straightforward (and inexpensive) strategies an inventor can use to find out if their idea already exists.

A good place to start is with a general Internet search (Google, Bing, Yahoo). Try to be as descriptive of your invention as possible when choosing your keywords (without being overly narrow so that you miss relevant ideas).

Next, check with online retailers who sell related product lines. Check Amazon.com and other online retailers. If your idea is for a specialty product, check with specialty retailers. For example, if your idea is for an electrician’s tool, check with electrician suppliers.

If you don’t find your product online, try heading down to your local department store, and ask the salesperson where they carry products that are similar to your idea (but don’t tell the salesperson what your idea is!). Then browse that section of the store. You might be surprised what someone else has already thought of. You may just have never seen it, because, well, you weren’t looking until you had this idea!

If you still can’t find anything like your idea, either online or in stores, you can try heading over to the US Patent Office website. The US Patent Office has a free online database of all patents ever issued (yes, all the way back to 1790), and all patent applications published since 2001. Developing a good search strategy using the US Patent Office databases can be tricky. Don’t spend too much time here.

Instead, hire a patent attorney to do a patentability search and analysis for you. Often when I provide the search results to a client, the inventor says “I didn’t realize there were already so many products so similar to mine.”

That’s why we do the prior art search. It’s better to find out that your idea already exists before you spend too much money filing a patent application for your invention with the US Patent Office, only to have your patent application rejected because someone else already had your idea.

Welcome to the virtual consultation on patents. Some patent attorneys offer inventors free consultations, during which they go over some of the basics for protecting an inventor’s invention. This consultation goes over some of those basics – so that when you meet with a patent attorney, you can skip over the basics and get right to the heart of your invention. Please note that this consultation is only intended as general information and not as legal advice. Let’s get started . . .

Are there any deadlines for filing a patent application? There are certain dates that trigger deadlines for filing a patent application, call “bar dates.” In the United States, you have one year from the date of first public disclosure, public use, publication, sale or offer for sale of your invention, in which to file at least a provisional patent application, or you will be forever barred (hence the term “bar date”), or prohibited by law, from filing a patent application for your invention.

Do I need a prior art search before filing a patent application? A prior art search is not required before filing a patent application for your invention. The US Patent Office will conduct their own search regardless of whether you do your own prior art search. But you may still want to consider doing a prior art search to find out what is out there that might be the same or similar to the invention. The prior art search can give you a better idea of the state of the art related to your invention. In some cases, the prior art search turns up references that are the same as, or so similar to your invention. If this is the case, you may decide not file a patent application for your invention and you’ve just saved yourself thousands of dollars!

What is a provisional application for my invention? A provisional patent application can be filed in the US Patent Office for your invention, and will be pending for exactly one year from the date of filing. Provisional patent applications are never examined by the U.S. Patent Office. But you may mark your invention as “Patent Pending” or “Pat. Pend.” during this time. A provisional patent application automatically goes abandoned after one year from the date of filing. Therefore, you must file a regular patent application claiming priority to your provisional patent application before the one year expires. A regular patent application will be examined by the U.S. Patent Office.

Does a patent application protect my invention? Just because you file a patent application, does not mean that you can enforce it against infringers. First, your patent application must be examined and allowed to issue as a patent before you can enforce your patent against infringers.

How long will it take for my patent to issue? The US Patent Office typically takes 1-3 years (sometimes longer) before they examine your patent application. But there is nothing preventing you from licensing or selling rights in your patent application or from selling the product of your invention.

Does a US patent protect my invention in foreign countries? A US patent does not offer any protection for your invention outside of the United States. If you want to pursue protection your invention outside of the United States, then you will need to file a patent application in the particular country or countries of interest, or a PCT patent application.

What other types of protection are available ? You may also want to discuss other types of intellectual property protection with your patent attorney, including but not limited to, design patents, copyrights, trademarks, and trade secret protection.

I hope that this “consultation” has been informative. Please remember that this is not a substitute for legal counsel. Don’t delay in hiring a patent attorney to help you with your invention . . . or you risk losing important legal rights!

There are three different questions here. Let’s take each question in turn.

1) Does the Patent Office examine provisional patent applications? No, the Patent Office does not examine provisional patent applications. Provisional patent applications for inventions automatically go abandoned after one (1) year unless you file a regular patent application claiming priority to the provisional application within that one (1) year. Be careful and don’t miss this deadline, or you may lose rights to your invention!

2) How long does it take before the Patent Office will examine my patent application? If you file a regular patent application, the Patent Office typically picks these up for examination in about 18 months to 2 years. However, I have seen patent applications pending in the Patent Office for longer than this. The time to examination for a patent application depends on the backlog of other applications at the Patent Office. Typically I will submit a status request with the Patent Office after about 3 years, inquiring when the examiner plans to examine the application, just to make sure the patent application hasn’t fallen through the cracks.

3) When will my patent application issue as a patent? After the Patent Office examines your patent application, the examiner may issue objections and/or rejections. You have an opportunity to address these objections and/or rejections and argue why your patent application should be allowed to issue as a patent. Even after the Patent Office allows your patent application, there are issue fees to pay, and then your patent application goes to the publication division before your patent application issues as a patent. Therefore, predicting an actual issue date for a patent application is nearly impossible.

However, it is important to keep in mind that as soon as you file either a provisional patent application or regular patent application with the Patent Office, you do have “Patent Pending” status, which lasts until you either abandon your patent application, or your patent application issues as a patent. Patent Pending status can be valuable as a marketing tool and may serve as a deterrent for others to infringe your product.

The idea of inventing during a bad economy might sound like a recipe for disaster. After all, who has the money to invest in new products. And if you’re unemployed, shouldn’t you be spending your time trying to find a job instead of spending time and money pursuing an invention that may be a flop?

While those are valid concerns, there are many more reasons to pursue your invention in a bad economy. Here are a few reasons for inventing in a bad economy.

1. New ideas stand out in a bad economy. In boom times, it seemed like everyone had a new product or service to offer. Everywhere you turned, someone was telling you how their product or service was better than anything you’ve ever seen before. Businesses figured that if they invested in a new idea and it failed, they could move onto the next new idea with little consequence. Now with the economy staggering, people are afraid to invest in new ideas. They’re afraid to try anything new, and instead they want to stick with the tried-and-true until the economy improves. As a result, there isn’t much new on the market. So if you have a new idea, now is the time to get it out there – when your idea will stand out from the competition.

2. Businesses are always trying to improve their bottom line, but especially in a down economy. If your invention can help a company realize substantial savings, either by reducing employee time to accomplish a task, increasing output, or reducing manufacturing costs, companies are going to take notice now more than ever.

3. You may have more time to invent during a down economy. When the economy was booming, you were so busy working that you never had time to pursue your idea. You kept your idea on the back burner, but never had time to test your idea, much less invest the time necessary to bring your product or service to market. If you’re unemployed or under-employed, you may have more time to invent something new, or invest in your new idea. While you may still need to spend some time sending out resumes, this likely isn’t consuming all of your time right now.

These are just some of the reasons why there has never been a better time to pursue your new idea – go out and invent something!

A common question I get is whether someone can patent the use of their idea. Before I can answer this question, we need to be clear on terminology. You cannot patent an “idea”. Your idea must rise to the level of an invention.

What’s the difference? An idea is something more abstract than an invention. For example, it might be your “idea” to have a vehicle that flies to Mars and back in a single day. But if you have no way of actually implementing that idea, then all you have is an “idea” – not an “invention.”

So to answer the question, can I get a patent for my idea, the answer is no, not unless you have an invention.

But what about something more realistic than the space vehicle. For example, can I get a patent for an existing product that does something different or is used for a different purpose. Perhaps . . . if you have somehow modified that product, then you may be able to get a patent for the modification.

This happens all the time with computers. Computers have been around for over 50 years, but patents are issued all the time for “machine readable instructions” (or computer software). Because the software modifies the computer in such a way that is unique, the software rises to the level of being an invention. That is, the computer processor executes the machine readable instructions in a different way than has been done before to cause the computer to perform something new and different. Thus, the software rises to the level of being an invention, even though the software is executed on a computer that is well known.

On the other hand, if your idea is to use a liquid soap dispenser to dispense dish soap instead of hand soap, without any modification to the soap dispenser itself, then this is not an invention. It is simply a different end-use for a product that already exists. Therefore the “idea” of using the soap dispenser for a different purpose does not rise to the level of an “invention” which can be patented.

What is a patent worth? It depends. Some patents are worth a lot of money. Other patents aren’t worth anything. The real value comes from the underlying idea – the invention. If the invention is a million dollar idea, then the patent will be worth a lot. If, on the other hand, the invention isn’t worth much, then the patent won’t be worth much either.

Here are some examples of valuable patents:

1) U.S. Patent No. 174,465 issued to Alexander Graham Bell (1876) is often recognized as the most valuable patent in history.

And more recently . . .

2) During an episode of the ABC realty TV show “SHARK TANK” which aired on March 20, 2011, one of the investors offered $600,000 for the rights to a wine maker’s patent rights for wine sold by the glass. The inventor refused this offer.

3) On April 4, 2011, the AP reported that Google was planning to bid $900 million for a Nortel patent portfolio of 6,000 patents . . . that’s $150,000 for each patent!

Of course there are thousands of patent applications filed every year, and thousands of patents issued on inventions that are totally worthless.

I get calls all the time from inventors who have a great idea . . . but no funding. Sometimes they ask me if I would be willing to take a partial ownership interest in their invention in return for my services. Due to the potential this raises for ethical dilemmas, I always decline such offers.

Some inventors ask if I know of anyone who might be able to help fund their invention. But that’s like asking if I know anyone who would be willing to buy their home. Finding a buyer (or investor) depends on many factors, such as what specifically the idea is and whether that particular buyer (or investor) is willing to fund that sort of an idea.

I did recently, however, come across the following website that offers to connect people with ideas and people with funding. Check out http://www.kickstarter.com. Kickstarter.com claims to be “the largest funding platform for creative projects in the world.” Projects include music, film, art, technology, design, food, publishing and other creative fields. It does not appear that the project be any particular size to qualify.

The good news is that the creator keeps 100% ownership and control over their work. Although I’m not sure what the investor gets in return.

Interestingly, it appears that a project must reach a preset funding goal before time runs out or no money changes hands.

I don’t have any personal experience with this site, and so I can’t endorse this site. But if you are an inventor with a big idea, and no way to fund it, this site might be worth checking into. As with any funding arrangement, be sure you understand all of the consequences before you enter into any agreements. And be careful who you share your idea with, especially if you haven’t already protected it with a patent.

Thinking of writing your own patent application? Here are three (3) things that can get you in big trouble if you decide to write your own patent application.

1. Inadvertent admissions. You might think you’re only being honest when you make statements in your patent application, such as saying that”my invention is simple” or “my invention is a combination of known parts.” But the Examiner at the Patent Office, or a lawyer or judge if your patent is ever challenged in court, could construe these as admissions by the inventor himself (or herself) that there really is no invention and that you are not entitled to a patent.

Another example of an admission you may make when writing your own patent application is saying that “the prior art teaches [fill in the blank].” Now the Examiner does not even have to find a reference that shows this – the Examiner can reject your application based solely on your own admission.

Another example of an admission you may make when writing your own patent application is saying that “my invention is different than the prior art because of [fill in the blank].” Now the Examiner can focus only on this one aspect of your invention and say that you admitted everything else about your invention was already known.

2. Missed deadlines. How tough can it be to file a response by the due date? You’d be surprised. Everything after you file your patent application is deadline driven. Miss one of these by a day, or even a few hours, and you could lose all rights in your patent application.

Here’s an example of a deadline the typical inventor working by his or herself may not be aware of. You must file a regular patent application within one year of the filing date of your provisional patent application if you want to claim priority to your provisional patent application. For example, if you file your provisional patent application on April 5, you must file your regular patent application on or before April 5 the following year. If you file on April 6, your provisional patent application has already gone abandoned and you cannot claim priority to your provisional patent application. You may have lost all rights to your invention.

And filing on April 5 does not mean midnight on April 5 (unless you live in the Eastern time zone). If you live in California, for example, then you must file by 9pm on April 5 (that is, by midnight at the US Patent Office).

3. Including unnecessary limitations in your claims. You want the claims for your invention to be as broad as possible. But if you’re not experienced writing claims, you may inadvertently claim your invention too narrowly.

For purposes of illustration, say your invention is for a chair. [Yes, I know the chair is not an invention . . . at least not today . . . but everyone reading this article knows what a chair is]. You claim your invention as including “four legs, arm rests, and a seat back.” Seems simple enough, and it describes all of your invention. But your competitor simply makes a three-legged chair . . . or a chair without armrests . . . or a stool without a seat back. All of a sudden your patent is worthless, except against anyone who wants to make a chair including “four legs, arm rests, and a seat back.” See how easy it was to screw that up?!

These are just some of the reasons you should not write your own patent application. Leave writing a patent application to an experienced patent attorney, and sleep easy at night.

When you hire a patent attorney to prepare a patent application for your invention, you will often receive what is called an “invention disclosure form.” Different attorneys have different names for this. But in general, patent attorneys use the invention disclosure form to capture all of the important details of your invention. This way, your patent attorney can be sure that nothing is left out of the patent application when they write it up for you.

Before filling out the invention disclosure form, try the following exercises to help make sure you don’t leave out any important aspects of your invention:

Start by making a feature list. What is new about your invention over what has been done before. Include any many features as possible.

Think about all of the advantages of your invention. Try to describe your invention in terms of actual use. What works and what doesn’t work? What works better. Why is your invention better than anything else out there?

Try to describe your invention as a method. Illustrate your invention as a method using block diagrams and flow charts.

Brainstorm some alternatives for every feature of your invention. Consider how someone else might design around your invention and then describe those as alternatives of your own invention, even if you don’t plan to implement your invention that way.

Double check – are there any features you left out? Think of features that customers purchasing your invention might like to see in the future even if these features aren’t going to be available with your invention initially. Include these as alternatives to your own invention.

Remember, it is important that you describe every aspect of your invention to your patent attorney using the invention disclosure form. Try to provide as much detail as possible and describe your invention in such a manner as to enable each feature of your invention. If you don’t tell your patent attorney everything about your invention, your patent attorney has no way of figuring it out, and the patent application he or she writes for your invention may be deficient.

And remember, filling out the invention disclosure form is not the same as filing a patent application for your invention. Therefore, you should continue to maintain your invention in strict confidence at least until your patent attorney notifies you that he or she has filed a patent application for you.