The Patent Guide

How You Can Protect and Profit from Patents (Second Edition)

Carl W. Battle, Andrea D. Small

• Publisher: Allworth
• Year: 2018
• Print ISBN: 9781621537007
• eBook ISBN: 9781621536277
• Edition: 2
• Topic: Law
• Subtopic: Intellectual Property Law
• Index: Law

"Recommended." — Library Journal
Coming up with a million-dollar idea is only the first step in what might seem like a long and difficult process. In The Patent Guide, Second Edition, experienced patent attorneys Carl W. Battle and Andrea D. Small deliver basic and comprehensive advice that is easy to understand and will allow you to protect, promote, and profit from your ideas. Chapters discuss such topics as:

• How to commercialize your invention
• Where to find sources of information and assistance
• What guidelines you should follow when obtaining a patent
• How to obtain foreign patent rights
• How to maintain confidentiality of your ideas
• When to use patent attorneys and agents
• How to deal with invention brokers and promotion firms
• How to enforce your patent against infringement
• 
  Fully updated and revised, this new edition includes information on inventor notebooks and records, updates to the patent filing process in the United States and abroad, the latest USPTO forms and templates, and changes to electronic filing and submission procedures. With easy-to-use forms and step-by-step instructions, The Patent Guide is an indispensable tool to help minimize costs and maximize profits of your ideas and inventions.

CHAPTER 1

How to Profit from Your Ideas and Inventions

Do you have an idea to improve something that you know could be made better? Do you want to champion it, but don’t know how? Keep reading. . . . There are several ways in which you can profit from your idea or invention. Realize that there is no magic formula for success with any idea and no certainty that any approach will guarantee your expectations of success. What’s important is that you review and analyze all available options and take steps toward your goal. Your main objective is to realize a financial gain from your idea or invention, not to merely patent, copyright, or trademark it. Keep in mind, however, that protecting your idea or invention can be extremely important to your ability to profit from it.

Don’t fall into the trap of thinking that because you are the first to think of an idea or the first to patent it, you will be guaranteed fame and fortune. Nothing could be further from the truth. Less than 5 percent of all patented inventions make money, and the percentage is even lower for small, independent inventors. Big corporations can spend millions of dollars on research and development before finding a commercial success, whereas the small inventor typically cannot afford to do so.

In order to profit from your invention, you need to develop a plan, be open to changing circumstances, and execute. This is no time for linear thinking, because there is no guaranteed route to success. Therefore, you need to be aware of available avenues to profit from an invention or idea. Look at the merits of manufacturing and marketing the invention yourself, selling or licensing the invention to a large company, or working with a small- or medium-sized company to produce your product, or a combination of all of them.

Once you have decided on which of the options you want to primarily focus on, you will need to consider the following:

• Have you documented your idea?

• Will your invention be profitable?

• What steps should you take to secure legal rights to your idea or invention?

• What are the ways to market and monetize your idea or invention?

Remember to be open to change, because you will encounter unexpected issues that will require you to change your plans. Some of these changes may include people who make other suggestions and/or offers to monetize your invention, changes in the technical field of your invention, changes in the law may either increase or decrease the value of your invention, changes in the market, such as an introduction of new disruptive technology that renders your idea or invention defunct, etc. You need to be nimble enough to change your plan or broaden it to accommodate a changing landscape.

DOCUMENTING YOUR IDEA OR INVENTION

Documentation of your idea or invention is important in protecting your rights. For example, thorough documentation of your invention can be helpful in proving theft of your invention and in avoiding disputes over ownership of the invention. If someone steals your invention, convincing documentary evidence will be the key in showing that you made the invention first and that the other party stole or derived it from you. An inventor often makes an invention while working for a company or is employed by a company after making an invention. In many cases, the company requires the employee to sign an employment agreement giving the company rights to any inventions made during the employment. Even without an employment agreement, a company typically has the right to freely use inventions made by employees on company time or with company resources. Again, proper documentation will be crucial in such cases in proving that the employee made the invention before starting his or her employment or without using company time or resources.

Documenting your idea can be as simple as getting the idea on paper and having it witnessed or as complicated as filing a patent application. You can start simple. Write a description and create a drawing (if applicable) of your idea or invention as soon as you have conceived your idea. Sign and date this documentation and also have it read, signed, and dated by one or more witnesses, who have signed a confidentiality agreement and also did not contribute to the conception of the invention. This documentation can be crucial to prove inventorship and the date thereof, in case of a dispute over who invented the item first. Look to chapter 4 for more details on this topic.

Another way to document your invention and gain some time to evaluate and test it is to file a provisional patent application with the USPTO. A provisional patent application is an abbreviated version of a regular patent application and is useful in establishing an early filing date for a subsequent regular patent application. Filing a provisional patent application is about one-fifth of the cost of a regular application and can save you money upfront. This type of application can be as simple as a power-point presentation describing your invention, along with how to make and how to use your invention. Additional information on filing a provisional application is detailed in chapter 9.

DETERMINE WHETHER YOUR IDEA OR INVENTION IS PROFITABLE

There are several approaches for evaluating the commercial potential of your invention. Evaluating the marketability and commercial potential of your idea or invention is important. Although this commercial evaluation is a continuous and ongoing process, the process should start before you invest time and money in an idea that may not be salvageable. All too often people spend countless hours and thousands of dollars on ideas that are not commercially feasible. The world may not want your “better mouse trap” if it is too expensive to build and maintain, or if there are not many mice to catch.

You can start by searching the internet, checking trade publications and trade shows in fields that relate to your invention. Learn what other inventors have tried and whether their attempts failed or succeeded. Visit the library and search catalogs and product directories for information about inventions similar to yours. Contact inventors’ clubs and organizations, and talk to other inventors about problems and solutions in the field of your invention. Attend workshops and classes at universities and community colleges covering the subject matter of your invention, and talk to instructors about consumer and business needs for inventions such as yours. Consult with buyers and sales personnel in stores and shops that carry articles and devices that are similar or related to your invention. Talk to technical people, scientists, and engineers who work in relevant fields to determine if there is a real need for your invention.

Be careful about discussing or disclosing your invention to others without taking proper precautions to protect its confidentiality and proprietary nature. Before discussing or showing your invention to others, ask them to sign a confidentiality agreement wherein they agree to keep your invention a secret and not use the invention without your permission. This confidentiality agreement is extremely important to protect your ability to obtain foreign patents on your invention, because any public disclosure, sale, or use of your invention before filing a patent application will preclude you from patenting the invention. See chapter 3 for sample confidentiality agreements.

Never disclose your unpatented invention to any person or company that you do not trust. Rather, always try to deal with ethical and reputable organizations in discussing, evaluating, and testing your invention. Even reputable organizations may refuse to sign a confidentiality agreement before reviewing your invention. Despite this, it may be necessary for you to disclose your invention to these firms to exploit the invention commercially. If you are unable to get the other party to sign a confidentiality agreement, you should still indicate in your initial contact and in a follow-up letter that your invention was disclosed in confidence, and you expect that it will not be used without your permission and compensation. Refer to chapter 3 for further details on maintaining the confidentiality of your invention.

SECURING PROTECTION FOR YOUR IDEA OR INVENTION

Once you have determined that you can prepare a credible market value case and that there is profit to be generated from your idea or invention, you should consider securing your rights to the idea or invention. Assuming your idea involves a new invention, the mechanism to secure such rights is through a patent application. If on the other hand, your idea involves an artistic, literary, software, or other creative work, consider a copyright. If you have an idea to brand something to increase marketability, consider filing a trademark. Chapter 2 provides you with more details on the different protections offered and Chapters 8–12 provide you with detailed guidance on preparing and filing a patent application.

MARKETING AND MONETIZING THE RIGHTS YOU HAVE SECURED

If you decide that you wish to start your own business making and selling a product or service covered by your idea or invention, remember that prospective buyers are likely to understand a business much better than they would the technical details of your invention. Many business people are likely to believe that they have better business and marketing skills than you do as an inventor and can make the product profitable, if you have a good product. Also, many of them typically assume that when they purchase a business, some customers already exist and most of the bugs have been worked out of the product.

In resolving the issues above, there are a number of related factors that must be considered. Based on information from the Small Business Administration (SBA), the following list of areas is provided that might need to be evaluated for each new idea or invention:

• Potential market

• Length of time the product is useful

• Learning how to use the product

• How the product looks

• How the product functions

• How the product will be produced

• Investment costs

• Is there a need or demand for the product?

• How will the product be promoted?

• What are the potential sales of the product?

• How long can you maintain your market position?

This list is not intended to discourage you with your invention but to highlight the myriad of variables that may have to be considered before your invention can be successfully commercialized.

You can also consider selling or licensing your invention to a major company. After all, a big company usually has the funds, manufacturing capability, and marketing expertise to commercialize the invention and make it profitable. Most major companies, however, are usually not interested in unsolicited ideas from people outside of the company. In fact, many companies do not accept or consider outside ideas. First, they believe that their own research and development staff can do a better job at inventing than an independent inventor working out of a basement or garage can. Second, they are afraid that outside ideas or inventions will conflict with their own in-house research efforts. Many companies have become involved in expensive lawsuits with outside inventors to prove that the companies were already developing the disputed invention. Third, many ideas and inventions from outside inventors are simply too small in potential sales to interest large corporations. For example, your niche market of $1 million in potential sales is typically not appealing to a big company that is looking for tens or hundreds of millions of dollars in sales. Thus, trying to interest a large company in your invention will be extremely difficult.

Invention brokers or invention promotion firms with a proven track record may be helpful in getting your idea considered by a big company. These firms may already have established relationships with large corporations, investment capitalists, or other organizations interested in new ideas. Be careful when using invention promotion firms because many of them are a sham. Federal Trade Commission (FTC) investigations found that several invention promotion firms, charging fees of several thousand dollars, had more than 30,000 clients, but fewer than a dozen of these clients made money on their inventions. See chapter 6 for more information about invention brokers and invention promotion firms.

Besides selling your business to a big company, you should consider taking your invention to a small- or medium-sized company. These firms may be easier to approach than a big corporation, and they would be more likely to market a product with smaller sales volumes. Smaller companies may not be as sophisticated with marketing and distribution, but they can still successfully commercialize your invention and make it profitable.

Keep in mind that you need to be more than an idea person to be successful with your inventions. You need to be an entrepreneur, one who invents a product, finds backers for the product, and gets the product on the market. You need to be good at communication, negotiation, publicity, and networking. Most of all, you need to have persistence and good business sense.

CHAPTER 2

How to Protect Your Ideas

As we learned in the last chapter, once you have come up with an idea, no matter how simple it is or what type it is, you should always look at ways to protect it. Your ideas and creations are valuable property that you can protect, defend, sell, license, mortgage, or otherwise transfer for economic benefit. Here is where the value proposition of your idea com...

Table of contents

• Front Cover
• Half-Title Page
• Title Page
• Copyright Page
• Contents
• Preface
• Acknowledgments
• Introduction
• Chapter 1: How to Profit from Your Ideas and Inventions
• Chapter 2: How to Protect Your Ideas
• Chapter 3: How to Maintain Confidentiality of Your Ideas
• Chapter 4: How to Keep a Record of Your Invention
• Chapter 5: Where to Find Help to Protect and Market Your Inventions
• Chapter 6: How to Deal with Invention Brokers and Promotion Firms
• Chapter 7: How to Use Patent Attorneys and Patent Agents
• Chapter 8: Is Your Invention Patentable?
• Chapter 9: How to Prepare and File a US Patent Application
• Chapter 10: About Foreign Patent Rights
• Chapter 11: How to Prepare and File an International Patent Application
• Chapter 12: How to Prosecute a Patent Application at the US Patent and Trademark Office
• Chapter 13: The Latest USPTO and Copyright Office Forms and Templates
• Chapter 14: Infringement of Patents
• Chapter 15: Licensing Your Patents and Inventions
• Chapter 16: Starting a Business to Market Your Invention
• Appendix
• References
• Resources for Inventors
• Index