| Tips from frequently asked questions | |
| THE FOOL RULE Don't be fooled. Things change. Always check everything with the best professionals. That includes checking things which you read here. Laws change. Court decisions change the effects of laws. Regulations and procedures change. Always check everything with the best pros. Technologies change, business climate changes, manufacturers change, markets change, and buyers change. Always check everything with the best pros. There's lots of very bad information floating around about patents, invention development, and finding money. Don't get fooled. There are invention development and invention marketing companies which promise that they'll do all the work for you. Don't be fooled. I've never seen any of these companies get inventors any benefit equal to the cost. When these companies are investigated for fraud they can't show any inventor who got a benefit equal to the cost so they promise to change. They change their name, and I've still never seen one of them get any inventors any benefit equal to the cost. Don't be a fool. |
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1 PATENTS jump to: 2 Patenting, 3 Models, 4 Searching, Home Page Why are patents special? It's in the US Constitution, Article I, Section 8: "The Congress shall have the Power . . . to Promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." Thus a patent is a private right which promotes a public good. That's special, - it creates economic opportunity, and it does promote progress. What is a patent? A patent is "a grant . . . of the right to exclude others from making, using, or selling the invention throughout the United States." That's what it says in the statute - 35USC154. Thus, if you've got a good patent, then you have the right to stop another product from getting close to having the functions and benefits of yours, and that right can be a valuable economic opportunity for you. How long does a patent last? Under current law, your patent right ends twenty years after the date an application was first filed. Your patent right starts when the patent is issued which is likely to be nearly two years after the application was filed. Do I need a patent? No, a patent is not needed for you to make and sell your product, but you'll get in trouble if you make and sell a product which infringes someone else's patent. You would want to get a patent in order to keep competitors from making and selling a product like yours, if you can get a patent good enough to do this. If you can't get a patent that good, then you have to compete without a patent. It costs a lot to get a good patent, so you want to decide if the cost of a patent is your best business investment. It's not smart to spend money to get a patent which is not good enough to stop competitors, and there are a lot of business investments which are better than a no-good patent. What can I patent? Court decisions have expanded the scope of patentable matter. This is changing fast so make sure that you get good information from reliable professionals on this and on all topics which can have an effect on the value of your patent. What if I invent an improvement for an existing product? There may be a patent in force which would keep you from making the existing product with or without your improvement. Then your only hope is to persuade the patent owner to add your improvement to their product. That's very hard. They are not going to be eager to spend money to modify the product to add your improvement. Can your improvement be a stand alone product which the buyer could add to the existing product? If so you may be able to go ahead without having to deal with the existing patent owner, but be sure to get advice before you do. Should I worry about patents in other countries? Products are being sold globally at a fast increasing rate, and this means that international patents are needed to secure the full potential value of a product. You may not be able to afford the very great cost of patenting country by country, but, if you lose your rights to obtain patents abroad, then you will have greatly reduced the value of your product for some potential licensee. You can use Patent Cooperation Treaty (PCT) procedures to help you hang on to your rights. US provisional applications for patent can also be useful, but this path also has some dangers. We should all keep reminding our senators and representatives that it is very important for us to move more quickly toward a global patent so that we can realize the full value of our products. Is there any way to get a patent without having to spend big bucks? If you try to write your own patent the best outcome that you can expect is to get a patent which is very easily challenged. It takes a lot of special skills and lots of work to write a patent which is not easily challenged. That's why you should pay what it takes for a reliable USPTO licensed professional to write a patent which will not be easily challenged. What is a Provisional Application for a Patent? If you have to disclose your secrets to get a licensee interested or to test market your product or for some other reason, then a provisional application for patent can lower the risk of losing your rights to those secrets. If your provisional application is the first on file for the invention then you will be the senior inventor in a dispute so that the burden will be on others to prove that they invented before you. Provisional applications are so new that no one knows how well they will work. Also, you can only avoid losing that which is specified distinctly in the provisional application. If something is not specified distinctly, then the risk of losing it has not changed. Provisional applications must be converted to an old-fashioned non-provisional application before the end of a year or they are abandoned. Here's a nasty trap: If you file a provisional, disclose some secrets, and let your provisional application go abandoned, then you lose your rights. It's a risky business, but you may have no alternative, and it may be smart insurance. When is there no risk? Never. The risk never goes to zero. The risk that you won't own your invention can go down as you proceed from conception through patent pending to patent issued. But this risk won't go down if you take shortcuts. Always remember that the risk that you will waste a lot of money and never make any money from your invention because you did too little to make your invention attractive to any buyer is the biggest risk of all. OK, what are some of the specific dangers which I need to plan for? You can lose ownership of your invention if you can't prove that you invented it or can't prove that you did not abandon the invention. You control this risk by keeping good records which will not be easy to challenge. In a bound book record all your work on your inventions, with no erasures, nor blank spaces, nor time lapses. Have this record signed by two credible witnesses like this: "Pages X to Y read and understood in confidence on [date] by [signature]. You can also lose ownership if you do not get people who work for you to agree to respect your rights. To control this risk get a business lawyer to help you set up proper business and trade secret procedures. |
| THE NO SHORTCUTS RULE START MAKING A PLAN. This is the first step toward new product success. Start deciding what your goal will be. Start finding out what it's going to take to reach that goal. You're going to need to find out all the work that must be done to get there. You'll need to find the best professionals to help with the work, and you'll need to find the money to pay for all the work. There's no shortcut. Shortcuts all lead to the dismal swamp and failure. There's only one path to success - you've got to have a plan, you've got to be in command of all the work, and you've got to get and deploy your resources wisely. Do it. I've seen it work. I give this sermon to everyone who wants me to do their patent. I've never seen any other path to success. |
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2 PATENTING jump to: 1 Patents, 3 Models, 4 Searching, Home Page What is in a patent? Let's take a quick tour from back to front. A patent ends with claims. The claims tell what you can stop others from making, using, or selling. You want to be able to stop a product from getting so close to yours that buyers can't see any difference. The claims are preceded by a detailed description. This must support the claims, must support what the claims mean, and must support the breadth of what the claims cover. You want to be sure that this part is done so well that it will ward off challengers. The patent starts with background and summary information. This explains the novelty of your invention. You want to be sure that this explains the key points of novelty described and claimed. What does a patent cost? I've seen data which show that the cost of a typical patent is at least $10,000 and maybe as much as $20,000. My own experience suggests that the cost is about $7,000. This includes all the costs from searching prior art to paying the issue fee. Beware of cost estimates much below this because something is being left out - either they are leaving out some costs which they'll hit you with later on, or they are not going to spend the time it takes to get you a patent which can stand up to a challenge. It is VERY important to understand why it costs this much. OK, I'll bite: why does it cost so much? If your invention is really valuable then others will be tempted to challenge your patent. If your claims include elements that are not really needed, and thus are not as broad as they could be, then the challenger will be able to make a nearly identical product and your patent can't stop them. If your claims appear to be broad, but the specification does not fully support the apparent breadth, then it will be cheaper for a bad guy to pay lawyers to invalidate your patent than to pay you royalties. However, if you've got broad claims, fully supported by the specification, and there is no easy challenge, then most business people will pay you rather than pay lawyers; and, even if some jerk does want to try to get away with infringing, then you can find a first class litigation attorney to beat the jerk in court for a percentage of the damages recovered. It takes a lot of skills and lots of time to get a patent this strong, and that is what you pay for. Get a cheap patent and it won't help you keep trouble away. Pay the cost for first class work and you can beat the biggest jerks. How can I tell if I'm likely to get first class work on my patent? Make sure that you know who is actually going to write your patent application. Look out for under-supervised fledglings. Find out if they have a deep understanding of the physics underlying your invention. It's a good sign when they actually did real science and even taught real science. If they just did the minimum science to qualify for their PTO license then you might look for other evidence that they will understand all the nuances of your invention. Find out if they have the skills to turn their understanding of your invention into the broadest possible claims and fully support these claims in the detailed specification. You can ask for references. You can look at recent patents which they've got allowed. Most importantly are they spending lots of time with you asking all kinds of questions about your invention so that they get a deep understanding of the invention, and will they spend more than enough time to write an application for you which is super strong so that you can ward off any bad guys? How can I tell if I'm getting the best help? The single most important rule for getting the best help is to make sure that the person who's going to do the work really understands what you want done. Next you need to make sure that they will spend the time to do the job which you want. The best work takes time. Someone's got to spend the time and, someone's got to pay for it. I'm easily fooled so give me lots of clues to help me make sure I'm getting the best help. OK, here's another clue: It is a very good sign when the professional you might hire is helping you learn about the work to be done so that you can participate and help get the best work. You should ask lots of questions and the answers should help you learn enough about the work that you can ask even better questions. If the answers are curt and full of jargon and you're not learning things from the answers then there is trouble brewing. What are some questions that I should ask? Ask for a sketch of all the steps from start to finish. Keep asking until you have a good picture of the tasks to be done for each of the steps. Ask what is the cost for each step. This is very important: Make sure that you have an understanding of all the costs for all the steps. People who work for hire too often give a cost estimate which covers only part of the work and then surprise you with added costs to get the job done. Take notes so that you'll have everything in writing. Take a friend along. Compare notes. Check everything. How can I know that they'll respect my rights? Make sure that you know what your rights are. Make sure that anyone who you work with also knows what your rights are. Have a written record of all of the secrets which you disclose and of all of your agreements. Ask about conflicts of interest. Find out what happens if a conflict of interest arises. What are the risks in offering my invention for sale? Before a patent is pending the risks are large. First, you lose a lot of foreign rights which may reduce the value of your invention for a potential licensee. Although you don't lose US rights for a year after you offer the invention for sale, there can be nasty disputes about the exact nature of the invention and about who invented what. A patent application should specify and claim the invention precisely and should establish your rights as the inventor. While the patent is pending however you have no rights yet, and there is the risk that most of all that will ever be sold will be sold by a competitor before your rights begin when your patent issues. When your patent has issued then you have the right to stop others from making, using, or selling. Can I get someone to do all this work for me? No, you'll get cheated by invention marketing scams if you don't do the work yourself. Inventors have a special advantage because patents give them rights which they can license to a business which will make and sell the product and pay a royalty to the inventor. As a rule of thumb you can expect your royalty to be about 25% of your licensee's gross profit from your product. You can get a good idea of what this will be by using the Robert Morris tables at the library. You look up the relevant industry and find the gross income as a percent of sales - 20% for example - and you take 25% of that - yielding 5% of your licensee's sales income in this example - and that's what you're likely to get. What's the biggest trap of all? You've heard it before. The biggest trap of all is that you don't do the work to make your product attractive to the buyer and profitable at the price which the buyer will pay. It's your responsibility. There are lots of ways to fail. The only way to succeed is to do this work. |
| THE JOHNNY APPLESEED RULE ALWAYS MAKE MODELS. You always learn something when you do. This is the main distinction between dreaming and getting serious. When I talk with inventors about doing a patent search it always goes better when they have made models and we can see what makes the invention work. Don't be afraid to find out that your idea won't work. Don't fall in love with your inventory. Your next idea might be the winner. In studying the patents found in a search I usually see that the patent is flawed because the inventor did not do enough work with models. Making a model is the biggest step toward success and this should lead you to take many more steps toward success. There's lots to do. Follow the Johnny Appleseed rule and do it all. |
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3 MODELS jump to: 1 Patents, 2 Patenting, 4 Searching, Home Page Why do I need to test models? Here's a quick dozen reasons: 1) It's the difference between dreaming and reality. 2) You'll always learn something. 3) At least you'll find out if it really works. 4) You'll get a better patent. 5) Your patent won't claim unnecessary elements. 6) It'll help you show people what the invention is. 7) It'll help you see variations. 8) It'll cost lots more to make changes later. 9) It'll lead you to find out the state of the art. 10) You'll see how to increase the value of your invention. 11) It'll lead you to the other steps in your plan. 12) Somebody else will test models and you'll wish you had. Testing models will lead me to find out the state of the art? You hope it does for several reasons. You need to find the best art for your invention. You need to find out what might supersede your art. Learning about the state of the art will feed your creativity and will increase your credibility. You'll learn a lot from patent searching. Librarians will help you find directories you never imagined. Use the many databases available on the internet and elsewhere, but don't trust them. Go to the sources, for example at the universities - but don't get used by the techno-fakes. If you don't find out the state of the art then you might spend a lot of money on second best art or on art which will be superseded, you'll miss opportunities, and you'll look stupid. What if I can't make a good enough model myself? First, do something yourself with cardboard and stuff. When you've made sure that your invention isn't a pipe dream then start working with pros. Here's a list: model makers, engineers, testing labs, industrial designers, and manufacturers. Don't stop there - you also need to test the business potential of your model and that will lead you to: graphic design, marketing, management, accounting, and the bank. You can find first class pros on my home page where I indicate people whose work I know and trust. Aren't there some risks in working with these pros? You bet there are. You've got to make sure that they respect your secrets, your rights, and your wishes. That's why the first pros that you want to work with are your patent agent and your business lawyer. Your patent agent should explain all the steps and the risks at each step. And your patent agent might be able to refer you to first class, trustworthy pros. When you're getting referrals make sure that your not getting referred to somebody because they're in the same firm - make sure that you get the best pro for you. Your business lawyer can help you with contracts and with advice on record keeping, so that you won't make business mistakes that might lead you to disaster. What else should I look out for? Make sure that they hear what you tell them. Make sure that they take the time to do the job that you deserve. Also make sure that you hear what they tell you. Make sure that they explain what's going on so that you can participate. Make sure that they do not have a conflict of interest. Don't pay too much, and don't get too little for your money. Look out for low-ball cost estimates - make sure that everything is included. Look out for unreal claims of expertise - nowadays it takes full time to keep up with one job, to write good patents for example, so nobody can do that job and also do other jobs well. What must and should I learn from making models? For your patent application you must learn how to describe all of the parts of your invention and describe all of the connections among these parts with enough detail so that a manufacturer could actually make the product without any further research. You should also learn which parts and connections are absolutely necessary for the invention to work and which parts and connections are nice but not necessary. And, you should learn to chose parts and connections to make the product have lowest cost and greatest use, reliability, and ease of use. I know from lots of hard experience that these are not easy things to learn, and I've seen too many patents which are worthless because these things were not learned. How can I find out where technology is going? There are databases which list research in progress. These tell you what the leading experts think are good prospects for new technology. You can find lots of links to this info in the technology section of our home page. Businesses reveal a lot about where they are headed in various places. For example, look at want ads to see what kind of people companies are seeking to hire and that will tell you what they are planing. Also at trade shows and in trade publications you can see what the key players in a market niche are anticipating. You can find links to this info in the money section of our home page. Can I really get money for this research from the SBIR program? Yes, eleven federal agencies have Small Business Innovation Research programs, and it's not all rocket science, it's also education and rehabilitation and safety and other things you all invent. You can get up to $100,000 for six moths to prove that your idea will work and get up to $700,000 for two years to perfect the product. To get the money you've got to convince the agency that a product that they want can be made and sold profitably, and, most importantly, your plan must convince them that you can do this. The first step is to find out what the agencies want. There are links to this information in the money part of our home page. |
| THE EARS RULE When you're telling your patent agent about your invention to get a patent application started, or when you're getting a pro to help make a model, or when you're getting someone to provide money, follow this rule: MAKE SURE THAT THEY HEAR WHAT YOU TELL THEM. Are they taking the time and working hard to really understand your invention and what you want them to do? If they are, then they'll most likely take the time and do the work to do the best job for you, and that is a big step toward success. Inventors don't realize what people don't understand about their invention and it takes skill and hard work to really understand their invention. If someone is not doing this work and not hearing what you tell them, then it's not likely that you're going to get the work that you deserve, and that's a big step toward failure. |
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"4 SEARCHING jump to: 1 Patents, 2 Patenting, 3 Models, Home Page Should I do my own patent searching? Yes. You will learn a lot. It's easy to prove that "there's nothing like it" by looking in the wrong places, so remember that you are searching to learn as much as you can. If you don't then you may pass up an opportunity to improve your invention. What are the key steps in patent searching? First you can look in the Index to the Classification System. It is an alphabetic list of key words and the classes and subclasses which have art identified by the key words. Remember that the classification system is old and the key words listed may not be the same words which we now use to describe the art. Be a clever detective and you'll find good places to look. Second you can see how the classes and subclasses are organized in the Manual of Classification. This will help you see what's around the places you found in the Index. Third you can look at the Definitions of the Classes which will tell you what art is in included in the class and subclass and will tell you other places where similar art is classified. These three documents are available at patent depository libraries, and you can jump to internet versions of the three documents from the patents section of our home page. Fourth. Once you have identified likely classes and subclasses you can get a listing of all the patents they include from the computer running a Cassis CD at the patent depository library. (You can also get this listing from the Index site on the internet.) A fifth step is to look in the Official Gazettes to see a drawing and claim for each patent on your listing. Or you can go directly to the sixth step, which is to read the patent using the microfilm collection at your patent depository library. What am I looking for when I read the patents? Everything which is disclosed in a patent is old and not patentable again. From this you can more clearly identify what is patentably new in your invention. Also you can learn things from the prior art which will help you improve your invention. When you see something in the prior art which is like your invention but which is not on sale this leads you to ask what it is about this prior art which makes it unmarketable. You are not looking for proof that there is nothing like your invention. You are looking to find the closest art to your invention so that you can learn from it. How much of this can I do on the internet? From the patents section of our home page you can jump to several sites on the internet where you can do some patent searching. However there are serious limits to this searching. First, the databases only go back a few decades. Every professional search which I have commissioned has found important art much older than this. Second, keyword searching can be very misleading because it will miss patents which do not contain the keywords and because keywords can't match the subtlety of the patent classification system. Should I have a professional search done? Again yes. A good pro will find the best art so that you won't be surprised by what the examiner finds. A good pro knows the classification system and searches every day at the PTO where its lots easier to use the classification system. And the pro can easily get precious advice from examiners. How do I find a good searcher? It's best to do a professional search through your patent agent. Only a licensed patent practitioner will know how good a searcher's work is, because only they will have enough experience comparing what the searcher finds with what examiners find. Also, there's a lot more to a search than the work done by the searcher. Always remember to make sure that your patent agent fully understands your invention because this is where things can start going wrong. What should I get from a professional search? Your patent agent should give you a detailed explanation of the broadest claim which you could reasonably expect to get allowed in view of the best art found by the searcher. This explanation should help you to understand how close a competing product could get to the features, functions, and benefits of your product. This should help you determine the commercial value of a patent. You should also get copies of the art which the searcher found, and you should study these to spot ways to improve your invention. How can I get potential buyers to tell me if they will prefer my invention without telling them the secrets of my invention? Don't tell them about your invention, silly. That's a very poor way to get information anyway. Here's how. Go and ask people who have the problem which your invention solves to tell you what they want a better solution to be like. Ask them what the solution must do; should do; and could do. Compare what they tell you with your invention, and improve your invention to get it closer to what people prefer. Now you can tell if the broadest claim in your patent can keep a competitor from selling a product as good as yours. Have we covered all of the questions we need to about novelty? Certainly not. There are lots more questions which your patent agent will ask, such as these: Who is the inventor? Are there co-inventors? Does your employer have rights to the invention? Has the invention been used in public or disclosed publicly? Remember that you have a duty to disclose any and all of this information which is relevant to the patentability of your invention. |
| THE SECRETS RULE Never share your secrets with anyone until you have established a confidential relationship with them. For example, your patent agent is licensed by the government, and government regulations establish the confidential relationship. When a confidential relationship is not established by law or regulations, then you always should establish the confidential relationship with a signed written agreement. Remember that your plans and all the information which you gather to help you implement your plans can be trade secrets. Keep good records of what your trade secrets are, and keep good records of everything which you share with anyone. Your business attorney should help you with this and with other good business practices. If you don't take care with your secrets and with your business practices, then you could lose everything. Don't give your opposition an easy way to challenge you. Make it easier for them to join you than to fight you. |
jump to: 1 Patents, 2 Patenting, 3 Models, Home Page |
| Don Moyer: http://www.donmoyer.com/ |