Now that you’re interest is piqued, let me clarify that if you’re new to the world of patents, an international patent does not exist. Patents must be filed on a country-by-country basis. However, there is an international patent application (PCT), and filing with the World Intellectual Property Organization (WIPO) that allows you up to 30 months to decide which individual countries are the best fit for your product and business model.
However, the question of how to protect your product in an international marketplace is increasingly common now that some of the major online retailers such as alibaba.com and aliexpress.com are based outside the United States. Having the ability to sell your product to an international market can seem like the ideal opportunity. However, you may need protection from counterfeiters who also think that selling your product outside the United States is the ideal opportunity—and trust me, they won’t be sending you revenue.
If you’re anticipating working with an overseas manufacturer, you may need to obtain a patent in that country. The other situation to consider is if you are already manufacturing your product in another country, and want to begin sales in the United States. I’ll also discuss this scenario further in this article.
In our recent coverage of the Evolution of Prosthetic Devices, we were intrigued to find so many developments in the field that came from those who had suffered amputations over the centuries. Dr. Hugh Herr is no exception. On Tuesday, December 9, 2014, Dr. Herr will receive the 2014 Inventor of the Year award during a ceremony hosted by the Intellectual Property Owners Education Foundation (IPOEF). Like many before him, Herr follows in the tradition of incredible engineering feats in prosthetic devices designed by amputees. But Herr didn’t just stop with a prosthetic device, but instead is blazing a wholly original path that may improve the motor ability of the entire human race, not just those who have lost one or more of their limbs.
“Basic levels of physiological function should be a part of our human rights. Every person should have the right to live life without disability if they so choose.” These words came during a TED Talk given in March of this year by Dr. Hugh Herr, inventor of the BiOM® T2 System, the world’s first bionic foot and calf system and the 2014 Inventor of the Year being recognized by IPOEF. Dr. Herr’s story is one of incredible innovation in the face of a terrible struggle to regain the mobility he lost decades ago during a fateful rock climbing expedition.
On November 7, 2014, I attended the USPTO Smithsonian Innovation Festival at the National Air and Space Museum in DC. The innovation festival was created as a way to highlight and celebrate patent and trademark technology that has really inspired the innovative spirit within the United States. While there I made my way around to look at the many technologies that were on display. Companies such as Ford Motor Company, Qualcomm and Caterpiller had displays to showcase some of their current innovations. As you know, IPWatchdog follows and regularly writes about the technologies that these larger companies come up with. But at the festival, what struck me most, were the individual inventors who were there to proudly display the inventions they came up with to solve their individual, everyday problems. For this reason, I have decided to shine the spotlight on independent inventors who have patented their products and brought them to the marketplace. Some of these inventors have created companies around their technologies and others simply offer their products for sale.
One of those inventor’s, avid skateboarder Alexei Novitzky, was at the festival to display his unique invention. As a graduate student in the Mechanical Engineering program at USF, Alexei wanted to solve his problem of needing to carry around a backpack in addition to his skateboard. For many students bicycles or scooters are an effective and efficient way to travel from class to class, especially when one is short on time or running late. But Alexei, like many others, chose to ride a skateboard. He didn’t like the idea of having to wear a backpack or having to carry items in his pockets, so he decided to combine the two items he needed, a skate board and backpack, into one item and his invention, the Skatecase, was born.
If you read the previous article in this series, Why Inventors Should Not Rely On Their Own Search, you know that before you file a provisional patent application, you should do a comprehensive search of the U.S. Patent Office and other U.S. and/or international databases. A patent agent/attorney will do this for their clients, or you can have a trusted confidant, (who won’t take your idea for their own), work with you to complete it.
Prepare yourself, you are very likely to find a similar product, and that is a good thing.
It’s a good thing because it means that someone else has also recognized that there is a problem which requires a solution. Ideally your solution, or some aspect of it, is either better than theirs, or distinctly different, which makes it possible to submit a provisional patent application for it.
At this point, you may think you know what the patentable element is, and are ready to file a provisional, but you’re not there yet, and here’s why.
Although many inventors believe otherwise, drafting a patent application is not an easy endeavor. Indeed, the United States Supreme Court has described a patent application as one of the most difficult legal instruments to create. There are a great many pitfalls and perils that face anyone who drafts a patent application, particularly inventors who are not intimately familiar with the patent laws and regulations that will apply.
Attorneys are frequently very good at telling would-be entrepreneurs exactly what they should do, but if you have never been an entrepreneur it can be easy to lose sight of the universal truth that no matter how well funded you may be there is never enough money to afford to do everything that needs to be done. Indeed, even if you carefully plan a budget as an entrepreneur you really have to multiple whatever you think you need by a factor of at least 2 or 3 because things will cost more than you assume even if your projections are conservative. For example, it will come as a shock for many entrepreneurs that the cost of electricity for a business is far greater than the cost of the same electricity for a residential customer.
Perhaps you have an idea for a new product simmering in the back of your mind. You’ve done a few Google searches, but haven’t found anything similar. This makes you confident that you have stumbled upon the NEXT BIG THING.
Every day inventors tell me they “haven’t found anything like it,” and while that’s a good start, chances are that they haven’t been looking in the right places.
Before investing additional money and resources, it’s the right time to find out definitively if the invention is unique, determine if there is a market for it, and explore how to make it better.
Inventors should do a search online with a goal of finding two or three competitive products. If they’re scared to do the search, that’s a good thing, because in my experience, it usually means they’re on the right track.
Several weeks ago I wrote about the fourth annual DRTV Summit sponsored by InventionHome. Initially the deadline for inventors to submit their inventions for consideration was September 30, 2014, but InventionHome has extended the deadline for inventors to submit until the end of this week. Submissions are now due by the close of business on Friday, October 3, 2014.
The DRTV Product Summit is a one-day event that will be held on Wednesday, October 22, 2014 at Robert Morris University in Pittsburgh, Pennsylvania. Inventors will be given the opportunity to pitch their products to representatives of the six (6) DRTV companies on one day in one location.
The event is not open to all inventors. Over the past few years the event has grown and there has been significant interest in the inventor community. In order to be considered inventors must submit their inventions to be reviewed by a panel of referees. Thanks to an extended deadline, submissions are now due no later than Friday, October 3, 2014. This submission and selection process insures that only the highest quality inventions are presented to the representatives of the DRTV companies that will be present. This maximizes the value for those DRTV companies, which means they keep coming back year after year. It also reserves pitch time for inventors with the most commercially ready products that have the greatest immediate chance for a deal.
Should inventors be going solo and trying to protect their own inventions? No, at least not if you can afford to hire a patent attorney. Going solo through this patent maze would be similar to trying to remove your own appendix. If you can get to a hospital you should not be removing your own appendix! It is that simple. But there will always be inventors who will proceed on their own. Sometimes this is due to hubris, but frequently it is out of necessity.
There is nothing wrong with representing yourself if the choice is between DIY or not moving forward, but for those who will go it alone it is imperative that they become as familiar as possible with the rules, regulations and best practices. It is for these do-it-yourselfers who proceed out of necessity, but with their eyes open, that I write this and other similar articles.
One very common mistake inventors will make is that they will want to only describe their invention in the most general terms possible. Why would you want to be specific, they ask, because if you are too specific it will be easy for people to get around your patent. It is true that an unnecessarily specific discussion of the invention in a patent application can make it easy for competitors to copy your invention without infringing your patent, but if you file an application that only generally, or vaguely, describes the invention that is even worse.
John Calvert (r) with Senator Birch Bayh (ret.) at PTO 30th Anniversary celebration of Bayh-Dole.
John Calvert, a twenty-four year veteran of the USPTO, retired in June 2014. If you are in the independent inventor or product commercialization communities you undoubtedly know Calvert. After starting as a patent examiner, in 1999 he started working with independent inventors. He would ultimately be in charge of the independent inventor outreach efforts of the USPTO by the time he retired.
Calvert didn’t go quietly off into the sunset though, which is a good thing. A long time friend and champion of the independent inventor he is now going to work with and for inventors in the private sector by and through the United Inventors Association (UIA). As the new Executive Director of the UIA he will lend his time and talents in an endeavor that is near and dear to his heart.
Many within the independent inventor community are well acquainted with John Calvert. Calvert originally started out working for the United States Patent and Trademark Office as a patent examiner, but by the time he retired twenty-four years later he was in charge of the independent inventor outreach efforts of the USPTO. I have known him for a long time, he is a friend, and he has been a champion for the independent inventor community.
When Calvert retired in June 2014 I was saddened to see a him leave, but also saddened because I know how tirelessly he works to inform, educate and assist independent inventors. While he has no doubt earned a quite retirement I am extremely pleased to say that in retirement Calvert will continue to work with independent inventors; he was recently hired as the new Executive Director of the United Inventors Association (UIA). His energy, passion, knowledge and contacts should dramatically impact the UIA in a positive way. Good things are no doubt on the horizon.
Calling all inventors! InventionHome is once again hosting what is becoming a yearly DRTV Product Summit. The one-day event will be held on Wednesday, October 22, 2014 at Robert Morris University in Pittsburgh, Pennsylvania. Inventors will be given the opportunity to pitch their products to representatives of the six (6) DRTV companies on one day in one location.
This will be the fourth such DRTV Product Summit hosted by InventionHome. Over the first three Summits some 66 inventors pitched their inventions in the format described above. 61 of the 66 have left the Summit with at least one of the company representatives expressing some interest in pursuing additional discussions. Ultimately, 18 of the 66 inventors have received either a term sheet, licensing deal or rep agreement.
Unfortunately, this event is not open to all inventors. Over the past few years the event has grown and there has been significant interest in the inventor community. In order to be considered inventors must submit their inventions to be reviewed by a panel of referees. Submissions are due no later than Tuesday, September 30, 2014. The submission and selection process insures that only the highest quality inventions are presented to the representatives of the DRTV companies that will be present. This maximizes the value for those DRTV companies, which means they keep coming back year after year. It also reserves pitch time for inventors with the most commercially ready products that have the greatest immediate chance for a deal.
In my experience the reason most people do not succeed is because they just don’t know what to do, not because they are lazy or unmotivated. My hope is that this article will educate inventors and help take some of the mystery out of the steps associated with turning an invention into a profitable endeavor.
Before you consider contacting anyone the best first place to start is with a simple question, which will help you chart the right course. Ask yourself: What you want to do with your invention? Do you want to make and sell your invention? Or, do you want to sell your invention rights to an individual or company who would make and sell your invention? Or, do you want to try and license one or more individuals or companies to make and sell your invention? After you make this determination your initial strategy should come into focus.