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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 for "Small Entity" status (2017 rates) are:
US Government fees (for "Small Entity" status): filing, search & examination fees 860.00 issue fee 500.00 1st maintenance fee (3.5 years) 800.00 2nd maintenance fee (7.5 years) 1,800.00 3rd maintenance fee (11.5 years) 3,700.00 Total US Government fees $7,660.00 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: $11,000.00 - 13,500.00
You may also qualify for a "Micro Entity" status, in which case your fees are approximately 1/2 of the "Small Entity" rate, but still expensive. Including Attorney/Agent fees, if you file under "Micro Entity" status, it will still cost between $7,000-$10,000 over the lifetime of the patent. Remember, US utility patents expire after only 20 years from the date of filing the application (typically 17 years from the issue date), or earlier if you don't pay the maintenance fees. That's not a lot of time in which to recoup your patent investment.
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 10 companies
pop up, copying your product, selling it, and otherwise blatently trampling all
over your expensive and hard-won patent. Now what?
Now you need to sue them. This is where the big bucks come in, as if you
haven't already spent enough just to get your patent. Your patent
does not in any way prohibit others from making, using or selling the
invention, unless you go after them in the wide realm of litigation.
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 and costly legal actions following legal actions
following legal actions?
Or, you decided to get a patent because you were certain that Big Name Corp.
would immediately buy your invention. But, they won't return your calls, because
they expect that one of their engineers has already mentioned the same thing
somewhere in their notebooks over the years. Are you prepared to wear your shoe leather
thin going from company to company in the hope of finding the one company that is
receptive 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 trivially doesn't work, and for 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 after a pile of similar prior inventions turns up. But this
is not to discourage the inventor, because
if it were not for bare whimpers, the US Patent Office would have very little
to examine, and issues valid patents on bare whimpers all of the time.
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
may void some or all of your rights to the invention.
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 immediately accepted.
First they need to be manufactured, distributed, advertised, perfected,
promoted and so forth. Companies that successfully manufacture existing
products are already familiar with this entire sequence
of steps, and are obviously in a much better position to
introduce a new product than you are, working from your basement, after coming
home from a long day's work, preparing dinner, and doing the laundry. All the
while, your patent clock is ticking. 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. Even when launched by large companies, many inventions
have those years eaten up by the steps of production, marketing,
and consumer acceptance. So many wonderful products have been introduced with
tremendous fanfare, only to wither away and die because of lack of response.
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 throw further
money at it. Will your patent end up like this? Remember, the current
maintenance fees for "Small Entity" status add up to nearly $6,100.00 during
the lifetime of the patent.
Or, was your goal in getting a patent to immediately turn around and sell
it to Big Name Corp., and thereby recover all of your costs and effort? But,
as noted earlier, Big Name Corp. won't even return your calls, because they expect that
one of their engineers has already decribed the same thing somewhere in
their notebooks over the years. Understanding that there is a time lag
between when an idea is invented and when it reaches the market, you should
also recognize that just because Big Name Corp. does not currently sell it,
does not mean they have never thought of it. They won't talk to you, because
they don't want to be accused of stealing something that they may already own.
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 7. 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 1996-2018 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.
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