Want to learn what every inventor should know from an industry expert?
Our Guest Blogger, David Pressman is a patent attorney in San Francisco. He is also the author of the best-selling book and well-known guide for inventors, "Patent It Yourself". He wanted to share some valuable advice with the readers of InventorSpot.com.
Here's his article:
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Here is a list of ten rules I recommend that every inventor follow in order to avoid major pitfalls in inventing and exploiting inventions. This list is by no means exhaustive, but if you follow these basic rules you'll avoid most major mistakes that novice inventors make.
1. Learn And Become Familiar With All The Forms Of Intellectual Property:
If you've come up with an invention, prior to deciding to try to patent it, you hold become familiar with all of the forms of intellectual property to be sure that a patent is the proper form of monopoly, or that it isn't the only form of monopoly to which you're entitled. Here are the seven types of intellectual property and a brief description of each; for a fuller discussion see Ch. 1 of PIY.
- Utility Patents: can cover articles, machines (incl. circuits), compositions of matter (including animals, bacteria, etc.), processes (including programs and business methods) and new uses. The invention must be useful, novel, and unobvious.
- Design Patents: Covers articles whose shape or markings are ornamental, rather than utilitarian. Most suitable for utilitarian articles with integral design features. The design must be novel and unobvious.
- Plant Patents cover asexually reproducible plants, usually followers.
- Trademarks: A TM is a brand name for goods or services. Common-law rights arise from use, but it's better to register the mark with a state TM office or the US Patent and TM Office.
- Copyright: Covers works of authors, artists, photographers, composers, programmers, etc. Covers only a particular form of expression of an idea, but not an idea per se. Not good for forms, TMs, slogans, methods, lists, formulae, utilitarian articles (unless artwork is separable from article), etc.
- Trade Secrets: Covers novel information that has some commercial advantage. The information must be kept secret and must be undiscoverable from final product, even by reverse engineering. Usually only chemical formulae, industrial and commercial processes, and programs with controlled distribution can be covered by TS.
- Unfair Competition: A catchall category based largely on judge-made law and "false-designation-of-origin statute" to cover trade names, slogans, trade dress, unfair practices, unjust enrichment, "palming off, etc.
2. Avoid All Fee-Based Invention Developers:
Almost all invention developers that require a fee are rip-offs and will do little more for their exorbitant fee than make a brief search and broadcast a brief blurb about your invention to some manufacturers. I call these firms Fee-Based Inventor Exploiters (FBIEs) since, as inventors' exposition promoter Stephen Paul Gnass says, they make their money from inventors, rather than inventions. Before you sign up with any FBIE, ask them for their track record, i.e., how many of their clients have gotten more money back than they paid the FBIE. Also look up any complaints other inventors have made about the FBIE on the US Patent and Trademark Office's Inventors' site: http://www.uspto.gov/web/offices/com/iip/complaints.htm. I believe that all inventors can do a better job of getting their invention out on the market by communicating with prospective manufacturers with a sincere and direct approach, rather than using a FBIE.
3. Follow Proper Procedure:
After you conceive of an invention, you should be aware of and follow the following step-by-step procedure for handling the invention. This procedure can be remembered by the acronym RESAM, which stands for
- Record conception and building and testing by an invention disclosure or a PPA (Provisional Patent Application), but note the disadvantages of a PPA.
- Evaluate commercial potential.
- Search patentability.
- File an Application: in the PTO (Patent and Trademark Office).
- Market it to a suitable manufacturer.
These steps are each covered below.
4. R = Record Conception and Building and Testing:
In the US we have a "first to invent" system, which means that the date you think of (conceive of) an invention or build and test it can be more important than your filing date. In order to take advantage of our system, once you invent something, you should record your date of conception to prove you invented it and when by writing a full description of it, with sketches if possible, as soon as possible, sign and date it, and get it witnessed and understood by one or two others who should also sign and date as witnesses. Full instructions are in Ch. 3 of Patent It Yourself (PIY). The description need not be well written or a legal document, but should be clear and complete enough to be understood by someone else. If possible you should also build and test it to complete your date of invention. Make a full record of the building and testing, with photos and test results, if possible, and get it witnessed and understood again by one or two witnesses. In lieu of building and testing you can file a PPA (Provisional Patent Application in the PTO (cost: $100), but there are disadvantages of a PPA of which you should be aware; these include the fact that a PPA must clearly teach how to make and use the invention and that it expires in one year if no regular patent application is filed.
5 E = Evaluate commercial potential:
Most inventors are aware that the overwhelming majority of patents are unprofitable for their inventors, i.e., the product or process covered by the patent fails to be commercially implemented. I believe one of the main reasons for this failure is the fact that the inventors of these failed patents did not evaluate commercial potential before filing. Every invention has one or more drawbacks that prevent it from becoming a success. It's true that the degree to which an invention is promoted often makes the difference between failure and success, but some drawbacks are so serious that no amount of promotion will work. So I recommend that you carefully list and review all of the possible advantages and drawbacks of your invention before proceeding. A list of all of these is in Ch. 4 of PIY.