Category: Invention Help

I often get calls from inventors who tell me they have been working with an invention submission company. Unfortunately, by the time these inventors call me, they have spent thousands of dollars, and have little to show for it. Worse yet, sometimes these inventors are stuck in contracts with the inventor submission companies that limit what they are able to do with their invention. And usually there is little I can do to help them at this point.

There are a lot of people out there claiming to be “experts” when it comes to your invention. Unfortunately, a lot of these are scams. So-called Invention Submission Companies promise to take your invention to industry and make you rich. But many of them just want your money. And when you stop paying, suddenly the InventionSubmission Company is no longer interested in your invention. Or if your invention is a success, they want a cut of your profits.

I recommend working with a patent attorney. If you are considering working with an invention submission company, at the very least you should first check what others have to say before working with an invention submission company. Click here to read published complaints against invention submission companies posted on the U.S. Patent Office website.

A patent or patent application for your invention is a property right. Yes, even while your patent application is pending, before the patent issues, you have a property right in your invention.

You can choose to keep the rights to your invention for yourself. Or you can license some or all of the rights to your invention to someone else (typically to a company). Or you can assign the rights to your invention to someone else (again, typically to a company).

A simple way of thinking of licensing versus assigning is to think of real property. Say for example you buy a condo. You have a property right in that condo, just like you have a property right in a patent or patent application for your invention. The right exclude others from making, using, or selling your invention once the patent issues.

Just like you can rent your condo to someone else, you can license your patent or patent application to someone else. The license allows someone else (the “licensee”) to have rights to your invention in exchange for a fee (called a “royalty”), which is typically a percentage of the profits and may be paid to you monthly, quarterly, annually, or on some other basis. Just like the person renting your condo pays you rent.

And just like you can sell your condo to someone else, you can sell your patent application to someone else (by an “assignment”). The assignment transfers rights to your invention to someone else (the “assignee”) for a purchase price (typically a lump sum payment). Just like the person buying your condo pays you to buy your condo. The assignee is then the owner of your patent or patent application.

Most everyone who comes up with a new idea wants to make money from their idea. There are several ways to make money from an invention. Here are three ways to profit from your invention.

1. Sell your invention direct to the customer. This is perhaps the most obvious way to make money from your invention. You come up with a new invention. You make the invention. You market the invention. Customers buy the invention. You make a profit.

Okay, this is an overly simplistic explanation. In reality, coming up with a new invention is the easy part. Making the invention can be expensive, especially if you are not a manufacturer yourself, and if you don’t have connections with manufacturers in China. Marketing the invention can be hard if you don’t have a background in marketing. And hiring a marketing professional can be expensive, with no guarantee of results.

Even if you clear these hurdles, customers may not buy your invention.

2. Sell your invention to a company. Selling your invention outright is the easiest way to make a guaranteed profit. Some companies do buy inventions from individual inventors. A company may buy your invention to keep their competitors from getting the invention. Other companies may have an interest in making, using, or selling your invention.

Of course, first you have to find a company that is interested in buying your invention. Finding a company to buy your invention will take some effort. Typically it helps if you know someone that works at a company in the same industry as your invention. For example, if you have an invention for a new tool, it would help to know someone that works at a tool manufacturing company.

3. License your invention to a company. Some companies may not be willing to outright buy your invention, but instead offer to license your invention. A license for your invention may include an upfront fee that covers your initial investment, along with a promise to pay you royalties (i.e., a percentage of the profit from selling your invention).

If your invention is a flop in the marketplace, the company may discontinue your product and then you do not make any money. On the other hand, if your invention is wildly successful, you may receive a royalty check for many years to come.

You can make money from your invention, if your invention is something people really want, and if you put in the effort.

Want to get rich fast? Think your idea will make you rich? Think having a patent for your invention will make you rich?

Having a patent will not in and of itself make you rich. Having a great idea that everyone wants might make you rich, if you have a strategy to protect and market your idea.

Many inventors often think that all they need to do is come up with an idea, file a patent application, and companies will be banging on their door offering millions of dollars for the idea. Unfortunately, it doesn’t work this way.

Sure, you may hear of someone coming up with a great idea, filing a patent application, and getting rich. You may also hear about the poor inventor who toiled away for their entire career, came up with a great idea but didn’t protect their invention with a patent, and so companies made millions of dollars from the idea but never paid a single cent to the inventor.

But the reality is that most inventions suffer a different fate. There are thousands of patent applications filed for inventions every year. Some of those inventions never see the light of day. The patent application is filed, the inventor runs out of money, loses interest, or just never bothers to take the initiative to get their idea out in the marketplace. And no one even  knows the idea ever existed.

Don’t let this happen to your invention. Don’t let someone else profit from your idea. Protect your invention by filing a patent application. But don’t stop there. Once you have a patent application pending, get your idea into the marketplace. Market your idea. Either market your idea directly to the customer. Or take your idea to companies that can get it into the marketplace.

And be sure to plan for the future. Set aside some savings so that you can afford to respond to Office Actions on your patent application, pay issue fees, or pay maintenance fees. Don’t lose rights to your invention because you ran out of money.

You do not need to build a prototype of your invention before filing a patent application for your invention with the US Patent Office. You are only required to explain your invention in sufficient detail so as to enable one having ordinary skill in the art to practice your invention.

That means that you have to at least be able to describe your invention sufficiently that someone having experience in that area understands your invention. But you do not need to actually build your invention before filing a patent application.

For example, if your invention is for software (a mobile phone application or “app”), you do not need to be a computer programmer to apply for a patent application for your software invention. You only need to be able to describe to a computer programmer what you want the software to do. But you do not need to know how to write the program code yourself. You do not even need to hire a programmer to write the software for you. Just be able to explain it to a computer programmer who could then write the software code for you based on your explanation without having to figure out how to make it work. If you can do this, you can apply for a patent application for your software invention.

That means you can go invent a mobile phone app, or even a mobile phone itself, an electric car – really just about anything – even if you have no way of making it yourself. You can then file a patent application for your invention even though you have never built, and may never build your invention.

So what are you waiting for? Go invent something!

Did you know you can file a patent application for a design? A design patent application may be filed for the “ornamental appearance” of an item which is unique and nonobvious. The legal term “ornamental appearance” is just a fancy way of saying the overall look or design of an item.

Does this mean you can file a design patent application for the appearance of a lamp? Yes, if the design of the lamp is new and nonobvious. Shoe companies file design patent applications all the time for the look of their athletic footwear. Tire companies file design patent applications all the time for the look of the tread on their tires. Auto manufacturers file design patent applications for the look of their cars and trucks, or parts of their cars and trucks. Electronics manufacturers file design patent applications for the look of their electronic devices.

You don’t have to be one of these major players to file a design patent application. Say for example, you come up with a new design for a garden hose reel. The utility of a garden hose reel is known, so you may not be able to file for a utility patent application unless you have a new way of operating the garden hose reel. But you may be able to apply for a design patent application for the appearance of the garden hose reel.

Some inventions may be protected by utility patent applications, design patent applications, and copyright. Be sure to discuss all available options with your patent attorney for help deciding how best to protect your invention.

A provisional patent application is a patent application that describes your invention in words and optionally with drawings or pictures, and when filed with the United States Patent Office, receives a serial number and a filing date.

On the same day that you file your provisional patent application with the United States Patent Office, you can mark your invention (brochures describing your invention, etc.) with the words “Patent Pending” (or “Pat. Pend.” for short). This is the same as filing a regular patent application. The difference is, a provisional patent application is never examined by the U.S. Patent Office and automatically goes abandoned after one year from the filing date.

Why then, you might ask, should I file a provisional patent application, if it is simply going to go abandoned after one year? There are a number of reasons you may want to file a provisional patent application instead of a regular patent application. Your patent attorney should discuss these with you so that you are comfortable making an informed decision for proceeding to protect your invention.

You might also be interested reading . . .

“Why won’t my patent attorney file a provisional patent application?”

“Top 5 reasons to file a provisional patent application.”

“Top 5 reasons NOT to file a provisional patent application.“

You probably already know that patents can give you an edge over competitors by preventing others from exploiting your developments. But did you know that patents can also be used as a negotiating tool, as collateral for financing, as value-added when seeking support from investors, as a marketing tool, and much more?

Patent protection may be available for a new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement. Patent protection is not available for abstract ideas, laws of nature (e.g., laws of gravity), and natural phenomena. Patent protection may be available for your business methods, software, and improvements to existing technologies.

Once a patent application is filed with the US Patent Office, you can mark your invention as “Patent Pending” or “Pat. Pend.” to discourage potential infringers.

Here are some common pitfalls to avoid . . .

• Failing to file a US patent application within one year of any public disclosure, public use, publication, sale or offer for sale of your invention.

• Failing to file a priority application for foreign filing prior to any public disclosure.

• Failing to adequately describe your invention.

• Failing to adequately claim your invention.

What should you do to protect your invention? First, talk to a patent attorney. A patent attorney can help you evaluate your invention and help you determine what type of protection might be available. For example, a patent attorney might order a prior art search to help you identify aspects of your invention that are truly unique in view of what has already been done (this is called the “prior art”).

If you believe your invention is sufficiently unique over the prior art, a patent attorney can also help you apply for a patent, including preparing and filing the patent application in the US Patent Office, responding to examiner rejections, and appealing the examiner’s decisions when necessary.

A patent attorney can also work with associates in foreign countries to help secure patent rights in other countries.

Once you’ve filed a patent application, a patent attorney can help you negotiate licenses and sales of your invention.

But don’t delay. There are certain events that trigger a loss of rights, called “bar dates”. If you are planning to, or have already publicly disclosed, publicly used, published, sold or offered for sale your invention, you must contact a patent attorney immediately in order to avoid losing important legal rights.

 

I am often asked whether a prior art search is required for your invention before you can file a patent application. The short answer is No. A prior art search for your invention is not required in order to file a patent application with the US Patent Office.

There is an affirmative duty to disclose to the US Patent Office any information you have or that you are aware of which is pertinent to patentability of your invention. So for example, if you are aware of a product that is similar to (albeit not the same as) your invention, you are required to disclose this to the US Patent Office.

But the duty to disclose prior art to the US Patent Office is not a requirement that you actively conduct any sort of prior art search for your invention prior to filing your patent application.

Still, here are 3 good reasons for getting a prior art search before you file a patent application for your invention.

1. A prior art search may save you money. We all like to save money. There are millions of people in this world, and many millions more who have gone before you. Most of those people have had ideas, so the chances are pretty good that they’ve had an idea that is the same or similar to your idea. So before you go out and spend thousands of dollars filing a patent application, you should at least check to make sure that the idea hasn’t already been put out there by someone else.

2. A prior art search may give you more ideas or better ideas. Even if your idea is entirely new and has never been done before, a good prior art search should turn up at least a few results that are somewhat related to your field of invention. You may get ideas that help make your invention more marketable. For example, you may want to enhance your invention (to show just how much better your idea is), change your invention (to overcome a problem that you had not thought of before), or add to your invention (making it useful to a larger audience).

3. A prior art search may result in a better patent application for your invention. By knowing specifically what the unique features of your invention are, your patent attorney can write a stronger, more robust patent application. The patent application can clearly state what is better about your invention over what has gone before. Thus, your patent application has a better chance of distinguishing over the prior art when it is examined by the US Patent Office, and there is less chance of your patent application being rejected.

A prior art search doesn’t have to be expensive. Talk to your patent attorney about different options that might be available for your particular invention within your budget.

 

I am often asked the question “Will my U.S. patent application protect my invention throughout the world?” The answer is No. U.S. patents are only valid in the United States.

However, if you are granted a U.S. patent for your invention, that U.S. patent can be used to stop others from making, using, or selling an infringing product in the U.S. and from importing an infringing product into the U.S.

A U.S. patent will not, however, offer any protection of your invention entirely outside of the U.S. For example, a U.S. patent will not prevent others from making, using, and selling your invention in Europe, China, Japan, and so on. For that, you will need a patent issued by the foreign country’s patent office (e.g., the European Patent Office for members of the EU).

This question is usually followed by “Should I file patent applications outside of the United States?”

I never answer that you shouldn’t file a foreign patent application. But consider this:

1. What is the market for your invention? The U.S. market is one of the largest markets, if not THE LARGEST MARKET, in the world for most inventions. If you can corner the U.S. market, you’re likely going to do very well.

2. Foreign patent applications are expensive. If that’s not enough for you, then you will need to file in one or more countries outside of the U.S. These filings can be expensive – just to file a patent application in another country can cost thousands of dollars in foreign attorney fees, foreign government fees, and translation costs. Not to mention having to argue your case in a foreign patent office, and then pay issue fees to the foreign patent office.

3. Are you willing to enforce your patent outside of the United States? Foreign patents are hard for individuals and small businesses to enforce. Even if you have an issued patent in another country, you’ll have to police it. That is, you’ll have to find infringers in that other country. Then you’ll have to hire a foreign attorney to go after the infringer. Even if you win your case, you’ll have to collect your judgment, which likely means hiring a foreign collection agency.

If you’re considering filing foreign patent applications, keep in mind that most foreign patent offices have an absolute novelty requirement. That is, you cannot publicly disclose your invention at all prior to filing a foreign patent application. Contact a patent attorney right away for more information about foreign filing.