I have an idea that is going to make me rich! Those words spring from the mouths of hundreds of inventors each and every single day. Sometimes they lead to new products that help improve our lives. Sometimes they lead to nothing but frustration and defeat. Getting a product from a thought to a desing on paper and finally into the market place is a long, drawn out process that takes patience, understanding, research, money, and support.
I was fortunate enough to work with inventors in the state of Oklahoma under the tutelage of my boss, mentor, business partner, and friend. Bill Gregory is one of America’s foremost invention gurus. What he doesn’t know about inventions and innovations, hasn’t been thought ot yet.
Inventors are endlessly creative, oftentimes temperamental, and always hopeful. I saw a lot of inventions and innovations over a ten-year time span. Many were silly, a lot were clever, a few were inspired, and a handful were truly brilliant. However, even among the brilliant inventions I have witnessed, only a rare few actually made it to the market place.
The invention process is complex and has to be followed with precise determination. So if you have an idea for an invention OR maybe an idea to improve an existing invention where do you begin? This sounds simplistic, but it is true so let’s begin – – at the beginning.
Step 1: BEWARE OF FRAUD!
There are a lot of unscrupulous invention companies out there who promise to help you get your invention to market. They will generally lure you into their trap by offering free advice, free design development, or a free critique of your idea.
The free advice that they offer is often something that you could actually find out on your own, like the best way to protect your idea. Most of the time they will recommend patenting the product, even when a patent might not be necessary or even desirable. They will, of course, volunteer to help you apply for your patent; generally with a healthy profit percentage thrown in for their time and effort.
The free design development typically offered is a rough draft drawing of your invention; just enough to wet your appetite because you can see your idea coming to fruition. Then they hit you with the cost of a finalized technical drawing, which is usually anywhere between three and five times the amount you would pay if you made the arrangements for yourself. (Note: later on in this article, I’ll give you suggestions for finding technical drawing assistance on your own.)
The free critique of your idea will always be in the positive. After all, they can’t convince you to sign with them if they tell you idea isn’t worthwhile. The critique will come with glowing verbiage about the brilliance of your innovation. Then they will suggest that you let them do a marketing analysis for you to show you just how brilliant your idea is. This, of course, will cost you some relatively big dollars of $5,000 or even more.
This is the trap I most detest. In my ten years working with inventors, I never saw a completed market analysis that varied significantly from the 100 or so others I had read prior to it. The product names were, of course, changed and new business contact companies added, but virtually everything else in the outline and verbiage of the analysis was identical. They looked great in their thick black notebooks with fancy photos and great layouts but that didn’t change the fact that they were absolutely worthless.
Trust me when I say, that anything “free” offered to you by these companies is a mere ploy to pull you into their snare. Those free items will eventually lead to a rather substantial price tag. If you do not have a lot of money to throw away, you might want to steer clear.
Instead, check with your state’s Small Business Development Centers (SBDCs), Small Business Administrations (SBAs), or universities and colleges. More and more of these agencies and institutions are taking inventors under their wing and guiding them through the invention maze at little or no cost at all. In Oklahoma, our services were absolutely free from start to finish.
If you cannot locate free assistance or if your mind is set on trying out one of those invention companies, at least do your research before you make first contact. Check with the Federal Trade Commission (FTC) to see if the company you are considering has had complaints filed against them. They “may” also be able to tell you whether or not the company previously operated under another name. At the very least, the FTC can provide you with a list of fraudulent companies to avoid for certain.
Many of these questionable companies will operate for years under one name until enough formal complaints and/or lawsuits have been file against them. Once their business licenses have been pulled, they’ve paid their fines, and they are closed down under their old name, they turn around and reopen their business under a new name. The problem is with the same people at the helm none of the techniques are going to change
To avoid any entanglements with fraudulent invention groups, keep these things in mind:
— Be cautious of anyone who makes blanket promises because no one can guarantee the success of an invention.
— Ask for proof of any claim they make before verbally agreeing to or signing any contracts with them.
— Ask for a list of their clients who have successfully gotten an invention to market and talk to those people about their experiences with the company.
— Be suspicious of anyone who is overly enthusiastic about your idea since legitimate invention promoters will be brutally honest for your own benefit.
— Be wary of anyone who wants an up-front or best effort fee since reputable companies generally rely on royalties rather than up-front fees.
— Make certain the company is bonded in your state so that you have legal recourse if fraud occurs.
— Avoid any company that will not give you a total cost price for their services because they have something to hide.
— Check the company’s references thoroughly with any and every resource you can find (e.g., FTC, BBB, Chambers of Commerce, etc.).
Step 2: DEVELOP A TECHNICAL DRAWING OF YOUR INVENTION.
In order to do a thorough patent search; it is advisable to have a good technical drawing of your invention. It makes the patent search process immeasurably easier to accomplish. You, as the inventor, should always do the first drawing. However, at some point, you will want to have the design drafted out by a professional with expertise in technical design.
Most of our inventors were able to get their drawings done by instructors or students of local colleges, universities, technical schools, or high schools (with drafting programs). Many of these designers are quite good at what they do and are more than willing to help an inventor for a relatively small price tag because it means extra money in their pockets as well. However, if you do not feel comfortable with using a drafting instructor or student, representatives of their schools and institutions can generally recommend local professionals that might be reasonably priced.
Never take your design to anyone on blind faith. Check them out first. Always take a confidential nondisclosure document with you for them to sign before you show them your invention. Also, keep in mind that copyright law says that the person making the drawing owns it unless they sign it over. That means, you must require your draftsman to sign their technical design drawing over to you in order for you to obtain a design copyright on your own invention. Again, this should be done, up front, before you show them your idea.
Step. 3: DEVELOP A PROTOTYPE.
Prototype development is an absolutely essential piece of the invention process. It helps you to see how your invention will and will not work and what alterations might be necessary to perfect it further. The average invention will go through multiple stages before it makes it to market, if it makes it at all. The average is five modifications per idea.
I cannot count the number of inventors that we ran into who patented their invention without developing a prototype only to find out that changes were necessary. In other words, they patented the wrong thing. At several thousand dollars per pop, times an average of five changes per invention, that can be an expensive process.
Sometimes it can be difficult determining what process to use in developing a prototype. Much of it will be dependent upon the complexity of the invention itself. Simple inventions can be built with common materials such as clay, match sticks, wire, plastic, or wood. More complex inventions will require more sophisticated processes like mold making, metal work, or electronics. The rule of thumb is simple: Make your prototype out of any material that will work to develop the product to a level that it can be successfully tested.
Never prototype extremely complex electrical or mechanical inventions without having an engineering drawing completed first. Engineering drawings ensure the dimensions and tolerances of the parts that make up the invention and show the interrelation of each part and how it works and is connected. Additionally, engineering drawings provide manufacturers who may ultimately build your invention with everything that they need in order to produce the product.
Like with technical drawings, you may require assistance in prototype development. There are a number of ways that you can go about finding someone to help you. Most states, like Oklahoma, have manufacturing alliances. These organizations can help you identify potential manufacturers who might be willing to work with you in prototype development. Some universities and colleges can assist you in this process as well.
Again, be certain to have anyone to whom you show your invention sign a confidential nondisclosure document. This helps protect your idea from both inadvertent and deliberate theft.
Step 4: PERFORM A PATENT SEARCH.
Once you have a drawing and a “working” prototype, it is time to do a patent search. This is another step that absolutely cannot be avoided. Just because you have never seen a product like yours on the market, it doesn’t negative the possibility that someone holds a patent on something similar in nature. As many as 80 to 90 percent of all inventions never make it to market for some reason. However, a good many of those ideas are still protected by patent.
An additional benefit to the patent search process is that it will often trigger ideas to further strengthen the invention. A large percentages of our inventors made prototype changes because of things they learned during patent search. Still others discovered that multiple patents were held on similar inventions. In contacting the patent holders they found out that there was no market for the idea or that it was much too costly to manufacture. This information saved them hundreds of hours of heartache, frustration, and humiliation as well as a great deal of money.
If you happen to run into an existing patent that doesn’t necessarily mean that your idea is dead in the water. You might be able to talk with the patent holder about licensing their patent if it would prevent your product from making it to market. At any rate, seek the guidance of a professional to determine what your options might be.
Most people believe that they must hire someone to do a patent search for them. Wrong! In fact, it is recommended that you do the search yourself so that you can take advantage of some of the things noted here. Another person, doing the search on your behalf, may not pick up on those subtleties thereby negating their valuable lesson.
Every state has a patent library. You can generally locate your state’s library through your local or state Chamber of Commerce, manufacturing alliance, or Small Business Administration. Most of these libraries have one or more librarians who specialize in the patent area. They will help you conduct your search, making certain that you access the right data and helping you interpret what you find. This service is available at no cost.
If you do the search yourself, be ready with key pieces of information before you contact the library for an appointment:
— Clearly identify your invention’s structural features, mode of operation, and intended use so that you know exactly “what” you desire to protect about it.
— Examine existing products on the market that are similar and record their patent numbers to help you get into the right sections for search.
— Take your technical drawing and prototype to the library with you so that you can show it to the librarian if need be. (Note: Although patent librarians are held to client confidentiality, they will gladly sign your nondisclosure document for extra protection.)
— Research only one invention at a time.
— Allow at least four to six hours to do the search.
You can, of course, hire a search firm to do the patent search for you. They can sometimes access additional information that is not always found in the patent libraries because of the lag time in updating materials. This type of search is not necessary, but it is an option if you do not have the time or want to bother with doing it for yourself. The services of these agencies can range anywhere between $500 and $5,000.
Step 5: PROTECT YOUR IDEA.
It is imperative to establish the date of your invention’s conception. This can be done one of three ways:
— Through an inventor’s logbook;
— By filing a disclosure document; or
— By visiting with a patent attorney or patent agent.
— One or more of those methods should be employed. Most experts in the invention arena agree that maintaining a logbook is the most desirable method should the date of conception of your invention ever come into question.
— An inventor’s logbook is essentially nothing more than a notebook with consecutively numbered pages which are sewn into the book. A spiral notebook or any notebook where pages can be removed without leaving a footprint are not acceptable as logbooks.
A proper logbook must follow certain guidelines:
— Keep a separate logbook for each invention.
— Keep a record of telephone calls and names and addresses of important contacts.
— Identify every entry as to its purpose and intent.
— Do not use scrap paper, backs of envelopes, or blank tablets for recording ideas; put any thoughts, notes, and doodles directly into the logbook.
— All entries must be arranged in chronological order on successively numbered pages with no skipped pages.
— All unused space on a page must be crossed out to prevent later entries under an earlier date.
If you must add a note to an earlier entry put it in the margin and date it so that it can not be misconstrued as an attempt to falsify records.
— Indicate the person working with you in connection with each entry and if they make an entry into the logbook, make sure they sign it.
— Use sketches to record ideas, design circuits, diagrams, and test equipment setups.
— Note engineering drawings and large sketches in the logbook by reference number, title, date, and with a description of what the drawing portrays.
— Glue or tape copies of small drawings, notes, clippings, photos, receipts for materials, equipment or labor costs for design directly into the logbook.
— Include items like memos, letters, progress reports and other material by referencing each with a date.
— Once an idea has been described and illustrated in the logbook explain it to a witness who will not receive any financial gain from the invention.
–Have all witnesses write at the bottom of each page, “(project name) described and/or read to and understood by me” and sign with witnessing date.
— Laboratory experiments and tests should be described and recorded in detail within the logbook.
The first operation of a prototype should be demonstrated to a witness who understands it and should be noted “operations and results observed of the (project name),” signed and dated.
— The logbook, and all intellectual property, should be stored in a safe place like a safety deposit or locked cabinet, file, or desk.
A second method of establishing the date of conception is by filing a disclosure document. This is filed with the Patent and Trademark Office (PTO) for a fee of $10. Two photocopies of the document must accompany the form. The PTO holds these papers disclosing the invention for two years, pending the filing of an application for patent. It is an accepted method of evidence of the conception date only. It does not provide any patent protection.
The final way to protect an invention is to visit with a patent attorney or patent agent. This establishes a date of record. Before visiting an agent or attorney, however, make sure that you:
–Have drawings of your invention completed;
— Have a prototype of your invention completed; and
— Have completed your patent search (unless you intend to pay your agent or attorney to do the search for you).
During your visit, be certain to make a full disclosure of your invention without holding back anything including the existence of any prior art of the invention of which you are aware. Should you decide to hire the agent or attorney to do your patent search for you, holding back information could inhibit their work and cost you valuable time.
Disregard anyone’s advice to describe your idea fully in writing and mail it to yourself without opening the envelope. This does not legally establish a conception date or provide you with any form of protection.
Establishing the date of your invention’s conception is important in the event someone challenges your right to the idea. However, it provides you with no protection whatsoever. You will need to obtain one or more forms of intellectual property to actually provide protection for your invention. This might include a patent, copyright, trademark, trade secret or some combination thereof. Each of these can be licensed which could be important if you think you may eventually sell your invention outright.
Formal federal procedures exist to gain patent, copyright, and trademark rights. Each state also has its own laws with regard to trade secrets, but all courts require that you demonstrate a diligent effort to keep the secret privileged and on an “as need to know” basis.
A patent is a issued by the United States Government to give the inventor the right to exclude all others from making, using, or selling the patented invention within the U.S. or its territories for a specific period of time. There are four kinds of patents:
— Provisional Patents which grant the inventor one-year patent pending status.
— Utility Patents for discoverers of new and useful processes.
— Plant Patents for distinct and new varieties of cultivated asexually reproduced plants.
— Design Patents for new, original, and ornamental designs or articles of manufacture.
— Provisional patents simply provide one-year patent pending status for an inventor. However, this is often a sufficient amount of time for the inventor to determine the ultimate marketability of his or her idea. It also affords the inventor time to explore methods of manufacture as well as marketing and advertising. Provisional patents are not complex and can be completed by many inventors with little or no additional assistance. There are, however, kits and books on the market that will help inventors who which to file on their own.
The cost of provisional patenting is relatively small at less than $300; a trifle amount in comparison to utility and design patents which can range anywhere from $700 to $10,000.
Utility and plant patents are effective for 20 years from the date the patent is granted and are subject to maintenance fees. Design patents are effective for 14 years. Patents may be extended only by special act of Congress, except for some pharmaceutical patents whose terms may be extended to make up for time lost due to government-required testing.
The basic filing fee for a utility patent is generally under $1000 but it will be somewhat dependent upon the applicant’s right to be titled as an independent inventor, small business, or nonprofit organization. Issue fees range between about $700 and $1500. Maintenance fees are due at 3 ½, 7 ½, and 11 ½ years from the date the utility patent is granted.
All patents must be novel, useful, and non-obvious. Novelty refers to the fact that the patent can not have been previously held, invented, or discovered. It must be new. Patents that are not new are likely to be denied due to “anticipation of prior art.”
Useful refers to the quality of the invention. It must, of course, work and be useful but it need not be better than similar products that might already be available.
Non-obvious means that the patent’s differences with prior art are not such that the subject matter, as a whole, would have been obvious to a person of ordinary skill in the art to which the subject matter pertains. About 60 percent of all patents that are invalidated by the courts are for this reason.
Design patents are much more complex and expensive. It is not advisable for the average inventor to attempt completion of a design patent without outside assistance. This is where patent agents and patent attorneys come in very handy. Their experience and expertise in this area can cut the application process by as much as one-half. Cost, on the other hand, can be excessive so inventors should carefully research agents and attorneys before choosing one.
Double and triple check your patent application after it is prepared, because once you sign the paperwork, it becomes an official document that is very difficult to change. Also keep in mind that the first communication from the PTO might be a rejection. Very few patent applications are approved without an initial rejection (only 10%).
Copyrights prevent others from copying, distributing copies, or making new works that incorporate substantial parts of original copyrighted work. In some instances it can even protect the copyrighted work from being displayed in public or from public performance. Copyrights protect:
Literary works and written manuscripts;
Works of art including picture, photographs, and even technical drawings;
Motion pictures and other audiovisual works;
Sound recordings; and
Unlike with patents, there is no requirement that copyright works be different from others, although there must certainly be a degree of originality. Although copyright has a limited scope that protects only the expression of the work and not the ideas, inventions, discoveries, procedures, or processes behind it, there is wide berth for interpretation of that “expression.”
Many highly skilled copyright lawyers have been able to prevent copyright infringement on inventions when patent lawyers have been unable to do the same regarding patent infringement. For this reason we routinely recommended that virtually all of our inventors obtain a copyright on their invention’s technical drawing. For a relatively small amount of money – – about $25 – – his provides an extra layer of protection.
A trademark is a word, name, symbol, device, or any combination thereof that is used to identify and distinguish the goods of a manufacturer or merchant from those of another. These are sometimes referred to as brands, logos, and/or slogans. Their purpose is to protect the consumer from deception and confusion. However, they also provide a kind of guarantee of the legitimacy of product or service.
Common law, state law, and/or federal law can protect trademarks. If the mark is used first in commerce, it is protected by common law only within a 20-mile radius. If, on the other hand, it is registered with the PTO, and sold in at least one other state, it is then protected in all 50 states regardless of whether it has actually been sold within those states.
Trademark owners can register their mark for use in commerce by filing a written, signed application which outlines the date that the mark was first used in commerce and for which goods and/or services the mark was used. A drawing of the mark, a typewritten representation of the mark, or an actual black and white pen and ink representation of the mark and three examples that illustrate how the mark will be used, must accompany the trademark application. The application fee is around $350 per class of goods or services.
If, on the other hand, the mark is to be used commercially, the entitled user must file a written and signed application that explains how the user intends to use the mark. He or she must also file a drawing of the mark along with a statement of “intent to use.” However, actual registration for the mark cannot be obtained until after actual use of the mark in commerce has begun and evidence of such use, including examples have been filed. The application fee in this instance is around $250 with an additional $100 due upon filing of evidence of use.
If the PTO approves the trademark application, it is published in the Official Gazette of the Patent and Trademark Office. For 30 days following its publication, anyone may step forward and challenge or oppose the issuance of the registration. If no opposition or challenge is filed, then the registration is issued.
Each trademark must be maintained through the filing of an affidavit of continued used between five and six years after the certificate of registration is issued. The registration term itself, however, is for ten years and may be renewed for consecutive ten-year terms so long as the mark remains in use.
For advice in determining which protection or protections are best for your invention, speak with somebody who has expertise in intellectual property. They can advise regarding the cheapest – – yet most prudent – – forms of protection and guide you through the intellectual property maze.
Step 6: DO MARKET RESEARCH.
Before jumping in with both feet and manufacturing your invention, it is important to determine whether or not a market exists for the product. Although market research can be boring, time consuming, and tedious, it is designed to provide a wealth of information that will enable you to make smarter decisions.
A lot of inventors elect to hire a market research company to complete this step for them. It is certainly not a bad use of extra funds if you have them available. However, if you don’t there are some things that you can do on your own.
Although your product may not have a direct competitor, it likely has many indirect ones. For each similar product that you can identify, research its advertising history. Pull magazine and newspaper ads, brochures, and other paper pieces. Listen to radio or television ads at least three times each. You are seeking to answer these questions:
How do they traditionally market their product?
Who do they market their product to?
Do they carry other products in their line?
Next, personally visit with as many industry experts as possible. If they aren’t within a driving distance, then give them a call or email them. Industry experts include anyone who can made the decision whether or not to carry your product. They typically include wholesalers, distributors, buyers, and business owners. Most of these experts have enough years in the industry that they can give you an informed opinion with regard to the possibility of your invention’s success.
Also quiz them for their knowledge on areas like:
Market size for products like yours;
Typical consumer demographics;
Accepted methods of selling;
Acceptance of new products in the industry;
Target marketing; and
Problems within the industry.
Next contact magazines and trade journals within your product’s industry. Write to each requesting a media kit. These kits contain rate information, magazine samples, monthly advertising specials, and a lot more valuable information. A lot of magazines have free promotional offers for new products that you may need to use.
Play detective. Get creative. Take good notes. All of this marketing information will be helpful if and when you decide to take your product to market.
Once you have completed all of these steps in the invention process, it is safe to assume that you may have a good product. Now you must decide how you wish to proceed further. There are basically four options:
Start your own business to manufacture, market, and distribute your invention.
Sell your idea to an existing competitor.
License your idea to a third party.
Begin by doing it yourself and proving the market and then sell the company along with the invention. Under another article entitled “I Have an Invention: Now What Do I Do?” I will cover these four choices in detail.
Getting your idea from your mind to a workable and sellable product will take time and it will not be easy. You will be forced to ask yourself some difficult questions:
Does my idea work on paper?
Does it truly solve the problem I identified better than other solutions?
Is the idea feasible and sensible?
Is there a market for my idea?
Who and what is my competition?
Will I make enough profit to make this invention worthwhile?
Lying to yourself on any of these issues will only cause you heartache in the end. Therefore, be prepared to be brutally honest with yourself. If you are going to ask others for their opinions, prepare to hear their honest responses as well. In fact, encourage them to be open and honest. Throwing money away is not the goal here; making money is but you can’t do that by circumventing the system.
Lastly, consider hiring a legitimate evaluation service to take a look at your product. Most of these kinds of services are university based and are relatively inexpensive; between $200 and $350 per evaluation. If you can get through your own, your friend’s and family’s, and a legitimate evaluation service with your idea still in tact, you may have actually struck gold. At the very least, you will know that you have greatly enhanced your chances of success.