FAQ

A. ANSWER from Joanne Hayes-Rines, Inventors Digest

#1. Do a patent search. You can do one at a Patent and Trademark Depository library. Check http://www.uspto.gov/ for location near you.

#2 Do a market search. Determine where the product will be sold (hardware stores for hardware items, sports outlets for sports item, etc.). Talk with the department manager or buyer in the store and ask if they have a product that solves the problem. Also, go to the library and check every magazine/trade journal in which similar products would be advertised.

#3. Consider filing a patent application if #1 & #2 look good. I’d hire a patent attorney or agent to do a thorough search, then based on their opinion of patentability determine if you should file a patent.

#4 Do a test market study. Manufacture a small quantity, package them well and have a local store(s) sell them. You mention that it “could be sold anywhere” well, that’s not really true. Where would people look for such an item? That’s where you try to get them sold.

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ANSWER from Joe Cote, Director, Business Development Arthur D. Little Enterprises, Inc. (Please visit our web site at www.adlenterprises.com)

The first people I would talk with are inventors like yourself who have been through the process of commercializing their products. These people will be able to tell you what they went through, what concerns they had and how they dealt with them. They can also suggest to you others who may be able to help you commercialize your product.

If your product has patent potential you may want to pursue that avenue. If it can not be protected through some legal means you must be more careful. Depending on the market potential of the product just by introducing it to consumers others may produce knockoffs very rapidly. I would strongly recommend that before you talk with anyone about your ideas that you have them sign a confidentiality agreement that keeps all you proprietary information confidential for a specified amount of time. If your product is protectable by patents, has a significant licensing potential and is demonstrable, you may want to take it to a product development company and contract with them to commercialize the product and share a royalty stream.

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ANSWER from Bob Merrick Inventor/ Entrepreneur and Author of Stand Alone, Inventor! 1-800.426.5454 www.bobmerrick.com
You are right to be concerned about protection of your invention.

I would suggest that you complete and file a $75 Provisional Patent Application which will give you patent pending protection for up to one year. To learn more go the the Patent Office site at www.uspto.gov

I just filed one, and the moment I mailed the application I had legal patent pending status that allows me to shop for vendors and disclose my invention as needed to develop it. Before a year is up, I will need to decide if a more expensive, 20-year patent is called for. You could do the same.

Once you have filed, please let me know what you have and perhaps I could help. Bob Merrick 1-800.426.5454

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ANSWER from Ed Tutle, inventor & licensing expert
Your fear of being taken seems to be excessive. Unless you can afford to make and sell, you will need others to help you. You express the opinion that you have some thing that everyone needs and will be cheap to make. You can only make such assumptions if you are expert in the business trade your product would be marketed. If it has such universal appeal in must be a mass market item and will take a lot of investment capital to make and sell. Do you have an idea of what it takes Gillette just to introduce their new razor into a mass market?

To be brutally candid, you are not ready to do business as your attitude will allow you to be taken by someone who will size you up, and give you words you want to hear.if what you have is as good as you think it is. I occasionally get people coming to me with your attitude and I tend to send them away, as there is little anyone will tell them candidly, that they will believe.

If you want to be credible, you will have to provide non-enabling information about your idea(s), so that people can get an idea how to be of service. Go back and learn how to sell your ideas and know your market. You will then be able to know if you are dealing with ethical people! Not all out here who might be helpful, are unethical.

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ANSWER from Paula V. Serber, partner in Princeton Products and a product development/marketing consultant
First, to address your distrust of others that could potentially help you develop your product, there is always the nondisclosure agreement (NDA). Understand many professionals make their living assisting inventors like you, they would not be in business if they were just out to steal ideas. Getting yourself educated on the product development and marketing process (through talking to people in these areas as well as research) will greatly reduce the chances of you getting scammed out of your hard-earned money.

Regarding the design of your product, I would ask how far along are your designs and what materials and manufacturing processes are involved? Whether or not you need to go to a design engineer depends on the answers to these questions. If the product consists of one plastic injection molded piece, chances are you can go directly to a mold maker. If it is fairly complex, it is best to work with a design engineer who can finalize the design and recommend materials to maximize the efficiency of the manufacturing process. Once you have a good design talk to several manufacturers and get quotes on various quantities, then compare.

You should consider filing a patent application only after you determine your innovation has a sizable market, and there would be a reasonable profit margin after manufacturing and distribution. These points are the primary factors of marketability. Many inventors have wasted thousands of dollars on patenting because they did not first do their due diligence.

As far as product marketing, inventors have basically two choices, 1) licensing and, 2) venturing. To license your product means you grant the right to a manufacturer to make, market and sell your product in exchange for a royalty. The royalty is paid as a percentage of sales, or a per unit dollar amount, or some other arrangement. The benefit to licensing for the inventor is it is far less risky than venturing and there is no capital outlay (other than what has been invested in development). The right manufacturer already has the channels of distribution in place and hopefully the funds to properly market product. The disadvantage is the loss of control over the sales and marketing.

In venturing the inventor makes and markets the product himself. This is a highly risky, but possible, prospect. The more business experience the management team (notice team, not necessarily inventor) has, the greater the possibility of success. What prevents most inventors from going the venture route is the large amount of up-front capital required for manufacturing, building inventory and marketing the product. It is easy for an inventor to think that because his product is inexpensive to make that he could easily operate his own venture. T hey forget that an inventory must be built and maintained. Additionally, proper marketing must be done to make the target market aware of the product and to create the demand. This is usually not cheap. I should also add that if the product is one that is best sold through retail outlets, mass merchandisers for example, there will be the hurdle of convincing a buyer to take a chance on your new product and new company. It will be all the more difficult if your company is a single-item manufacturer.

To avoid getting scammed by unethical predators that prey on unwary inventor, it is your responsibility to educate yourself on the development and marketing process. To mitigate the chances of wasting your time and money, I advise you to know your product works and is marketable prior to filing a patent application. ,If you take these steps it will at the least insure that invention development will be a positive and educational experience, and at the most dramatically increase your chances of having a successful product.

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ANSWER from Mark Francis, Openize Ideas, Inc.

I would recommend that you do a patent search first before going much further. It is possible that your idea has been conceived before and that you will need to get on to your next idea.

You can carry out a preliminary search on the internet and see where this takes you.

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ANSWER from Jim Petruzzi, co-creator of PatentPro software

The U. S. Patent Laws protect new, useful, and non-obvious ideas. You can get a lot of information about patents from the government at their web site (www.uspto.gov). You can also do some rudimentary searching of prior U. S. patents at that site to see if the idea has been patented in the US before. Also see www.patents.ibm.com for searching U. S. patents.

If you decide to prepare an application for patent, the national average that Patent Attorneys charge for a patent application is between $5,000 and $6,000-reported by the American Intellectual Property Association (AIPLA). You can also prepare your own application with a software package called PatentPro (www.4patpro.com). The software was reviewed in Inventors Digest in June 1997 and received very favorable marks. Quite uniquely, the Software comes with both technical and legal support by registered Patent Attorneys at no extra charge. Applications for patents sometimes open marketing and investment opportunities.

PatentPro-Customer Service – PatentPro includes attorney review of application Kernel Creations, Ltd. http://www.4patpro.com toll free 1-888-472-8776 Do-it-yourself Patent Application Software

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ANSWER from Carol Oldenburg, Administrator, United Inventors Association of the USA
In general, if you’re at the beginning of the process of product development, it’s always a good idea to have your product concept evaluated for both technical and commercial feasibility. This would also include a preliminary patent search. There are a few recommended innovation assessment centers that can provide this service for a relatively small fee, ranging from about $175 to $500.

It’s important at this point to be aware that there are also several fraudulent invention promotion companies operating around the country who will also offer to do an evaluation for around the same price, but they will not be valid evaluations. Furthermore they will try to convince you to spend further monies to patent and market your idea, regardless of its true feasibility. Your best bet at this point is to contact a local inventors support group in your area for guidance and referrals to reputable service providers. You can also learn a lot about the do’s and don’ts through reading and a visit to the nearest Patent & Trademark Depository Library(PTDL), where you can do your own preliminary patent search.

To contact a local inventors groups or to learn where your nearest PTDL is located you can contact this office and we’ll give you that information. You can reach us at [email protected]

A. ANSWER from Joanne Hayes-Rines, Founder, Inventors Digest
Do be sure to check the references of any companies that you are thinking of doing business with. Ask for names and phone numbers of clients who have used their services and call them to see what they think of the company. Also, check with your State’s attorney general’s office, department of consumer affairs. See if they have anything on the company. You can do your own patent search at a Patent and Trademark Depository Library. To find the one nearest you, go to the Patent Office web site at http://www.uspto.gov

It’s hard to sell a design to a company without knowing if someone already owns the rights to it (a patent) so I’d say you have a lot of work to do before you could interest a company in your idea.

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ANSWER from Joe Cote, Director, Business Development Arthur D. Little Enterprises, Inc. (Please visit our web site at www.adlenterprises.com)
You have asked the classic new inventor question of the ages “How do I market my great idea for a new product?” Unfortunately the answer is not an easy one, nor uncomplicated.

My usual best source answer to new inventors is to talk with the experts inventors who have been there before and know exactly what you are facing. Without giving away your idea, they can counsel you on the process they went through and what the pitfalls are. Most states have a local inventors group that can be of great assistance to you.

These inventors and various sources on the Internet and local libraries can help you identify whether your idea has been pursued before or can reasonably be considered a patentable invention. But before you spend any serious time and money on this endeavor, try to determine what the size of the market is for your product. Is there a business to be made from your product or is there a BUSINESS to be made. The larger the ultimate market the better the chance there is for a company to buy your idea­assuming your idea is protectable. Without some kind of legal basis to protect your idea (patent, trade secret, copyright, etc) companies rarely pay for access to your ideas.

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ANSWER from Bob Bell, patent attorney
I don’t mean to discourage you, but trying to sell an unproven idea to a company is probably the hardest way to proceed and the least likely to be successful. Crooked invention brokers promulgate the myth that “companies are eager to get new ideas” –it just ain’t so!

If you are prepared to spend the time and money developing your idea into a product, you are much more likely to be successful but even then the odds are against you! Don’t risk or spend your life savings, retirement money, or mortgage your home. Don’t risk more than you can afford to lose.

As for crooked companies, you are doing the right thing by subscribing to INVENTOR’S DIGEST . ID is a beacon of hope in the dark sea of con-artists, come-ons, and outright frauds.-

Robert Platt Bell, Registered Patent Attorney, 8033 Washington Road, Alexandria, VA 22308, Ph. (703) 768-0340 FAX (703) 768-0650[email protected]

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ANSWER from Carol Oldenburg, Administrator, United Inventors Association of the USA
In general, if you’re at the beginning of the process of product development, it’s always a good idea to have your product concept evaluated for both technical and commercial feasibility. This would also include a preliminary patent search. There are a few recommended innovation assessment centers that can provide this service for a relatively small fee, ranging from about $175 to $500. It’s important at this point to be aware that there are also several fraudulent invention promotion companies operating around the country who will also offer to do an evaluation for around the same price, but they will not be valid evaluations. Furthermore they will try to convince you to spend further monies to patent and market your idea, irregardless of its true feasibility. Your best bet at this point is to contact a local inventors support group in your area for guidance and referrals to reputable service providers. You can also learn a lot about the do’s and don’ts through reading and a visit to the nearest Patent & Trademark Depository Library(PTDL), where you can do your own preliminary patent search.

To contact a local inventors groups or to learn where your nearest PTDL is located you can contact this office and we’ll give you that information. You can reach us at [email protected]

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ANSWER from Jim Petruzzi, co-creator of PatentPro software
Be cautious when thinking about dealing with an invention marketing company. Very often the Federal Trade Commission considers them to be engaging in unfair trade practices. Contact the FTC before writing a check to any such company. Also refer to prior Inventors Digest articles regarding these types of companies and the FTC.

Low cost methods of obtaining patent protection can be through PatentPro, computer software to help inventors prepare patent applications that comes with support by registered patent attorneys. Also check out the web site (www.4patpro.com) to prepare your own trademark and copyright applications. Many companies will not want to purchase product ideas without protection.

PatentPro-Customer Service – PatentPro includes attorney review of application Kernel Creations, Ltd. http://www.4patpro.com toll free 1-888-472-8776 Do-it-yourself Patent Application Software

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ANSWER from Paula V. Serber, partner in Princeton Products and a product development/marketing consultant.
If you are just at the idea stage, you have a ways to go before you need to worry about how to commercialize your product. Do you have a prototype? If not, get to work. Prototypes serve many different purposes primarily to insure that your design works, but also to show others that is works.

Once you have established that your product works, you need to do some product evaluation. This requires some research. Look at existing products which accomplish the same or similar task as your product. Will the manufacturing costs of your product allow for a retail price comparable to these products? Get quotes from manufacturers to get an idea of the manufacturing cost of your product. Look at the market. What is the size of your market? If it is too narrow, it may not be worth the time or effort to develop the product. Will the market bear the retail price of your product? Is it easy to understand? Is it unique? Is it labor-saving? What is the window of opportunity for your product?

You will also want to make sure you are not infringing on any existing patents. Hire a patent searcher to do a search for you. You can get a search done for about $200. This will not be a comprehensive search, those are far more costly, but an experienced patent searcher can almost always do a much better than you would do. The search results will give you a good idea of how difficult it will be for you to get a patent.

At this point, if you feel your product is viable, it is time to decide how to commercialize your product. Since you mentioned your funds are limited, probably your best route would be to locate a licensee. A licensee is a manufacturer who is granted the right to make and market your product in exchange for a royalty. Many inventors find this task unpleasant because one must usually hear several no’s before these is a yes. The best companies to target for licensing are ones that manufacture similar products and already have the right channels of distribution set up.

If you choose to go with a new products marketer or “inventor assistance” firm, be very, very weary. Caution is the name of the game. There are some companies that will work to get your product commercialized, there are many who will just take your money. There are many articles explaining how to differentiate the good from the bad, read them. The best thing to do is get a list of references from a company and talk to those references. If a company refuses to provide this information (usually they claim reason of confidentiality) you can pretty much bet it is because they do not have any clients who can say anything good about them.

A. ANSWER from Ed Tutle, inventor and licensing expert.
First, don’t focus on money as you will need to spend some before you can make some!

Second, find someone who has some expertise in the product you want to market, and disclose it to that person under a written Confidentiality Agreement. If the person who has knowledge in the product sees the inventive aspect of the product, then you might want to seek utility and/or design patent protection. Use a patent lawyer/agent as you are most likely not experienced enough to write your own patent.

Third, use your time to develop a marketable product, evolve a marketing strategy, and see who can and will build it for a given market. Then be ready to spend some real money in going to market so you can finally make the money.

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ANSWER from Mark Francis, Openize Ideas, Inc.
There are several steps that you need to consider taking prior to getting your product to market. The first of which is to see if your idea is already patented or on the market. I would suggest that you start with doing a search for your idea on the web. I would start out by 1) using my browser and seeing what I could find as far as similar products and 2) going to the government’s patent database (www.uspto.gov) and doing a “boolean” or key word search.

It is possible that your idea may already have been conceived and patented and maybe marketed. If you find it or something close to it, go on to your next idea. If you do not, I would suggest going to a deeper level on the patent search. You can do this by doing a more thorough search at a patent depository library (again you can find the location of such libraries at www.uspto.gov) or consider hiring a patent attorney or patent agent to search it.

You may also find it helpful to read some books on the subject of introducing your product to market. Several of the books outline step by step processes.

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ANSWER from Carol Oldenburg, Administrator, United Inventors Association of the USA
Your question didn’t include at what stage you are in the development of your product, so it’s difficult to respond with specific information. In general, though, if you’re at the beginning of this process it’s always a good idea to have your product concept evaluated for both technical and commercial feasibility. This would also include a preliminary patent search. There are a few recommended innovation assessment centers that can provide this service for a relatively small fee, ranging from about $175 to $500.

It’s important at this point to be aware that there are also several fraudulent invention promotion companies operating around the country who will also offer to do an evaluation for around the same price, but they will not be valid evaluations. Furthermore, they will try to convince you to spend further monies to patent and market your idea, regardless of its true feasibility. Your best bet at this point is to contact a local inventors support group in your area for guidance and referrals to reputable service providers. You can also learn a lot about the do’s and don’ts through reading and a visit to the nearest Patent & Trademark Depository Library(PTDL), where you can do your own preliminary patent search. To contact a local inventors groups or to learn where your nearest PTDL is located you can contact this office and we’ll give you that information. You can reach us at [email protected]

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ANSWER from J. Mark Davis, Inventor of the Eggsercizer
First, I think you need to identify your market entry point. There are three basic market entry points: (1) High End Markets (2) Mid Level Markets, and(3) Mass Merchants. Each market has a margin for the retailer and different profit margin for your invention.

Please identify your target market entry point. Without disclosing your specific idea what market are you looking to sell your idea to? Sporting goods, gift, medical, apparel, Jewelry etc..???

Another note. To get your product to market you need to attend a trade show for your target market.

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ANSWER from Bob Bell, Patent Attorney
Tough question! One problem you might have is in trying to attract a manufacturer or licensee. A minor (those under 18) can repudiate most contracts upon reaching majority (age 18) in most States. Thus, any contract you sign now could be repudiated next year. Needless to say, it would be difficult to find someone willing to sign a contract with you at this point! Regardless of your age, promoting and developing a product is difficult. A good first step is to preserve your rights to the invention by carefully documenting your invention process. Save all notes, notebooks, sketches and schematics. Write up a description of the invention and date and sign it, and get someone to *witnes* it with the notation “Reviewed and understood by me” with signature and date.

Also bear in mind that your patent rights in the U.S. are void if you do not at least file a provisional application within one year of the date of first sale, offer for sale, public use, or publication. To preserve foreign rights, you need to get your patent on file before *any* sale, offer for sale, public use, or publication.

I say that to advise you of the law, *not* to encourage patenting. Obtaining a patent is an expensive and time-consuming process. Before taking that step, you might want to do some research to see whether your invention has been thought of by others. Try the USPTO website at www.uspto.gov and look for their advanced Boolean search engine. Also try the IBM website. What you lack in expertise, you may be able to make up for in time to devote to the search. Clean copies of patents can be downloaded to your PC for $4.95 apiece from Micropatent (www.micropatent.com). As a Patent Attorney, I can only advise you as to the patent aspects. Others will have better advice for you on how to promote or sell your invention.

A. STOP! WAIT! WHOA!

A little learning is a dangerous thing; drink deep, or taste not the Pierian spring: there shallow draughts intoxicate the brain, and drinking largely sobers us again. –Alexander Pope (1688-1744) – An Essay on Criticism.

One of the challenges of the internet is that we can be lulled into a false sense of security, due to our assumptions and our eagerness to have a protected and profitable invention in the marketplace. When it’s your invention and your resources, you want to know that the outcome is favorable before you go investing your time, effort and money.

Don Kelly, past Patent Office executive, wrote a great article in the UIAUSA booklet, THE Inventor’s Resource Guide 2001, outlining the different levels of prior art searches: the word search, the classification search, the professional search and the examiner’s search.

Let’s say that you invented a better mousetrap, went to the U.S. Patent Office web site at uspto.gov and conducted a Quick search (also known as a word search) for “mousetrap” for just the title field of issued patents, you would get about 25 issued patents listed. Doing a Quick search on “mousetrap” for all fields would yield about 150 issued patents.

If you entered “mouse” and “trap” for just the Title field, you would get over 40 issued patents; for all fields – about 3800 issued patents! Whoa! After examining all 3800, one would think that would constitute an exhaustive search.

But wait, there is more. What if the title and written specification did not use the word “mouse”, but used the word “rat”, “mice”, “rodent”, “vermin”, “animal”, or “pest” instead? (I am not making this up; these are from issued patents.)

All these different words for mouse remind me of Bubba reciting the different ways to prepare shrimp from the Forrest Gump movie: “Shrimp is the food of the sea – you can: Barbecue it, Boil it, Broil it, Bake it, Saute’ it, Shrimp Kabobs, Shrimp Creole, Shrimp Gumbo, Pan Fry, Deep Fry, Stir Fry, Pineapple Shrimp, Lemon Shrimp, Coconut Shrimp, Pepper Shrimp, Shrimp Soup, Shrimp Stew, Shrimp Salad, Shrimp and Potatoes, Shrimp Burgers, Shrimp Sandwich, That – that’s ’bout it.” So it is with “mouse trap”. You can have rat trap, rodent trap, pest trap, animal trap, vermin trap, trap for mice, bait station, lethal trapping device, baffled rodenticide box…; the list goes on and on.

Your Quick word search might miss issued patents if they do not contain the words you are entering; one of which might be an exact duplicate of your invention. To make matters worse, the Quick search only accesses patents from 1976 to the present. That means that if your improved mousetrap was patented prior to 1976, it is invisible to a Quick search – not good.

What to do? Ah, there is the trusty Advanced Search, using patent classifications. A patent classification search goes back to 1790. Once again, you go to the Patent Office Web site and scan the patent classifications. Here it is: 043 – Fishing, trapping, and vermin destroying. Let’s look there. Subclass 58 – Traps, looks possible. An Advanced Search on ccl/48/53 yields about 90 issued patents. Are we through? Not yet. Your improved mouse trap might also lurk in the following classifications: 43/60, 43/61, 43/62, 43/63, 43/66, 43/69, 43/71, 43/74, 43/81, 43/82, 43/83, 43/85, 43/98, 43/114, 43/124, 43/131.

Don’t forget the Design Patents. Classifications D22/18 and D11/119 may show prior art that disqualifies your invention. Then there are off-the-wall classifications, such as 206/466, that shows a mousetrap in a paper sack for convenient disposal.

Whew! You searched diligently in all these classifications. Are you finished? No. Don’t forget the published patent applications on the uspto.gov web site. These count as prior art also.

In addition, a thorough prior art search examines foreign patents and non-patent prior art, which are not findable on the uspto.gov web site. You will need to go to fee-based sites for these or engage a patent professional.

Finally, even if you did find all the relevant prior art, there is still the need for a patentability opinion from a Patent Agent or Patent Attorney. Each of the claims in the relevant prior art should be examined carefully. Knowing the boundaries of the prior art is essential information for crafting your claims.

Also, a patentability opinion should address if your invention is obvious in light of the combination of two or more of the prior art (a common reason for rejection by the Patent Office).

Filing a patent application without a professional search and a patentability opinion is akin to setting sail over the ocean without charts, GPS and a weather report.

Inventors Digest’s ninth commandment of Inventing says it best: “Do what you do well and hire pros to do the rest.” I recommend that you supplement your search with that of a professional.

Know before you go.

– From Ron Reardon, president of Patents & More, Inc., secretary of The Inventor Associates of Georgia, an inventor with seven patents pending, and a registered Patent Agent. He can be reached at[email protected].

A. ANSWER from Joanne Hayes-Rines, Founder Inventors Digest
The answer is yes and that is one of the advantages of the provisional patent application. Remember, though, that the provisional expires after one year and if you do not file a complete patent application in that time, you must remove the words “patent pending.”

A. You can file this type of application yourself since the Patent Office has made it much simpler than the standard utility patent application. The filing fee is $75. It does not require any legal language. However, you make sure that you have thoroughly described your invention and provided a good sketch if applicable.

–Gene Scott, Registered Patent Agent, Patent Law & Venture Group, 2082 Business Center Dr., Suite 240, Irvine, CA 92715

You need a patent practitioner (attorney or agent) to file a provisional application. Although the application does not require any claim(s), the specification must be written with the completeness and accuracy of a regular application. A non-professional would likely omit critical material which when later supplied would be “new matter” which would forfeit the filing date of the provisional application.

–Edward Gray, Ph.D., Registered Patent Agent, PO Box 66629, Mar Vista, CA 90066

You do not need a lawyer to file a provisional patent application. If you feel you can do a thorough job of writing a description of your invention, with drawings or sketches, these can be filed in the Patent Office with a one page form and a $75 filing fee. The provisional patent application lapses after one year unless you follow up with a complete patent application including claims and the full filing fee for a regular patent application. If you do this, I recommend retaining a patent lawyer who will draft suitable claims.

–William C. Crutcher, Patent Attorney, Gager & Peterson, One Exchange Plaza, P.O. Box 2480, Waterbury, CT 06722-2480

While it is possible to file a provisional and even a formal patent application pro se, I generally do not recommend doing so. A competent patent attorney should be able to review a draft provisional patent application prepared by yourself for a very minimal fee and advise you as to how to improve the application and file it for you. If you are serious about pursuing patent protection, you will probably spend close to $3,000 in filing, issue and maintenance fees. If your invention is worth anything at all, it is worthwhile to consult with an attorney. Many of the attorneys advertising in Inventors Digest charge very reasonable fees.

–Robert P. Bell, Registered Patent Attorney, 8033 Washington Road, Alexandria, VA 22308

Provisional patent applications are, in many ways, simpler and easier to file than non-provisional patent applications. But there are some very important things you need to know about provisional patent applications. First, you should understand that a provisional application does not give rise to the same substantive rights provided by non-provisional applications. This is because a provisional application is not examined and will not issue as a patent. Instead, provisional applications provide only a right of priority, that is, an established filing date. That’s not to say this isn’t a very important benefit. The filing date is recognized in major countries throughout the world.

Another important point to note about provisional applications is that there will be no benefits of any kind if a non-provisional application is not filed within the 12-month period that follows the filing of the provisional application. Some filers assume that there is an automatic conversion from provisional to non-provisional that occurs within the Patent and Trademark Office (PTO). Not true. Positive steps must be taken, and they must be taken within the noted time period. Getting back to the question, let’s take a look at the formalities involved in filing a provisional application.

To gain the benefits of this relatively new form of application, a filer needs only include a full disclosure of the invention including drawings where necessary, along with a cover sheet identifying the inventor(s) and noting that the application is a provisional application. A filing fee of $150 is required, as well. However, for independent inventors, non-profit organizations, or small businesses, this fee is reduced to only $75, provided a statement is filed to establish small entity status.

More good news is that a provisional application does not require a declaration or claims, generally considered to be the more complex aspects of patent applications. But, meeting these filing requirements can’t be taken lightly.

Invention disclosures presented in provisional applications must be just as thorough and clear as would be required in non-provisional applications. Since the purpose of the provisional application, as I’ve already noted, is to establish a recognized filing date for a subsequent non-provisional application to be filed within 12 months, heavy reliance will be placed on the completeness of the originally submitted invention disclosure. Claims defining the scope of applicant’s invention filed in the subsequent non-provisional application must find full and clear support in the original provisional application in order to gain full benefit of the early filing date.

Can you file a provisional application yourself? There is no doubt that many inventors can, and do, successfully draft and file their own applications, both provisional and non-provisional. But, given the importance and relative complexity of the application process, the PTO strongly advises prospective applicants to engage the services of a patent attorney or agent from among the 17,000 registered to practice before the PTO.

The PTO’s roster of registered attorneys and agents is available at any of more than 80 Patent and Trademark Depository Library across the country. Or it may be purchased from the Government Printing Office, Superintendent of Documents (stock No. 003-004-00674-9). This roster is also available on our World Wide Web site at http://www.uspto.gov/

–Don Kelly, Patent Examining, Group Director, U.S. Patent and Trademark Office, Washington, DC

A. ANSWER from Bob Bell, patent attorney
People can always steal your invention (or parts of it). T he question is, can you do anything about it? If your patent doesn’t issue, then you have no protection and cannot sue them. Also, if your patent is unduly narrow, you might not be able to sue them for infringement.

Should you disclosure your idea to others? Well, you can’t make any money keeping it secret, can you? In order to succeed (at anything) you have to take risks. The trick is to minimize risks.

You have taken a good first step in filing for a patent — you have something “on file” to (hoepfully) protect yourself.

You could also ask the companies to sign Non-Disclosure Agreements (NDAs) but don’t be surprised if they say “NO!” What, after all, is in it for them (except the opportunity to get sued). Most companies will not sign an NDA, of if they will, will sign only their form (which is really more of a _disclosure_ agreement, not an NDA).

So, you are left with two choices–keep your idea secret, take no risks, and make no money, or disclose your idea, hope that it is patentable, and hope to get a licensee. It is not an easy decision to make!

You could “wait” until the patent issues, but I see no point in doing that. If that patent does not issue, those companies are free to use the technology anyway. Moreover, it can take years to get a patent — by then the technology might be obsolete.

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ANSWER from Mark Francis, Openize Ideas Inc.
I would suggest that prior to disclosing your product idea to potential manufacturers or distributors that you have them sign a non-disclosure agreement. This should help prevent those that you do disclose to from taking the idea further without your permission.

Also, be aware that others can “knock off” a product while it is pending. It is only after one is patented that one can go after the “knock off” artists provided that there is a case of infringement.

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ANSWER from Jim Petruzzi, co-creator of PatentPro software
Patent infringement is when the accused product has all the elements of any one claim that issues in the patent. Others are free to take some, but not all, of the elements of your claim and add to it without infringing. Also, there is a doctrine of equivalents, where although they did not copy the claims literally, for the most part they did substantially the same thing in substantially the same way to achieve substantially the same results, often by simply substituting obvious variations for elements in your claim. However, this is once the patent issues, during patent pending status, there are no patent rights to enforce.

PatentPro-Customer Service – PatentPro includes attorney review of application Kernel Creations, Ltd. http://www.4patpro.com toll free 1-888-472-8776 Do-it-yourself Patent Application Software

A. ANSWER from Joanne Hayes-Rines, Founder, Inventors Digest
Do be sure to check the references of any companies that you are thinking of doing business with. Ask for names and phone numbers of clients who have used their services and call them to see what they think of the company. Also, check with your State’s attorney general’s office, department of consumer affairs. See if they have anything on the company. You can do your own patent search at a Patent and Trademark Depository Library. To find the one nearest you, go to the Patent Office web site at http://www.uspto.gov

It’s hard to sell a design to a company without knowing if someone already owns the rights to it (a patent) so I’d say you have a lot of work to do before you could interest a company in your idea.

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ANSWER from Joe Cote, Director, Business Development Arthur D. Little Enterprises, Inc. (Please visit our web site at www.adlenterprises.com)
You have asked the classic new inventor question of the ages “How do I market my great idea for a new product?” Unfortunately the answer is not an easy one, nor uncomplicated.

My usual best source answer to new inventors is to talk with the experts inventors who have been there before and know exactly what you are facing. Without giving away your idea, they can counsel you on the process they went through and what the pitfalls are. Most states have a local inventors group that can be of great assistance to you.

These inventors and various sources on the Internet and local libraries can help you identify whether your idea has been pursued before or can reasonably be considered a patentable invention. But before you spend any serious time and money on this endeavor, try to determine what the size of the market is for your product. Is there a business to be made from your product or is there a BUSINESS to be made. The larger the ultimate market the better the chance there is for a company to buy your idea­assuming your idea is protectable. Without some kind of legal basis to protect your idea (patent, trade secret, copyright, etc) companies rarely pay for access to your ideas.

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ANSWER from Bob Bell, patent attorney
I don’t mean to discourage you, but trying to sell an unproven idea to a company is probably the hardest way to proceed and the least likely to be successful. Crooked invention brokers promulgate the myth that “companies are eager to get new ideas” –it just ain’t so!

If you are prepared to spend the time and money developing your idea into a product, you are much more likely to be successful but even then the odds are against you! Don’t risk or spend your life savings, retirement money, or mortgage your home. Don’t risk more than you can afford to lose.

As for crooked companies, you are doing the right thing by subscribing to INVENTOR’S DIGEST . ID is a beacon of hope in the dark sea of con-artists, come-ons, and outright frauds.-

Robert Platt Bell, Registered Patent Attorney, 8033 Washington Road, Alexandria, VA 22308, Ph. (703) 768-0340 FAX (703) 768-0650[email protected]

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ANSWER from Carol Oldenburg, Administrator, United Inventors Association of the USA
In general, if you’re at the beginning of the process of product development, it’s always a good idea to have your product concept evaluated for both technical and commercial feasibility. This would also include a preliminary patent search. There are a few recommended innovation assessment centers that can provide this service for a relatively small fee, ranging from about $175 to $500. It’s important at this point to be aware that there are also several fraudulent invention promotion companies operating around the country who will also offer to do an evaluation for around the same price, but they will not be valid evaluations. Furthermore they will try to convince you to spend further monies to patent and market your idea, irregardless of its true feasibility. Your best bet at this point is to contact a local inventors support group in your area for guidance and referrals to reputable service providers. You can also learn a lot about the do’s and don’ts through reading and a visit to the nearest Patent & Trademark Depository Library(PTDL), where you can do your own preliminary patent search.

To contact a local inventors groups or to learn where your nearest PTDL is located you can contact this office and we’ll give you that information. You can reach us at [email protected]

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ANSWER from Jim Petruzzi, co-creator of PatentPro software
Be cautious when thinking about dealing with an invention marketing company. Very often the Federal Trade Commission considers them to be engaging in unfair trade practices. Contact the FTC before writing a check to any such company. Also refer to prior Inventors Digest articles regarding these types of companies and the FTC.

Low cost methods of obtaining patent protection can be through PatentPro, computer software to help inventors prepare patent applications that comes with support by registered patent attorneys. Also check out the web site (www.4patpro.com) to prepare your own trademark and copyright applications. Many companies will not want to purchase product ideas without protection.

PatentPro-Customer Service – PatentPro includes attorney review of application Kernel Creations, Ltd. http://www.4patpro.com toll free 1-888-472-8776 Do-it-yourself Patent Application Software

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ANSWER from Paula V. Serber, partner in Princeton Products and a product development/marketing consultant.
If you are just at the idea stage, you have a ways to go before you need to worry about how to commercialize your product. Do you have a prototype? If not, get to work. Prototypes serve many different purposes primarily to insure that your design works, but also to show others that is works.

Once you have established that your product works, you need to do some product evaluation. This requires some research. Look at existing products which accomplish the same or similar task as your product. Will the manufacturing costs of your product allow for a retail price comparable to these products? Get quotes from manufacturers to get an idea of the manufacturing cost of your product. Look at the market. What is the size of your market? If it is too narrow, it may not be worth the time or effort to develop the product. Will the market bear the retail price of your product? Is it easy to understand? Is it unique? Is it labor-saving? What is the window of opportunity for your product?

You will also want to make sure you are not infringing on any existing patents. Hire a patent searcher to do a search for you. You can get a search done for about $200. This will not be a comprehensive search, those are far more costly, but an experienced patent searcher can almost always do a much better than you would do. The search results will give you a good idea of how difficult it will be for you to get a patent.

At this point, if you feel your product is viable, it is time to decide how to commercialize your product. Since you mentioned your funds are limited, probably your best route would be to locate a licensee. A licensee is a manufacturer who is granted the right to make and market your product in exchange for a royalty. Many inventors find this task unpleasant because one must usually hear several no’s before these is a yes. The best companies to target for licensing are ones that manufacture similar products and already have the right channels of distribution set up.

If you choose to go with a new products marketer or “inventor assistance” firm, be very, very weary. Caution is the name of the game. There are some companies that will work to get your product commercialized, there are many who will just take your money. There are many articles explaining how to differentiate the good from the bad, read them. The best thing to do is get a list of references from a company and talk to those references. If a company refuses to provide this information (usually they claim reason of confidentiality) you can pretty much bet it is because they do not have any clients who can say anything good about them.

A. ANSWER from Joe Cote, Director, Business Development Arthur D. Little Enterprises, Inc. (Please visit our web site at www.adlenterprises.com)
It really depends on the product. If your technology can become a standard that is needed by all players in a specific market to perform their business, a non exclusive widely held license would be the most advantageous. If your product needs one company to invest heavily to commercialize the product, they will not want to have others be able to get a license (at least for a time) that puts competition in their face too quickly. Also one exclusive license may be more advantageous if the market is very competitive and there are several alternatives to your product.

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ANSWER from Bob Merrick Inventor/ Entrepreneur and Author of Stand Alone, Inventor! 1-800.426.5454 www.bobmerrick.com
Based on the information you have given, I believe you would be better off with a carefully-negotiated license to a leading firm on an exclusive basis.

Reasons:
1. A company with an exclusive license will be much more motivated to devote its resources and to push ahead with your product, knowing that there is no competition.

2. Most likely, giving an exclusive, you will be able to negotiate a bigger up-front payment and a higher royalty per cent.

But, if you give an exclusive, be sure to have your agreement call for a substantial minimum annual royalty to insure that your licensee performs well from day one. In this way you can change licensees if the minimum is not met. Hope this helps.

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ANSWER from Ed Tutle, inventor and licensing expert
If you get any offers, work seriously with the first one. You can grant an exclusive license for more money than a non-exclusive one. But the deal depends on many things including the financial capabilities of the licensee. Beyond that point I would not venture other advice except what may look good to some can in reality have little commercial value. If you have some money and believe in your invention, start a business. If your product is successful, you can later sell out your interest for more money than you might get by licensing alone. You can also license others after you have established a market, to allow other manufacturers to also invest and capitalize on you invention. They will also pay royalties.

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ANSWER from Mark Francis, Openize Ideas, Inc.
When you pursue licensing, most companies will insist on an exclusive arrangement. However, this is not an ironclad rule. When you are going through the preliminaries with a company that is interested in licensing your invention, just ask and see what the response is.

One option to offer to a company is to take a lower royalty in exchange for a nonexclusive agreement. Another possibility is that you can offer exclusive agreements in separate, non-competing markets.

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ANSWER from Jim Petruzzi, co-creator of PatentPro software
This is a tough question because no one can predict the future. Do your best to study the market and your potential share, both with an exclusive licensee and without. Unfortunately, there is no universal rule. You may consider building into any exclusive license a minimum number of sales or minimum royalty amount to maintain the exclusive nature of the license. Below the minimum, the license may terminate or revert to a non-exclusive license.

PatentPro-Customer Service – PatentPro includes attorney review of application Kernel Creations, Ltd. http://www.4patpro.com toll free 1-888-472-8776 Do-it-yourself Patent Application Software

A. ANSWER from Donald Grant Kelly, CEO of Academy of Applied Science (formerly Director Technology Center 3700 Mechanical Engineering, Manufacturing and Products U.S. Patent & Trademark Office Washington, DC 20231).
You asked: “What is the best way to protect a new technology? The use of a device for a purpose for which it was not designed, and theoretically would not work?” Here is my answer.

A new use for a known device can be patented. But, this is true only if that use (or method of use) is, indeed, new and not obvious, and if all other legal requirements are met.

Yours is not an uncommon situation. The Patent and Trademark Office (PTO) grants thousands of “new use” process patents every year. However, you should take steps to ensure that you are not infringing on any pre-existing patents that cover all or part of the “known device,” itself. Your use of someone’s patented device, even if your own process is patented, could pose serious legal problems.

To further answer your question, a patent may not be the “best way to protect” your invention. Maintaining your method as a trade secret could be an option, depending on the nature of the invention.

You should seek the advice of a specialist in intellectual property law, someone registered to practice before the PTO. Let me know if you wish to have a list of registered patent attorneys and agents practicing in your area of the country. My email address is [email protected]
Good luck with your invention.

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ANSWER from Bob Bell, patent attorney
A new use for an existing product is patentable, however, such claims might not cover the product itself! In other words, people still have the right to buy the exisiting product for its old use; you can only protect the method of using the product for its new purpose. Such method claims can be somewhat difficult to enforce. However, it is possible to argue *contributory infringement* in some situations. For example, if a manufacturer sells the product (which is not patenable) along with a set of instructions as to its new use (which is patentable). Rather than sue all the consumers, you may be able to sue the manufacturer for *contributory infringement* in such situations.

Remember, a U.S. Patent needs to be filed within one year of the date of first sale, offer for sale, publication, or public use of your idea. In order to protect foreign rights, you need to get your patent on file before any of those events take place. Otherwise, your invention falls into the public domain.

Document your invention conception date by retaining all notes, notebooks, sketeches and schematics. Sign and date an invention disclosure and have someone withness it with the notation “reviewed and understood by me” and have them sign and date it. Such evidence can be used to prove you were the first to invent the idea.

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ANSWER from Ed Tutle, inventor and licensing expert

To protect an inventive idea you must disclose the idea to others who have some expertise in the subject matter, but only under a confidentiality agreement. (“Others” does not mean immediate family members who, if they are made aware of the inventive idea, must understand that they should keep it confidential.)

If the idea has utilitarian aspects, it may be patentable as a utility patent in the US. If the inventive idea already exists, it is not patentable as is, however if the idea is used with some unique modification the combination may be patentable. First, however, prove to yourself that the theoretical “it can’t work” assumption is false. Also be prepared to spend some time and money in developing the invention. The market for undeveloped ideas is practically zero. However, remember the need for a confidentiality agreement in all cases because an idea can be purloined and developed by others, who can do so and have no obligation to tell you about it

A. ANSWER from Bob Bell, patent attorney
I have a library full of such “studies” from other marketing companies. READ THE REPORT CAREFULLY. Crooked companies use these “studies” as the”hook” to snare their victims.

For example, one report for an invention for a film canister had pages and pages of text about *disposable cameras*. Disposable cameras do not use film canisters! There was also a colorful (but meaningless) chart entitled “Productivity: Manufacturing Leads the Way.” All of this text is boilerplate taken directly from industry news sources. It is all impressive looking, but meaningless.

The “search reports” were word-for-word identical, even though the inventions, inventors, and attorneys were all different. “The Smith reference is relevant to the extent that is discloses an invention similar to your (invention name). This reference is also a good example of the amount of written material needed to get a patent.” (!!!) Again, boilerplate, and again trash.

Are they recommending DESIGN patent protection? If so, RUN, do not walk, to the door. A Design patent is worthless for a gadget-type invention.

Are they selecting an attorney for you or controlling access to your attorney? Again, RUN, do not walk to the door. Fraudulent firms “bundle” their services (which are worthless) with attorneys services to make it seem like you are getting great value for your money (A patent AND marketing services!). In reality, although you may spend $5000 to $10,000 or more, the bulk of this money stays with the marketing company while a pittance goes to the attorney who prepares the worthless Design Patents. This is called “fee splitting” and it is against bar rules in all 50 States.

Are they asking for thousands of dollars up front? Again, RUN, do not walk away.

These firms often use retired or soon-to-be-disbarred attorneys in Florida. If you want a lousy attorney who will work for next-to-nothing, you might as well hire him directly and get rid of the middleman.

Invention fraud is a multi-multi-million dollar a year business. One company, American Inventors Corporation (AIC) had over 1700 Design Applications pending when it was shut down. At $10,000 apiece, that’s $17 MILLION dollars and this was small-time operation!

Why can’t the government shut these crooks down? Simple. In America, it is not against any law to give lousy service at high prices which is what invention brokers do. Their “marketing” efforts are laughable, and the patent services marginal at best. There is no law against charging too much for this.

These firms prey upon your fears and hopes. They promise that selling an invention is easy — it ain’t! Inventing is probably the hardest thing you can do! Companies, by and large, are NOT interested in outside ideas!

IF you go ahead and give these folks $5000 to $20000, don’t expect to see it back anytime soon — nor can you expect any help from the Patent Bar, the Patent Office, The State Attorney General’s Office, the Better Business Bureau, etc. etc. The amount they charge is a LOT of money, but not enough to make it worthwhile to sue them. Catch-22.

Legitimate invention promoters are few and far between.

–A legitimate invention promoter will not ask for money up front, but will take a percentage of profits ONLY.

–A legitimate invention promoter TURNS AWAY 99% of ideas submitted — he or she is only interested in ideas that will succeed.

–A legitimate invention promoter does not advertise on radio, TV or in Popular Science, USA Today, etc. etc. These are advertising venues aimed at a large response audience–the type of audience crooks want to get at.

I have not heard of the company you mention, but their Modus Operandi (M.O.) sounds very much like all the others. Be “leery”, as you say.

Robert Platt Bell & Associates, P.C. Patent, Trademark, & Copyright Matters 917 Duke Street Alexandria, VA 22314 Ph. (703) 683-8822 FAX (703) 683-8823 [email protected]

ANSWER from Joanne Hayes-Rines, Founder, Inventors Digest
I have not personally heard of the company you refer to, but would recommend the following: 1) Contact the Consumer Affairs Division of the state attorney general’s office in your state and in the state in which the company is headquartered. The attorney general is in the capitol city of a state. Ask if they know anything about the company. 2) Ask the company for names of clients with whom they’ve done business. If they won’t give references, don’t do business with them. 3.) Ask for credentials of the chief managers, owners of the business. The more you learn about the business, the better able you will be to find out if they’re on the up and up. Also, go to ID’s web page and locate, in the clubhouse, an inventors’ organization near you or near the company. Give them a call and see what they think. https://www.inventorsdigest.com

ANSWER from Joe Cote, Director, Business Development Arthur D. Little Enterprises, Inc. (Please visit our web site at www.adlenterprises.com)

Remember the old saying–“If it sounds to good to be true, it probably is.”

I would ask for a list of satisfied customers. Check them out, if they have received what they believe is value for their investment and it satisfies your needs at this time, this may be a good start. If you want to go the added step of checking out their record with your state’s Attorney General’s office, that is another reasonable avenue.

For a fee of $545, I would want to know who will doing the work, will it be only a review of secondary materials, if analysis is provided–what is the background and professional credentials of the individuals providing their opinions.

Be a knowledgeable consumer, protect your interests and your investment.

ANSWER from Carol Oldenburg, Administrator, United Inventors Association of the USA
The company you named is one that I’ve received many calls about regarding questions about their business practices. I suggest that you do a lot of investigation before making a decision to do business with them. There are several tasks I suggest as part of that effort.

First, call the State Attorney General’s office in both your state and the state where that company states they are headquartered. Ask if there has been any investigation or information regarding that company that they can share with you as a prospective customer. (You can get the numbers for the state offices you need by calling the National Assoc. of State Attorney Generals at (202) 326-6047)

Second, call the Federal trade Commission’s Division of Consumer Protection and ask the same question of them. (202) 326-3650.

Third, contact local inventor groups in those areas and ask if that company is known to them and what their experience of them has been.

Fourth, in your contact with the company’s representative, ask a list of specific questions which include, names, addresses and phone numbers of clients such as yourself who have done business with them and whom you can contact for references. Also ask for written names and credentials of their staff and their qualifications for doing the work they are proposing to do Also request, IN WRITING, their “success rate” which is the % of clients who have made a profit of $1 or more as a result of their services.

As a result of proceeding as outlined above, you will probably have a clear indication of what your decision should be. There are reputable service providers available but most will not propose to provide every service you need to launch your product from concept to market place, and most will also not require large up front fees for their services. A good place to begin is by getting a valid evaluation done by a service that does only that and has no vested interest in the results. These services are usually associated with state universities or small business development centers and there are a few available in different regions.