In July I wrote Describing Your Invention Completely in a Patent Application, which focused on the type of information you want to include to capture the full glory of your invention. This article is a follow-up to that, focusing this time on what the law requires and why, concluding with suggestions to help in breaking through the idea and getting to something more tangible. Reading these two articles in conjunction should give a more complete understanding of what is required and how to get from idea to patentable invention.
I start this tale observing a central reality: Inventors are creative people who observe a problem and envision a solution. Practically anyone can be an inventor because the first step on the path to inventing is the generation of an idea. Unfortunately, ideas cannot be patented and for many individuals the path to invention stops right there. But it doesn’t have to stop there. Frequently you just need some help collecting thoughts and a little push in the right direction. In fact, many people are surprised by what is required to be an inventor and have an invention that is capable of being patented.
The theory of patent law is based on the idea that a lone genius can solve problems that stump the experts, and that the lone genius will do so only if properly incented. We deny patents on inventions that are “obvious” to ordinarily innovative scientists in the field. Our goal is to encourage extraordinary inventions – those that we wouldn’t expect to get without the incentive of a patent.
The canonical story of the lone genius inventor is largely a myth. Edison didn’t invent the light bulb; he found a bamboo fiber that worked better as a filament in the light bulb developed by Sawyer and Man, who in turn built on lighting work done by others. Bell filed for his telephone patent on the very same day as an independent inventor, Elisha Gray; the case ultimately went to the U.S. Supreme Court, which filled an entire volume of U.S. Reports resolving the question of whether Bell could have a patent despite the fact that he hadn’t actually gotten the invention to work at the time he filed. The Wright Brothers were the first to fly at Kitty Hawk, but their plane didn’t work very well, and was quickly surpassed by aircraft built by Glenn Curtis and others – planes that the Wrights delayed by over a decade with patent lawsuits.
Over the years I have worked with many inventors as they seek to move forward with their inventions. As a patent attorney it is no great surprise that the overwhelming number of individuals I have worked with are interested in filing a patent application and ultimately obtaining a patent. Filing a patent application necessitates have drawings to include in the application, but patent drawings are not the only type of “drawings” that an inventor should be considering. Patent illustrations are wonderful for a patent application, but they don’t always do the invention justice if you are trying to capture the attention of a prospective licensee, or if you are trying to convince a buyer to place orders or sell the invention in their store.
Simply stated, patent illustrations and other types of invention drawings, such as 3D renderings and photo realistic virtual prototypes serve different purposes. For example, take a look at the figure below, provided courtesy of Enhance Product Development, a product development company with a great deal of experience licensing and developing products in consumer markets. The patent illustration is on the left, and a branded, photo realistic virtual prototype is shown on the right. Which do you think would better capture the attention of a prospective licensee?
If you want to license your invention for royalty payments, you have to deliver more than a “me too” product. Prospective companies will demand that your product exceed their standard profit goals in order to pay royalties, which represent increased expense.
Many inventors believe the way to get a company interested in their inventions is to write a letter – and then hope they receive an invitation to begin negotiations. This seldom happens.
Your licensing quest should begin by phoning and asking for your prospect’s invention submission guidelines. Know that many times unpatented inventions, or inventions without at least a patent pending, will not be accepted.
WASHINGTON – The United States Patent and Trademark Office (USPTO) today announced the designation of Iowa’s Davenport Public Library as a Patent and Trademark Resource Center (PTRC). As the 81st library in the nationwide network, Davenport marks Iowa’s return to the PTRC program and serves as the first center geared away from the “paper depository” concept towards electronic access and training for patent and trademark information.
This is a patent that I have used for years when teaching law students the art of patent application drafting, particularly claim drafting. As you can see from the picture, this invention is a grappling dummy. This dummy meets the utility requirement because it is used for exercise or practice by athletes training for competitive martial art or wrestling.
Perhaps this is not your idea of a “useful” invention, but the utility requirement, which is one of the so-called “patentability requirements,” is satisfied if the device that is claimed in the application can be used for the purpose described. Here the inventor has quite clearly provided a useful invention, at least in so far as the patent law is concerned.
John Calvert, USPTO Inventors Assistance Program, will teach claim drafting at the Conference
The United States Patent and Trademark Office will host an Independent Inventors Conferencefrom August 12 – 13, 2011, in Pasadena, California. This California Regional Conference will be the west coast equivalent to the Independent Inventors Conference that has been held at the campus of the USPTO in Alexandria, Virginia in previous years. The purpose for having this Pasadena Regional Conference is to try and bring the USPTO to other parts of the country and give inventors from a variety of locations the opportunity to interact with USPTO Officials without the need to travel to Alexandria.
Senior USPTO officials, successful inventors, including National Inventor Hall of Fame inductee Dr. Gary Michelson, and intellectual property experts will be on hand to provide practical advice and information for both novice and seasoned inventors. Congressman Adam Schiff, a member of both committees with oversight of issues related to intellectual property protection and the USPTO, the will be the opening speaker August 12. Teresa Stanek Rea, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, will deliver a keynote address at the luncheon on August 12. Mark Hatch, CEO of TechShop and Louis Foreman, Chief Executive of Enventys® and producer of Everyday Edisons will also deliver keynote addresses for attendees.
Louis Foreman, the producer of the Emmy Award winning PBS television show Everyday Edisons and the publisher of Inventors Digest, announced in April 2011 that he was launching of a $25 million Innovation Fund. Phase 1 of the search for inventions for the Fund to invest in was completed in mid-June 2011. Phase 2 of the search for inventions and ideas has just begun and will run through Monday, September 12th, 2011.
“The Fund is off to a great start and we have received some very innovative technologies as part of the first wave,” Foreman said. “I am amazed at the creativity and ingenuity. It just reinforces our original premise that everyone has a great idea, but most people don’t follow through. The Fund has become a catalyst to submit these ideas and see if they have commercial viability.” The proceeds of the Fund which will be invested by Edison Nation to bring innovations to market. Inventors who have their inventions or ideas selected will share in any profits with Edison Nation.
In order for any patent application to be complete the invention must be described with great particularity. Many times an inventor will generally describe the invention in a patent application but will not describe the invention with the level of detail required by the patentability requirements. There needs to be time spent describing the structure of the components that make up the invention, as well as the mechanical and electrical connections necessary for the components of the invention to fit together and ultimately perform the specified function.
What is the structure of the components? What is the overall structure of the unit? How are things connected? How do they interact? How would they be made? How are the pieces assembled? What are the alternatives for making, connection, interaction? What materials can be used? What optional features are present? What could be present? These and other descriptive questions need to be answered in order to particularly define the invention.
It is important for inventors to understand that there is reluctance among some patent attorneys to take on “independent inventors” as clients. Part of the problem is that some independent inventors take up an extraordinary amount of time and rarely convert into clients. Even if they do convert into clients many want to pay a low rate for certain agreed representation and are upset when more is not done by the attorney. I have even heard inventors openly complain that their patent attorney wants to charge them every time they call. It is important to remember, however, that the only thing an attorney has to sell is time; whether that be to perform legal services or give advice. Giving time away for free on a routine basis is a recipe for business disaster for an attorney.
With all this in mind, how does a serious inventor find the help they need and a reputable, experienced patent attorney? Inventors who want a reputable and experienced patent attorney will do themselves a great favor if they try and understand the business realities facing the patent attorney. There are only so many hours in a day to work, and spending a lot of with those who are not likely to turn into clients, or good clients, is not typically a winning business strategy. Therefore, you want to present from the outset as someone who is serious. Keeping this in mind will pay dividends as you seek out a patent attorney you are comfortable with, who you trust and is able to collaborate with you to form a good and prosperous working relationship.
Recently I received a copy of the book “One Simple Idea,” written by Stephen Key of Invent Right. Key is an inventor coach and through Invent Right offers a home study program for inventors, which includes personal coaching, DVD lectures, a year of online training and more. His stories as a successful inventor himself, as well as the stories of his students and those who he consults with, form the basis of the lessons in One Simple Idea. I don’t recommend all that many books, although I am asked to review many. Without hesitation I recommend Key’s book and think it should be required reading for any motivated inventor.
Aside from strongly recommending One Simple Idea I have been struggling with how to do a book review. After all, I am a patent attorney and not a literary critic. But there is so much to like about the book and so much that I think Key nails as dead on accurate. Rather than quote pieces of chapter after chapter, page after page or line after line, I thought it might be a good idea to pick up the phone and chat with Key about the book, his approach to counseling inventors and what he has learned over the years. If there is one thing I love it is a great conversation about patents and inventing!
You have entered the innovation market taking your first steps. You had an idea, which matured to become definite enough to be characterized as an invention. Now what do you do? Many inventors will find a patent attorney or patent agent that they will work with, and still others will try and represent themselves. Representing yourself can be a dangerous undertaking because drafting a patent application and engaging in patent prosecution (i.e., working the patent examiner to identify patentable subject matter) can be a lot more difficult than it otherwise seems. There are many pitfalls and archaic rules to navigate. But even if you are going to choose to work with a patent attorney or patent agent you should do whatever you can to understand the tasks associated with obtaining a patent. The more informed you are as an inventor the better the resulting patent. The more you know the better the information you can provide to your patent attorney or patent agent, which only makes for a better, stronger, more detailed and broader patent once issued.
One big mistake I see inventors make frequently relates to understanding the full scope of their invention. This is not to suggest that inventors do not understand their invention, quite to the contrary. In my experience when an inventor has an invention (and not just an idea) the inventor will know what they have done in great detail. Sometimes there is a challenge to convey everything to the patent attorney or patent agent, but the inventor has that information it just needs to be liberated from the inventor and put on paper.
Getting Your Invention off of the Ground with Crowdfunding.
Crowdfunding is a newly proven way to get initial funding for the commercialization of an invention. Crowdfunding involves posting a project description on the internet, asking for pledges to complete the project, and if the minimum amount of pledges are received by a certain deadline, having the funds transferred to the project. If the minimum isn’t reached, no one gets charged.
Crowdfunding addresses the two biggest challenges many inventors have. “What is the market for my product?” and “How do I get initial funds to produce it?” Conventional sources of funds include yourself, “friends and family”, and angel investors. Crowdfunding adds a new source of funds, the initial consumers. Inventors get committed funds and guaranteed customers. Backers get to be the first to get an exciting new product. If the funds are raised, you know you have a market and you have the resources to produce the product. If the funds aren’t raised, you have valuable market feedback.
It doesn’t roll off the tongue quite like the famous Shakespearean line — “to be or not to be: that is the question” — the opening line of Hamlet’s soliloquy in Act 3, Scene 1, but the question that some inventors will ask themselves is whether they should seek out licensing opportunities or follow the path of manufacturing and selling. Truthfully, many inventors probably don’t ask this and instead jump past this fundamental question and straight for the licensing revenue, but is that the best thing in the long run? Licensing takes a lot of work out of the monetization equation and minimizes risk, but foregoing manufacturing and pursuing licensing can significantly cut down on profit realized by the owner of the invention rights.
The question about whether to license or manufacture is one that should be asked by all inventors because there is no “right” or “wrong” answer. As a result, one-size-fits-all advice is not at all helpful. It is largely a question of resources, time commitment and personal preference.
Louis Foreman at Inventors HOF Induction May 4, 2011
Louis Foreman, the producer of the Emmy Award winning PBS television show Everyday Edisons, as well as the CEO of the design firm Enventys and publisher of Inventors Digest, recently announced the launching of a $25 million Innovation Fund, the proceeds of which will be used to bring innovations to market. In an interview with Foreman (see below) he explained to me that he is looking for inventions and ideas for all kinds of products, and not just the consumer products that Everyday Edisons has become known for. Foreman explains that medical devices, military and law enforcement technology, social networking innovations and even software are all desirable ideas/innovations for the Innovation Fund.
To help what might be the best ideas and inventions percolate to the top Foreman has created what he refers to as a “Patent Attorney Referral Program.” This program is designed to benefit patent attorneys and patent agents whose clients submit innovative ideas and concepts. This isn’t one of those unethical referral programs though, so no worries there. If a client of a patent attorney or patent agent is selected and accepts the offer of assistance from the Innovation Fund then the patent attorney or patent agent representing that inventor will be retained by the Innovation Fund to provide the legal services required to pursue patent rights.
How to Write a Patent Application is a must own for patent attorneys, patent agents and law students alike. A crucial hands-on resource that walks you through every aspect of preparing and filing a patent application, from working with an inventor to patent searches, preparing the patent application, drafting claims and more. The treatise is continuously updated to address relevant Federal Circuit and Supreme Court decision impacting patent drafting.
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