By Jack Lander
Many inventors have spent up to $15,000 on their inventions only to find that their product isn’t marketable.
Sometimes this is due to obstacles that, despite our best efforts, we couldn’t have foreseen. But more often it is because those we hire to perform services for us have failed to uncover or disclose the obvious.
I see the same failures over again. Here are the most prominent. Don’t repeat them.
Risk #1: Getting a search without a patentability opinion
I’ll call him Joe – the fellow who sent me a stack of mail he had received from one of the well-known companies that assists inventors. I had requested his patentability opinion so that I could advise him on his next step.
The stack contained a form letter from the company that began “Dear inventor.” It recommended filing a provisional patent application or PPA. The lack of etiquette of this company in neglecting to address Joe personally is a first clue that it might be the wrong company for our needs.
The papers also contained the results of a patent search by a law firm. The firm’s letter, seemingly all in template format, states that its search was limited to U.S. patents and patent applications. In other words, there was no search of foreign patent files.
It also states that no search was made for products, currently available or obsolete, that are not patented. The prior art information consisted of the abstracts of five patents – not even the drawings, which are usually the first thing inventors want to see in order to make a quick comparison with their own inventions. Visual comparison, although it can be misleading, is much easier for most of us than reading through the legalese of abstracts or claims.
Finally, the letter states that no patentability opinion is given for an eventual utility patent.
What Joe thought he would get was a patentability opinion he could trust for eventually filing his utility patent. What would be the point of filing a PPA if a search opinion had concluded that he would have no chance of getting a meaningful utility patent?
But what he got left Joe to decide on his own whether to file.
The letter’s wording throughout is subtle, and an inexperienced inventor could, and probably would, assume that since it didn’t suggest that he not file, that he should file.
Of course, it came from a law firm, and they certainly know how to word letters so that they are not committing malfeasance. But, damn it, my opinion is that at best Joe’s search is worth very little, and at worst it is misleading.
Why pay a law firm for a search if you have to form your own opinion? You can either do your own search or pay $250 to a responsible, non-attorney searcher who will do it for you. One of the searchers I use even provides a “file or don’t file” opinion from a patent attorney at no additional cost. Email me at Jack@inventor-mentor.com for his contact information.
Before you order a search, make sure you will get at least a “file or don’t file” patentability opinion. Although it costs more, a patentability opinion that gives reasons why you probably can or can’t get a patent is best. It may reveal a way that you can alter your invention to get around the obstructing prior art if the answer is “don’t file.”
Risk #2: Assuming because you haven’t seen it in a retail store, your invention doesn’t exist
Retail stores can’t afford to carry products that gather dust on their shelves, and don’t meet their return on investment or ROI goals.
Let’s say that you’ve invented a new manual can opener. You check Walmart, Target, your supermarket, etc., and you find that each store carries only one or two models.
However, by entering “manual can opener” on www.amazon.com you’ll find hundreds of manual can openers.
A product that is significantly like your invention is the most certain form of prior art. A product search is just as important as a patent search for clearing the way to file your patent application, and you can do a product search yourself.
Risk #3: Being paranoid about revealing your invention
The late Stanley Mason, a Connecticut inventor of at least a hundred commercialized products, once said to my inventor group: “People steal products. They don’t steal inventions.”
Many inventors ask me if I think an invention promotion company will steal their invention. I tell them that it takes a lot of work with a risky outcome to develop and bring an invention to market. It’s much safer, and almost certainly much more profitable, to sell promotion services.
It makes sense to get confidentiality agreements from prototypers, photographers, CAD drafters, etc. Patent searchers, patent agents and patent attorneys, by the nature of their professions, are bound to confidentiality.
Don’t blab your invention concepts to the fellow you meet on an airplane. On the other hand, you have much to gain by discussing your invention with friends and inventor club associates. Most of us have so many inventions on the back burner that we would never be tempted to steal someone else’s.
Risk #4: Procrastination
Most inventors I know, including me, are procrastinators. We jump from one idea to another and another without completing the first. With the new “first to file” provision in the America Invents Act, if you’ve got a hot idea, set the others aside and file at least your provisional patent application as soon as you can. Good ideas are simultaneously in the ether.
Elisha Gray and Alexander Graham Bell filed patent papers on the same day in 1876. Coincidence? Not really. Every invention has an antecedent. For the telephone it was the telegraph. If you could send vibrations – fast dots and dashes – over wires, why not the human voice? There were many people thinking along that line and working on ways to do it.
In fact Phillip Reis preceded Bell by 15 years with his model. Antonio Meucci is said to have a working model five years before Bell filed his patent. And for some strange reason, Thomas Edison never filed a patent on the “talking telegraph” he developed in 1875, a year before Gray and Bell.
I wonder how often Edison kicked himself over that bit of procrastination. But don’t feel sorry for him. He’s the fellow who made the telephone practical over distances by his invention of the carbon microphone, used in all phones until sophisticated electronics took over in recent years.
Risk #5: The Goldilocks choice
It’s intellectually gratifying to come up with an idea that’s way ahead of its time. But it probably won’t reward your bank account. What industry needs are inventions that consumers are ready for. If we’re a little too far ahead of time, the market must be educated and appealed to with expensive advertising to create sales.
Unless the invention/product promises to have an enormous payoff – electronic tablets, for example – you’ll probably find it impractical to market it. Maybe set it aside and wait patiently for the market to catch up with you.
Entering the market too late is also discouraging due to entrenched competition. What’s needed is the “porridge” that’s not too cool and not too hot, but “just right,” as Goldilocks would have it.
Yes, inventing is a risky business. But I’m not about to give it up. I’m already working on my second million dollars. My first million just didn’t work out well at all. Procrastination maybe?