How to Decide What to Do Next
By Jack Lander
The burning question most inexperienced inventors ask me is, “I have this great idea, what should I do next?”
1) Determine what has already been done that’s similar to your invention.
2) Decide which road to success is best for you, based on your personality and your resources.
3) Weigh the costs of entry against your resources and decide if a patent is the best use of your money.
4) Decide to proceed with or abandon your venture.
A patent search is an obvious first step for two reasons: It enables you to determine your approximate chances of getting a patent. And it reveals what others have invented along the same lines as your invention.
If your search reveals many patents, it may indicate that the opportunity to profit from your invention has come and gone.
For example, an inventor came to me with what he assumed was a novel toilet-paper holder. A quick Google.com/patents search revealed 3,190 references.
Conversely, based on simple patent searches, inexperienced inventors can conclude there is nothing like their invention in the patent archives. And it may be so.
But jumping to a conclusion from a simple search and competently preparing a patentability opinion are miles apart.
While anyone can conduct a patent search, only a patent agent or attorney registered with the U.S. Patent and Trademark Office can give a credible patentability opinion. You can form your own opinion, of course. But chances are it will be wrong.
Most novice inventors are unaware of the “unobviousness” rule. An invention must be unobvious to one skilled in the art of designing and making the invention when it becomes a product.
Patent examiners form their own opinions of what is obvious based on all the patents that are similar to your invention.
For example, if three simple features from different patents combine to form the more complex feature of your invention, the examiner may find your invention too obvious to qualify for a patent.
If you file for a patent without knowing the details of competing patents, your chances of having your application rejected are high. And, of course, the cost of rebutting the patent examiner’s objections to your application also may be high.
Patent agents and attorneys can give you “file/don’t file” patentability opinions without reasons given, or a more complete opinion that rationale. The latter offers more peace of mind.
If the recommendation is against filing, you may find that you can redesign your invention to get around patents that would prevent your patent from issuing.
Patent searches generally range from $250 to $500 depending what type of patentability opinion you choose.
If you follow through with a utility patent application, the cost will generally be between $4,000 and $10,000 depending on the prior art and the complexity of your invention.
Although a patent, or at least a provisional patent application, is a necessity for the vast majority of inventors who hope to license, you may find better uses for your money if you intend to produce and sell your product on your own.
In addition to patent searching, you should search products that are being sold. One of the easiest ways to do this is to go to www.amazon.com and review similar products.
A search in brick-and-glass retail stores can be productive, but Amazon has many more varieties of products than are found store shelves.
If you have your heart set on licensing, you may find that the prior art (mainly patents) will prevent you from obtaining a patent. Your alternatives are to give up, try to license your idea without a patent or to produce and sell on your own.
Producing and selling may not be feasible if it is clear you will infringe an enforceable patent.
It may be possible to form a partnership with an independent inventor who holds an obstructing patent or even license his patent. This is less likely if the patent has been assigned to a company.
But assuming that the patent(s) that prevents you from getting yours is no longer in force – that is, older than 20 years from the date of its filing – you’re probably free to produce without fear of infringing. It’s a good idea to have a patent agent or attorney check this out.
Your personality also is a key to determine whether you should license or produce and sell.
If you are a highly creative person who is always inventing, and you didn’t have a paper route or a lemonade stand when you were a kid, you probably aren’t sufficiently entrepreneurial to succeed as a producer and seller.
Both traits in one person are rare. Most of us who are born creators find it difficult – even distasteful – to wear an entrepreneurial hat. As the Bard said, “This above all: to thine own self be true.”
Your resources also will affect your decision whether to license or produce and sell.
If you don’t have the money for a patent and your product is simple and doesn’t require a large cash outlay for special tooling, you might consider a low-key startup.
Many inventors market exclusively from their websites and have been able to set up production for about $1,000. You’ll need to do a lot of the grunt work yourself at the start, including launching your own website. Web hosting companies such as Go Daddy, FatCow and Webhostinghub can help.
Once you’ve decided which path is right for you, even if your patentability opinion indicates that you probably can get a patent, you should form a budget for your venture.
Is a patent really is the best use of your money?
If you plan to license your product, in my opinion you’ll need a utility patent – or at least have applied for a utility patent.
Some say you can license your idea without a patent. Indeed, this magazine has devoted many pages to those who have inked licensing deals without patents. (See the September 2011 cover story, Quest for Royalties.)
But my experience is that corporations insist you sign away all of your rights except those granted by your patent. An inventor who also is a polished negotiator might be able to license an idea without a patent. But for most of us such proposals most likely will land on deaf ears of the corporate legal staff, whose job it is to protect the company from legal entanglements with inventors who think their ideas were stolen.
If you plan to produce and sell on your own, getting into the best marketing channels first is sometimes as good as having a patent.
The main consideration is your budget.
If you have money left over after investing in startup expenses, production tooling, inventory, marketing efforts, etc., then you also may want a patent.
As the inventor, you’ll have a year to test the market, and maybe even earn enough to afford a patent. But if you’ve spent so much money on your patent that you can’t afford the vital elements of your startup – production tooling and inventory, for example – you may end up a failed entrepreneur.
Decide to proceed or abandon.
The four steps above don’t answer every detail. There many things to consider when developing a new product – prototyping, marketing, packaging, business plans, off-shoring, sell sheets … the list goes on.
Another reason to keep reading. Stay tuned for more insight in upcoming editions.