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Financially Responsible Inventing: Prototype Basics

Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
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Posted: Aug 3, 2013 @ 8:00 am
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Like anything in life worth doing, the path of an independent inventor from initial stage idea to making money can be challenging. If it were easy then everyone would be a rich inventor. Luckily for those who have the determination to pursue innovation as a business it is not easy enough for anyone to do, which means that there are opportunities available for those with ideas and determination. One of the keys to successfully making money as an inventor is understanding that those who are successful operate in a business responsible way, and this requires closely monitoring expenditure of funds. While you may want to rush out and build a prototype you need to be careful. There is nothing like the show and tell of a working prototype to lure investors, partners and licensing deals, but inventing is better viewed as a marathon than a 100 yard dash, and preserving capital is absolutely essential if you are going to be successful.

There are many things that an inventor can do to help ensure a greater chance of success, and pursuing a financially responsible path is chief among them. You do not want to rush right out and start spending money without a strategy. Leo Mazur, a successful independent inventor and President of the Inventors Society of South Florida recommends, for example, that you keep your money in your pocket until you have at least some proof of concept, even if it is just something crude you have put together yourself.

Doing a patent search to see if there is any realistic opportunity to move forward can also be a wise early stage step as well. Of course, having some kind of believe that what you have come up with will be feasible is quite important and should be done simultaneously with, or on the heels of, some kind of market analysis. After all, if there is no market opportunity it doesn’t make sense to move forward even if you can build it and the invention works perfectly.

At some point in time, after you have reason to believe the invention will work from a conceptual and market standpoint, and there is further reason to believe that what you have come up with is patentably unique, you should consider filing at least a provisional patent application to define the invention and lock in rights. Once a provisional patent application is on file you can legally use the coveted terms “patent pending.” At this stage it typically makes sense to start openly proceeding with such things taking to partners, investors and doing additional market research.

Following this path will allow you to invest funds little by little. Each step of the way you want to continually reevaluate and decide whether moving forward and investing more funds continues to make sense. Determination is key, but also knowing when to cut and run, thereby preserving funds, is essential. Your first invention is not likely to be your last invention, but if you waste all your money and it doesn’t turn out positive then you likely won’t have funds to move forward on the next invention, which might have been the winner.

For an article that purports to talk about prototypes, it may seem odd that in the first several paragraphs do not focus on prototypes. This is deliberate to be sure, particularly given that the over-riding theme here is fiscal responsibility. The prototype can be an enormously expensive endeavor, and a while you probably should engage in attempting some crude prototypes on your own to prove the concept as Mazur suggests, rushing out and spending a lot of money with a professional who will make a prototype is something that should come well down the road after you have satisfied yourself there is a market, that there is a realistic opportunity to obtain exclusive patent rights and there is a likelihood the invention can be offered at an attractive price point.

Without an end product that consumer want and can afford there is no sense to move forward, never forget that! Without at least some meaningful patent rights even if there is consumer demand you won’t be able to exclude others from the market. Thus, the idea to invention to making money process requires inventors to juggle a number of balls, consider a variety of issues and conserve capital whenever possible.  This should not be interpreted as — “be cheap”! Rather, be prudent.

To be successful long term inventors need to realize that this invention may not succeed, but inventors seldom have a single idea. So be wise with your funds and realize that this invention may not be successful and one two or three inventions down the line could be the one that will be successful. But if you don’t have the funds to pursue those other inventions your odds of succeeding as an inventor drop dramatically. So preserve capital wherever possible, but be prudent. This means you should NOT rush out to acquire an expensive prototype until late in the game. Getting an expensive prototype to early in the process is one of the biggest mistakes any inventor can make.

Now, with respect to making your invention come to life so others can appreciate it without busting your budget, getting professional patent illustrations or engineering drawings is certainly helpful, but there is simply no substitute for having a working prototype. Unfortunately, prototypes cost real money. Even though costs have dropped over the past few years thanks to new technologies, the prototype stage is where inventors start to really burn through cash at an alarming rate. For example, if you build an expensive prototype and then need to make a change because it didn’t work so well that means building another expensive prototype. That being the case wise inventors push off an expensive prototype as far into the future as reasonably possible.

In keeping with the theme about moving forward in a financially responsible fashion, it makes a lot of sense to start with some kind of 3D modeling before the prototype stage. 3D models much less expensive than a prototype, and they can help in identify design problems, and they make the product much more tangible.  See Patent Illustrations and Invention Drawings, What do you Need?

3D modeling starts to bring the invention into focus and really can allow you and prospective licensees and partners to envision the invention in a meaningful way. On top of that, 3D modeling may be enough if you are pitching your invention to an interested prospective licensee. According to Trevor Lambert, a licensing expert and founder of both Lambert & Lambert and Enhance Product Design, starting with photo-realistic drawings is a wise choice. Lambert says:

Developing photo-realistic CAD renderings is an inexpensive first step for inventors seeking to effectively present their invention to potential licensees. It helps the licensee imagine what the product would look like fully developed for a fraction of the cost of actual prototyping. In essence, by doing 10% of the work, it appears that 90% of development has been completed… it’s a very powerful sales tool.

If you are trying to raise money or find a licensing deal the further you get down the road to completion the more valuable the invention is because with each step toward completion you take risk out of the equation. If all you have is an idea you will likely not find anyone willing to pay you for it, although there will be plenty who try and lead you on and praise your idea in order to get you to part yourself with money. If you have a patent application filed that is worth something because some investment has been made, an issued patent is worth more because you now have exclusive rights. A computer model can predict how the invention will work. A prototype that works, however, proves not only the concept but that the invention works in real life. It allows you to tinker with the device and find advantages and discover work-arounds for problems. A prototype will let you demonstrate your invention in a tangible way. This means there is far less to chance, less research and development necessary and, as a result, the invention is more valuable to a prospective licensee because there is less risk involved.

If a picture is worth 1,000 words, 3D models are worth 10,000 words and a working prototype is worth at least 100,000 words. Unfortunately, the price of each also escalates. That being said, the biggest bang for your buck will likely be with respect to 3D models. They tend to be relatively inexpensive, could be used in a provisional patent application and may make the invention real enough to close a licensing deal. If you are not trying to get a licensing deal, but rather you are going to make and sell the invention yourself, 3D modeling is still an important step on the way to a prototype.

You do need to be careful with prototypes and prototyping though because as mentioned it can get very expensive very quickly. For that reason many inventors will find it advantageous to think in terms of a series of prototypes, beginning with something crude that proves the workability of the concept which you might do in your garage or workshop with available pieces and parts at the earliest stages. The next step prototype may be something more substantive to engage in further testing and to uncover weaknesses that need to be tweaked and advantages that need to be accentuated, perhaps again on your own or maybe with the assistance of some trusted friends or fellow inventors. Finally, you arrive at a more sophisticated prototype appropriate for show and tell for inventors, partners or licensees. You should reach this final, sophisticated prototype stage only after going through all the other preliminary stages (i.e., crude prototype, market analysis, patent search, 3D renderings, provisional patent application).



Those looking for answers are still likely left with questions, such as what is the road map or time line I should follow. Unfortunately, that is the one part of the equation for which there are no hard and fast rules. In fact, what makes inventing difficult is the need to proceed with multiple things nearly simultaneously. Obviously, you cannot do more than one thing at one exact moment, but as you are working on your crude prototype you might want to also be doing a patent search to see what else is available. If you can read and have some basic computer skills you can find at least some relevant patents and the more you read the more you learn. For a primer on patent searching see: Patent Searching 101 and Patent Searching 102. With every twist and turn your prototype or 3D modeling takes search on your own again. While an inventor search is never as good as a professional search, if you are honest with yourself you will find some things and if you can find it on your own then no need to spend the time or money.

At some point while work on the invention continues you might want to engage the services of someone like Enhance Product Design to help out with 3D modeling or engineering drawings, or maybe if things look promising you consider hiring a patent attorney to seek exclusive rights. The important thing to understand is that there is no one correct way to proceed, but many wrong ways to proceed. Just try and keep the focus on being fiscally responsible, investing little by little only as things continue to prove out, saving the biggest financial investments to nearer the end of the process. After all, there is no sense spending large sums of money if the invention fails to prove out at the low investment threshold steps.

Once you do arrive at the end of the prototyping stage, if you are ready to move forward, the next step is to do a limited production run so that you have some units that can be sold. While there is nothing like a prototype to prove the invention, there is nothing like sales in order to prove market demand and likely success. But production runs and sales is another topic for another day.

Happy inventing!

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Posted in: Educational Information for Inventors, Gene Quinn, Inventors Information, IP News, IPWatchdog.com Articles

About the Author

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.

 

 

4 comments
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  1. Thanks for the great article.

    But my question is if I want to license my patent to a company, why would I want to give up 30% of profits to Lambert and Lambert for representation.

    Why not simply hire an attorney to make initial contact and and see if the idea is viable instead of giving up 30% which is substantial.

    Any further info on this is greatly appreciated.

  2. I have the same questions as John. Lambert owns Enhance Product Development.

  3. John, Patricia-

    Many attorneys do not engage in this type of representation. I get people contacting me all the time and they want me to represent them and pitch their inventions/ideas to companies. I don’t have contacts like that in that industry. Of course, if the inventor were to do the leg work and then needed representation negotiating and closing a deal then an attorney could be found to represent you on the contract and in the negotiation.

    Essentially you pay a licensing agent like Lambert & Lambert for access to decision makers. Lambert & Lambert have done deals with Walmart, Target, Home Depot, Loews, Babies R Us and others. They know how to take what an inventor has and present it in a way that maximizes the chance of obtaining a licensing deal.

    You can also hire licensing agents to work for you. Some might charge a flat rate for a project, others may charge by the hour, but no one is going to open their contacts to an inventor, make introductions and negotiate the deal for free. So you either have to do it on your own or you need to pay someone something.

    Of course, before you work with anyone you really should check them out online.

    Patricia-

    Enhance is a Lambert company. Lambert offers representation on a contingency, Enhance focuses more on product design and engineering. Enhance may be more appropriate to work with if you have an idea and need help bringing it into being. Lambert would probably be more appropriate to approach if you have an invention. I know on the Lambert consideration criteria they look at where there is patent protection in place or whether patent protection can likely be obtained, so Lambert is likely appropriate for inventors who are further along down the path.

    -Gene

  4. I have a question related to an assignment.

    Is it legal to make ans invention from testing on a company’s prototype invention without the company knowing. Is there also a problem using someone in the company to test the products on the prototype and if that is legal if would both be considered inventors to the developed product and if one files it=s it legal for that person to be the only inventor.

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