The Business Responsible Approach to Inventing
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
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Posted: Sep 22, 2012 @ 12:08 pm
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There really is no one-size-fits-all approach to inventing that can be claimed to be a road-map to success that will work in all cases. Notwithstanding, there are certainly a number of things that can and should be done early in the inventing process if an inventor is going to pursue inventing as more than a hobby. I continually preach to inventors the need to follow what I call a “business responsible” approach, which is really just my way of counseling inventors to remember that the goal is to not only invent but to hopefully make some money. Truthfully, the goal is to make more money than what has been invested, which is how the United States Congress defined “success” in the American Inventors Protection Act of 1999. The odds of being successful with one of your inventions increase dramatically if you engage in some simple steps to ensure you are not investing time and money on an invention that has little promise.
Finding reliable numbers on the overall “success rate” of patented inventions is difficult. Most have probably heard that about 2% of patents are commercially viable. I have heard estimates as high as 6%, and much lower than 2%. What makes this tricky is that for companies a single patent is usually a part of a larger patent portfolio, with some of the portfolio being acquired to protect core inventions that will make a lot of money, others being acquired for defensive purposes, and still others being acquired as some kind of morale boost type reward for hard working scientists and engineers who have indeed invented something. Further confounding certainty is the fact that some patents are acquired for licensing purposes, some are licensed in bulk as a part of a portfolio and some are never licensed because they relate to core innovations. Still further, it is possible, if not frequently the case, that multiple patents are acquired to cover core innovations, which means one successful product or service could account for tens, or even hundreds of “successful patents.”
Whatever the case may be in terms of the “real” success rate for patented inventions, the relatively low success rate suggests that the business of inventing is anything but a sure bet, even if you work extremely hard and have a good invention there can and will be many obstacles to overcome.
Given the inherent uncertainty that characterizes the inventing business it is critical that inventors treat inventing as a business endeavor from the earliest stages. By treating your inventing as a business endeavor you will substantially raise the chances of succeeding because you will make deliberate choices with your eyes wide open. This is not to say that you won’t make mistakes; mistakes are inevitable. You will, however, make far more mistakes that will be costly in terms of both time, energy and finances if you do not give adequate thought to the process.
Some time ago Leo Mazur, who is President of the Inventors Society of South Florida, wrote Keep Your Money In Your Wallet Until Proof of Concept. If you have not yet read Mazur’s article you really should. He is a successful, serial inventor. He has a lot of experience and he is an independent inventor. In that article he explained the importance of making sure you are pursuing an invention worth pursuing before you start spending a lot of money. I think that is excellent advice. There is no reason to spend money unless and until you have gone through the paces to determine whether the invention has a realistic chance of working, that there is a market for the invention and that consumers will be willing to pay enough to make a profit. If the invention only makes sense if you can secure exclusive rights then you need to give that consideration as well. Of course, if you are going to pursue a licensing strategy or need funding from investors, then you absolutely must file a patent application. One of the best lines of Mazur’s article was when he suggested inventors start their due diligence research with the weakest chain in the link. You do nothing but waste time and eventually waste money if you pursue any other strategy.
While to some it may seem that Leo and I disagree, we are really just approaching the same issue from different directions. I know because Leo and I chat with some regularity. I think if I can summarize the thrust of what we both say it is this: treat inventing like a business. If you treat inventing like a business that will require you to engage in all sorts of activities aimed at making sure you don’t waste time and money, you continually assess and then re-assess at ever stage to determine whether you should be investing more time and money, and if you get to a point where the project looks hopeless then put it aside and pick up whatever is next. If you really are an innovator there will always be another invention, so don’t waste time and precious resources once an invention seems to be going no where. Leo advises to put it on the shelf because you never know if you might eventually make a breakthrough, or perhaps for one reason or another a previously thought of dead-end invention might gain new relevance and become interesting.
In order to treating inventing as a business and pursue a business responsible path you need a game plan, and you have to follow that game plan from the earliest stages. Of course, as with any game plan, there will be twists and turns, but that is no excuse for not planning ahead. I am not talking about a business plan per se, because that has a specific meaning. If you want to succeed you ultimately should have a business plan, but even before you have a business plan you need a plan that will maximize your chances for success. In the invention business you need a plan for inventing way before you need a business plan, because if you don’t have a quality invention that fills a niche then you will never need a business plan.
So here are the steps that I think inventors should take early in the process BEFORE spending large amounts of money.
1. Set a Budget
Inventing and commercializing can be extremely expensive. Another truth is this: if you really are an inventor that means you are creative and it is crazy to think that your current invention will be your last. In fact, most inventors I talk to have a handful of inventions at any one point in time, so the difficult thing is picking which one to pursue. That being the case, and the inevitable reality that you might not score with the first invention you choose, you need to set a budget and CONSTANTLY reevaluate through the process to make sure that it continues to make sense to pursue the invention. Investing time and money is one thing, but investing good money and your time once the pursuit has been demonstrated to likely not be fruitful is nothing short of silly. So I recommend you set a budget, which you can reassess if things seem to be moving forward in a positive direction. I tell inventors that setting an invention budget is not unlike going to a casino for some responsible fun. How much can you afford to lose? Once you reach your limit then leave. With inventing, once you reach your limit and there is still no upward positive momentum then move on to what is next.
2. Patent Search
It probably does not come as a surprise to anyone that I would suggest a patent search extremely early in the process, after all I am a patent attorney. At this phase, however, I am not suggesting that you spend money on a patent search, but rather that you do whatever patent search you can do on your own. It is unlikely that any patent search an inventor will do will be complete enough to be relied upon ultimately by a patent attorney or patent agent, but it is free if you do it yourself and you might find more than you expect. In fact, if you REALLY look I know you will find more than you expect.
Doing your own patent search early is good for a few reasons. First, if you can find prior art that is too close to what you want to do then you save time, money and energy, provided of course you move on and not try and pound that round peg into a square hole! Patent searches are also critical because they will give you a lot of ideas and if you read the patents and not just the title, abstract and pictures you will likely have a whole host of ideas come running into your head. It can be truly great research. For example, if you come across something that looks promising but isn’t available on the market ask yourself why; could it be there wasn’t a market? Finally, a patent search will give you a sense of what else is available that might be public domain already and a substitute for your invention in the eyes of the consuming public.
For those interested in learning more about doing your own patent search take a look at this patent search tutorial: Patent Searching 101 and Patent Searching 102: Using Public PAIR. As you are doing your search remember one thing — there is a reason patent searches and real patentability assessments cost so much money. They take a lot of time and to offer an opinion with more than a thumbs up or down you have to really dive into the text of the patents found. Most inventors will pick one term, search it and find nothing and think they are good to go. You MUST use a thesaurus and consider how others would characterize your invention. One time I was doing a search and literally couldn’t find anything, but I knew there had to be at least some related patents. After several hours I stumbled across what seemed an odd characterization to me, but lo-and-behold, that was how everyone was describing this core aspect of the invention. The struggle with a word search is to figure out how others are characterizing something, realizing that patent attorneys and patent agents are copy-cats in terms of language. Once you find the right combination you will find prior art, so NEVER assume a search revealing nothing is a good search.
3. Proof of Concept
I put proof of concept third on my list because it is my opinion that pursuing an invention that you hope to make money on only makes sense if there is some reasonable expectation to anticipate that the invention is patentable. Said another way, to me it only makes sense pursuing an invention if the invention would qualify as new and nonobvious under the patent laws. If your invention is not new then that means there is something else out there that is identical. If your invention is obvious then that means that if you combine a couple things together in a trivial manner you are left with your invention. So if your invention is not new or it is obvious why would you anticipate that you would be able to make money selling the product or licensing the invention? That is why I recommend your own patent search prior to proof of concept.
I also recommend your own patent search over proof of concept because if you actually do read the patents you find you are guaranteed to get all kinds of interesting thoughts racing through your head. Creative people can’t seem to keep up with their creative thoughts, and reading what other creative people have already done is an excellent way to jump start your own creative juices, not to mention guide your problem solving. If a solution already exists with a widget perpendicularly attached to a do-hicky, then that is great information to have prior to starting down the proof of concept path. It would be a waste of time, in my opinion, to invent in a vacuum not knowing what else is out there to be found. Imagine the horror of spending a lot of time and energy proving something has merit only to find that it has already been done and there is no chance of any kind of exclusive rights, and therefore absolutely no licensing potential?
Leo’s article sets for excellent steps to move forward responsibly toward a proof of concept. I will just say that inventors really need to be careful because as you progress there will be some steps that can start to cost a lot of money. Everyone wants a bright, shiny prototype, but that can sometimes cost tens of thousands or dollars. Start out crude and work you way down the path. You might even want to begin working with an engineer or artist who can sketch your invention first on paper. Then I would ditch the artist and work directly with an engineer to obtain 3D renderings and ultimately with engineering drawings. When you work with a capable engineer or design firm many things become clearly inoperable as you move through the sketch, 3D model and engineering drawings phases. Additionally, if you are going to be thinking about a provisional patent application at some point having those sketches, 3D models and engineering drawings can be quite helpful to attach to your application. They can also make great attachments to a business plan you might put together to show investors, and you will need those before you build your spiffy prototype anyway, so there can be some dual uses while you start out far more cost conscious than jumping to that beautiful prototype.
4. Patent Protection
At some point as you go through your inventing cycle you are going to need to seriously consider patent protection, and that should always commence with a professional patent search. You will want to have a professional find everything that can be found and write up the patent application with an eye toward focusing on those aspects of your invention that are most likely unique and patentable.
Without at least a patent pending you do not have an asset that can be licensed, and you have no protection at all against those who would copy your invention. I talk to inventors all the time that came up with something and never filed a patent application and now they see something like what they developed on the market. Without a patent there is nothing you can do, so be warned. You are also universally better off filing a patent application sooner rather than later. Although the US is a first to invent country (at least for now) you are always better off having filing sooner rather than later. See The Risk of Not Immediately Filing a Patent Application.
But when do you move forward with a patent application? The truth is it really depends. The patent application is not by any means the most expensive part of taking an invention to market, but for most inventors it will be the first time they need to come up with serious money to move forward. If you pursue my recommendation and the path Leo suggests you can do a lot for quite cheap, but inventors really should not represent themselves when filing a patent application. There is too much that could go wrong and it takes many years of full time devotion to patent law to have any hope of understanding the nuances that can make all the difference in the world. See Patents: A Most Difficult Legal Instrument to Draft.
What makes it difficult to say exactly when is the fact that most inventors and most texts written for inventors treat invention as a singular event, which it is not. I typically encourage my clients to file a provisional patent application as soon as reasonably practicable, assuming the invention is continuing to look fruitful through due diligence efforts. I encourage provisional applications for many reasons: (1) they are cheaper to file than a nonprovisional patent application; (2) they do not require any particular format so we can focus on disclosing the invention rather than meeting any formalistic requirements; (3) they give “patent pending” status for 12 months; and (4) you can expand upon what is disclosed when you file the nonprovisional patent application.
The nonprovisional patent application is set in stone and cannot be added to (in terms of disclosure) once it is filed, so if you are working on your invention that is not typically the right thing to file. Having said that, you might need some help from an engineer, for example, and want to protect whatever you can describe now to set your rights in motion so others cannot take them out from under you. So I almost universally recommend the filing of a provisional patent application as soon as the invention is concrete enough to have transformed itself from mere idea to a tangible invention that can be adequately articulated in terms of structure and function. Then keep tinkering and inventing away knowing you have locked in your priority date with respect to whatever was filed. You might want to file a second provisional application as you tinker away and make important improvements, and then subsequently file the nonprovisional patent application within 12 months of the first provisional patent application.
Invention is a process and that process can and will take many different shapes and forms depending upon the innovation in question and the personality of the inventor. What makes it impossible to give one-size-fits-all advice is the reality that there probably should be a couple things going on simultaneously or nearly simultaneously. In fact, the do-it-yourself patent search and proof of concept stages should likely be iterative. Search, go to work on your bench or in your garage, then search some more, then work some more.
There is no single correct way to proceed, but many incorrect or irresponsible paths to follow. For that reason inventors should read, learn and communicate. Local inventors groups, like the President of the Inventors Society of South Florida, the Inventors Network of the Capital Area and so many others, are excellent resources for information and practical, real world inventing discussion from established and successful inventors and patent attorneys who work with independent inventors.
About the Author
Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.