The Brutal Truth About the Invention Process - Part II
Have an invention idea? Need help and advice about your invention?
Ed Zimmer has written what I think is one of the best articles on the web for inventors, "New Product Licensing" on his helpful website The Entrepreneurs Network.
I thought is was one of the best distillations of the challenges of the invention process and it offers priceless advice for inventors. Yesterday, we had Part I. Tomorrow, we'll have Part III.
Here's Part II of his article:
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You want to try anyway?
You now understand that the odds are stacked heavily against you. But you may have a licensable idea -- it does happen -- people outside the industry sometimes do see things that those inside the industry don't. If you want to give it a shot -- despite the odds -- how can you go about it?
First, avoid the "invention promotion" companies you may see advertised who "promise" to do it all for you -- they almost certainly won't -- despite the substantial monies you'll have to pay them.
There are a few "invention agents" -- who don't advertise (you'll have to dig deeply through the inventor community to find them) -- who might take on your idea on spec (i.e., for a share of your share of the possible profits) -- but they're even less likely to take on your idea than the companies themselves -- and most of them will charge you an "evaluation" fee (which will only evaluate whether they think they can license the idea).
So face up to the fact that if a licensee is to be found for your idea, you are the one who must do it -- there's no one who will do it for you -- and if you feel you can't do it, go back to my original advice to "forget the idea and get on with your life".
What about a patent?
If you're thinking that companies might go looking through issued patents to find new products -- they don't. The only reason they look through issued patents is to find "prior art" (i.e., already patented features and methods) that they must design around in the development of their own new products.
Does that mean that patents are a waste of time and money? Generally, "yes". What good will a patent do you if your idea proves not licensable for any of the reasons above? A patent will cost you several thousand dollars -- and your risk/reward ratio is in the same neighborhood as "investing" it in your state lottery. (The lottery's odds are a bit longer, but its jackpot is greater.) And don't expect a patent attorney to tell you whether you can get a sufficiently broad patent -- only you can determine that. The attorney simply doesn't have the market knowledge to assess what's important in your market.
If you're prepared to research your idea -- fully and thoroughly -- see the series of articles by Andy Gibbs [at The Entrepreneurs Network] or Myra Per-Lee's Inventor Advice Blog [at InventorSpot.com] for a better understanding of what's involved -- a patent (or more likely patents) may make sense. But do the research first -- as your research will most likely show you why your idea isn't licensable. And even if it appears to be licensable, you'll find that the time and costs to make it licensable will be substantial -- much greater than simply the patent costs.
Using provisional patent applications.
When the Provisional Application came into being, I had hopes that people with a new-product idea might finally have a way to safely show their ideas to industry at a reasonable cost -- ... But that has proved not to be the case.
For a provisional to offer any "protection", it must be both enabling (i.e., must completely and accurately describe how to make and use the device) and thorough (i.e., it must also describe the device broadly enough to provide adequate support for all of the patentable features of the device in a later non-provisional application).
Evidence indicates that most people trying to use the provisional cannot do this even close to adequately -- and if they go to a patent attorney to draft it for them, they find that the cost is almost as much as filing a non-provisional patent application (and many practitioners will, rightly, urge them to bypass the provisional and simply file the non-provisional).
So we're back to where we were before the provisional came into law -- spend a lot of money -- to safely show a new product to industry -- that they probably don't want.
There is a solution you can try.
In the "old days" (before the provisional), cost-conscious inventors would try to arrange with their patent attorney to hold their important intellectual-property papers in the attorney's file -- and then contact their licensing prospects to see if there was any interest. This was a relatively "safe" method because -- if a company was interested -- and knowing that a patent attorney was involved -- it would be extremely unlikely that the company would try to do anything with the idea without at least talking with the patent attorney. And if it appeared that useful patent protection could be obtained, the attorney and the company would work together to ensure that the best possible protection was obtained (and that the inventor received a "fair" deal).
This is still a fine approach to licensing. However... You'll find it difficult to find a patent attorney who will work with you in this way -- you're a "nuisance" to his normal workflow. And even if you do find one, he will likely insist that you first pay him to do a professional patent search -- if one of the companies you contact does contact him, he needs to be prepared to discuss with the company exactly what might be patentable. And you may find it awkward -- when the licensing prospects you contact ask whether your idea is patented -- to explain that no it isn't, but your important intellectual-property papers are in your patent attorney's files.
Although the provisional does not provide the low-cost vehicle that I had hoped it would, its existence in current law does open up a variation on the old approach that avoids the difficulties. Here are the steps:
1. Compile a list of your licensing prospects.
2. Write up and file a provisional application.
It doesn't have to be a "good" write-up because you're never going to show it to anyone
3. Contact all the companies on your "prospects" list.
When they ask whether your idea is patented, say that it's "patent-pending". If they ask if that's by provisional or non-provisional, say "provisional". If they ask what the idea is, tell them as much as they want to know -- there's nothing to gain by holding anything back (and much to lose if you do). If they want to see more information, send them a clear and complete description of the product or improvement -- but not one that looks like it might have been written as a provisional application.
As noted above, you'll probably find that none of your prospects are interested -- however it's only cost you the provisional application filing fee (currently [$100]) and a couple of months of emails and phone calls.
But, hopefully, one of those prospects is interested. They'll ask to see your provisional. Do not show it to them -- put them off by saying something like, "I've made some design changes since the provisional -- so I won't be citing the provisional in my formal application". (Never give any indication that you might not be following through with a formal application.)
Then negotiate with them to pay for the formal application. The cost to them is trivial compared with the other costs they face in bringing the product to market -- and if a broad patent is possible, that's as much in their interest as in yours. (The patent will be in your name, as only the true inventor can file for patent.)
If the company likes your product and wants to bring it to market, you've put them in a bind:
* They can't go ahead without you -- because they don't know what you're patenting -- they have to assume it's the broadest patent possible -- and they have to assume that you'll be following through with your formal application, so that -- about the time they get the product to market -- and it's starting to make money for them -- they have to expect that they'll be faced with your patent issuing.
* And they can't "wait you out" -- because a patent can take several years to issue -- and it will be a long time (probably past the market window) before they can be sure you didn't follow through with your formal application.
Their only rational business decision is to work with you.
Understand that this approach has nothing to do with "intellectual property law" (other than that the existence of the provisional in the law makes it possible). What you're doing here is running a business bluff -- but a bluff in which no one can ever see your hand, unless you accidently show it -- or you allow someone to trick or coerce you into showing it.
The people you'll be contacting are pros -- they're fully capable of bluffing back. You're very likely to hear, "We're very interested in licensing your idea -- but we can't move forward until we see your provisional". You have to be prepared to simply say goodbye. They weren't really interested in licensing at all -- all they wanted was to see what you were planning to patent.
Ready to learn more? Read Part III tomorrow.
[Editor's Update: With the new patent laws in effect with the America Invents Act, it becomes critically important to be first to file. You should consider the benefits of the bluffing strategy mentioned here as well at your overall patenting strategy carefully in light of the first to file changes to U.S. patent law.]
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Is there anything the author is missing or has gotten wrong? Is there anything you disagree with or agree with?
Read: The Brutal Truth About the Invention Process - Part I
Read: The Brutal Truth About the Invention Process - Part II
Read: The Brutal Truth About The Invention Process - Part III
Warning & Disclaimer: The pages, articles and comments on InventorSpot.com do not constitute legal advice. The articles published express the personal opinion and views of the author and should not be attributed to InventorSpot.com.
Article originally published in February 2007 and updated in May 2015.