SO YOU'VE INVENTED AN AMAZING NEW PRODUCT--
an informal guide to inventions and patenting

by Kenneth Gural
PATENTEC

IT'S AN INCREDIBLE IDEA

Your idea is an incredible invention that everyone will want to buy. It's certainly novel, because it is not available in any stores. It's hard to imagine why no one thought of this before.

Inventions do not occur in a vacuum, but arise out of need. If a need exists, someone will fill it. In most cases, more than one person will fill it, and multiple solutions will be invented, some better than others. It is extremely unlikely that you are the first to contemplate your solution or something similar to it. The more wonderful the invention and the more simply it can be made, the more likely it has already been thought of.

I NEED TO GET A PATENT ON IT

I need to get a patent on it to protect my idea.

Ideas are not patentable. Only manifestations of the idea in terms of actual machinery and products, specific manufacturing steps, etc. are patentable (and only in certain fields). And only if the invention is new and novel.

If your intent is to manufacture the invention, you need not get a patent on it. You can proceed happily to manufacture it [1]. If your intent is to manufacture the invention and to try to keep other people from manufacturing it, you do need a patent [2]. If your intent is to try to interest a name-brand corporation in buying your invention because it is such a good idea, then you will generally need to get a patent, because most corporations will not speak with you until you obtain one-- and even then they probably won't speak with you. However, patents can be expensive. Typical fees are (2009 rates):

 
US Government fees (for individual inventors): 
 
   filing, search & examination fees   545.00
   issue fee                          755.00
   1st maintenance fee (3.5 years)     490.00
   2nd maintenance fee (7.5 years)   1,240.00
   3rd maintenance fee (11.5 years)  2,055.00
 
   Total US Government fees         $5,085.00
 
Attorneys/Agents fees (typical):
 
   patent search                       400.00 - 600.00
   preparing application             1,500.00 - 4,000.00
   preparing drawings                  200.00
   amendments                        1,000.00
   
   Total attorneys, agents fees     $3,100.00 - 5,800.00
 
Total Cost range for approx. 17 years of patent coverage: $8,000.00 - 11,000.00

Remember, US utility patents expire after 20 years from the date of filing the application (typically 17 years from the issue date).

Let's assume you've spent all of this money and have successfully obtained a patent. You are now happily manufacturing and selling the invention. You are making lots of money from it. Of course, you've built a large manufacturing facility to produce the invention. This was all accomplished within a few years from the date of issuing the patent, because otherwise, your patent monopoly of 20 years from filing date would already have expired. Your product has become quite successful, and therefore immediately there are 10 companies copying your product and selling it. Now what?

Now you need to sue them. This is where the big bucks come in. Your patent does not in any way prohibit others from making, using or selling the invention, unless you sue them. Do you have the financial resources to confront the legal rotweilers at Big Name Corp.? Will your case be sufficiently strong that a law firm will be willing to undertake it on a contingency basis (while keeping 30% of possible proceeds)? Can you withstand incessant legal delay after legal delay?

Or, you decided to get a patent in order to try to interest a name-brand company to buy your invention. Did you know that most companies are not interested in receiving outside suggestions, because chances are that one of their engineers has already mentioned the same thing somewhere in one of his notebooks, and they don't want to split the potential revenues with you? Are you prepared to wear your shoe leather thin going from company to company in search of the one company that will be open to outside suggestions?

I CAN'T TELL ANYONE MY INVENTION, BECAUSE IT IS SUCH A GREAT IDEA

My idea is so fresh and wonderful that mere mention of it will immediately “spill the beans” and cause other people to rush out and patent it themselves.

Alas, usually not so.

Whenever you invent an excitingly new invention, then either--

1) it was well-known 100 years ago, or
2) it doesn't work, and for trivial reasons known to everyone [3].

It is virtually unknown for an excitingly new invention to be both excitingly new and to actually work. Those rare inventions that are actually novel and that actually work are almost always considered by others, including experts, to be impossible or useless. For example, airplanes were considered impossible until the Wright brothers figured out how to do it. Mere mention that you were working on a flying machine in 1890 would not cause others to rush out and beat you to it, because most people would think it-- and you-- were crazy.

By contrast, most inventions are simply minor improvements on already existing products and processes. While an inventor may think his invention is completely original, it often turns out that much of the invention is already in the public domain, unknown to him. In fact, experience seems to prove time and time again that the more an inventor thinks an invention is original, the less likely it actually is. The inventor, starting with an enormous invention before the invention is searched, sadly discovers that the invention is a bare whimper afterwards. But this is not to discourage the inventor, because if it were not for bare whimpers, the US Patent Office would probably cease to exist. So you do not need to worry about discussing the general field of your invention, because most of it is probably already well-known. For example, if your invention is an improved coating for a razor blade, you can talk about razor blades and coatings. Just don't talk about your coating.

HOW CERTAIN ARE YOU THAT YOUR INVENTION WORKS?

Did you actually build a working model of your invention? It looks good on paper, but alas it fails for reasons you did not consider, and for reasons which may be well-known to others.  Are you an expert in the field of your invention [4]? Are you sure that having spent a few hours coming up with the idea (in between watching sitcoms on TV), your extensive knowledge is more powerful than all the engineers at Big Name Corp. who have been studying this same problem for twenty years without finding a solution?

How do you know the invention has never before been considered or documented? How many different baby bottles have you seen? Did you know there are over 500 patented baby bottles? You should be certain to search your invention at the US Patent Office, or have it searched by a professional searching company or law firm. Since the fees for searching are only a fraction of the fees for obtaining the patent, the investment of expense in finding out that the invention is not as extraordinary as originally thought, and maybe in fact deserving of abandonment, may be well worth it. No one wants to discover that their invention baby is stillborn, but it is better to discover it now, before spending large amounts of money and labor in creating the application documents.

DID YOU TELL ANYONE ABOUT YOUR INVENTION?

Did you mention it at a public event? Did you tell ANYONE without also telling them that the idea is proprietary and that you might be filing a patent application on it? Did you publicly use it, or worse, offer it for sale? Rather than worrying about other people running off with your invention (which they will do anyway, if the invention is good enough, whether or not you have a patent), more important is whether you have kept it confidential prior to filing your application.  Under the new US patent laws, any public disclosure prior to filing will void your rights.

If you are concerned about confidentially disclosing the invention to others, you can obtain a NON-DISCLOSURE agreement from them prior to actually disclosing the novel part of the invention.  The Non-Disclosure agreement will mention the general field of the invention and the rights and obligations of both parties under the agreement.  Also, you can document your invention by writing a complete description, including drawings showing how it works.  At the bottom of each page, include dated testimonies by two people qualified to understand the invention (who you trust, and who are not co-inventors of it) that they have “Read and Understood” that page, for example using this format:

Read and Understood _________________________ Date _____________

Read and Understood _________________________ Date _____________

You can also file a PROVISIONAL patent application with the US Patent Office. A provisional application can be much less formal that a standard patent application, and also much less expensive to file.  The provisional application, which is held in confidence by the US Patent Office, will give you one year to further develop the idea prior to filing the formal application, with the advantage that now you have an application officially on file. This means you can disclose the invention to others without worrying about losing your rights to the invention (so long as you definitely file the formal patent application within one year—otherwise the provisional application will go abandoned).  You can even represent the invention as “patent pending”. 

I EXPECT TO MAKE LOTS OF MONEY FROM MY PATENT.

It's a wonderful idea, and everyone will want to buy one.

Inventions that are wonderful ideas are not always accepted immediately. In order to become widely accepted, they need to be manufactured, distributed, promoted with advertising and so forth. Companies that manufacture existing products are already familiar with the entire sequence of steps, from initial conception, to patenting, to manufacturing, to distributing and marketing. They are obviously in a much better position to introduce a new product than a sole inventor working from a house. In addition, the patent clock is ticking during this process. You have only 17 years (roughly) from the date the patent issues to collect royalties or to block others from manufacturing and selling the product. Many of those years may be eaten up by the initial steps of production or marketing. Many a wonderful product has been introduced with tremendous fanfare, only to wither away and die because of lack of response by the consumer. What happened to 8-track tape and beta format video recording?

Every week, hundreds of patents go abandoned before their normal lifetime for failure to pay maintenance fees. The reason is that the inventor gave up trying to manufacture/market his invention and did not want to invest further money in it. Will your patent end up like this? Remember, the current maintenance fees add up to nearly $4000.00.

If you expect to make lots of money by selling your patent to a large company, you should remember that most large companies are not interested in outside suggestions because they do not want to be accused of stealing an outside suggestion by manufacturing a product when one of their engineers came up with the idea earlier. Engineers at large companies are constantly coming up with new ideas and recording them in their notebooks. It is quite possible for an idea to be noted there and sit for a while before being acted on. In addition, there is always a time lag between when an idea is invented and when it reaches a market. Just because Big Name Corp. does not currently produce an item, does not mean they have no plans to or never thought of it.

OK, I UNDERSTAND THE ABOVE, BUT I STILL WANT TO GET A PATENT ANYWAY.

These are the steps you should take:

1. make sure the invention works
2. prepare proper documentation of the invention, including doubly-witnessed description sheets and/or disclosure documents
3. have a patent search done by a professional patent searching company or law firm [5], or do the search yourself [6]
4. engage a Registered Patent Agent or Attorney to prepare the patent application or a provisional patent application.
5. file the application
6. begin the steps of manufacturing of the product, or begin trying to locate an interested company.
7. within one year of filing the provisional application, make sure to file the formal (non-provisional) application.

PATENTEC and other reputable search/agent firms can assist you in performing steps 3-5 and 6. We specialize in advanced technologies, but provide the same detailed attention to down-to-earth technologies as well. Please feel free to contact us for any further information.

Kenneth Gural
PATENTEC
patentec@patentec.com
http://www.patentec.com

© Copyright 1996-2015 PATENTEC


Footnotes

[1] If you blindly manufacture something, you may be in danger of infringing someone else's patent and therefore being sued by them. But in that case, obtaining a patent would be no guarantee that you won't be sued. It is quite possible to own a patent on a product, and still be sued for manufacturing it based on a more primitive patent. For example, if your invention is a triangular steering wheel, you could still be sued by someone owning a patent on the basic steering wheel (were it not for the fact that it would already have expired long ago).

[2] Patents are not the only way to keep others from manufacturing your invention. Trade secrets and trademarks can also block others from manufacturing. In a trade secret, you keep crucial aspects of your invention secret so that others cannot copy it. The classic example of this (no pun intended) is Coca Cola. In a trademark, the trademark is so highly recognized and accepted that no one wants to buy any other brand, even if it is identical in quality.

[3] Known affectionately as “Gural's Law of Invention”. Otherwise stated: There's nothing new under the sun.

[4] This is not necessarily an academic expert. For example, a mother of six might be quite an expert about baby bottles.

[5] Professional patent searching companies and law firms generally differ from “invention companies”, in that professional companies want to prove that the inventor has nothing new, while the invention companies want to prove that the inventor does have something new, in order to receive additional business in the form of patent applications.

[6] While it is useful and instructive for an inventor to perform a patent search, in that the inventor can learn a lot about the field of the invention, it is also dangerous to rely on negative results of such a search. After all, the inventor really does not want to find the invention. Patent searching can also be difficult due to quirks in the patent classification system or online databases.