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How to Invent:
We
are not attorneys and any advice we offer is not legal advice.
It is simply the information and resources we learned of while we
were inventing Ghostline�, the poster board with the �ghosted� grid that
eliminates the need to measure and draw lines before beginning a poster
project. We may suggest sources
of information or services. It
is your responsibility to check them
out thoroughly before engaging any of them.
Any advice we offer is strictly �personal� advice.
If your invention meets all or most of the
following criteria, you probably have a winner!
- The chances of obtaining a good strong patent are
excellent.
- There is a HUGE market for it. Millions and millions
of people will want to buy this product.
- The benefit of your product is obvious, thereby
minimizing advertising cost to educate the public about your product.
- It will be inexpensive to produce. The company to
whom you license your idea would already, ideally, have everything they need
to produce your product already in place. It would not require a lot of
"tooling up" expenses.
- The spread between the manufacturing cost and the
selling price is great. The "rule of thumb" is that your product
must be able to sell for at least 4 to 5 times the cost of manufacturing the
product. For example, if it costs $1 to manufacture your invention, it
should sell retail for, at least $4 - $5.
- The item gets "used up." That will
increase your market dramatically if it is something that has to be
purchased over and over.
- The manufacturer already has the distribution
channels in place. Their sales personnel already have shelf space allotted
to their company and can easily add your product to their planogram ( map of
the shelf space in a store ).
The more of the above listed criteria your
invention meets, the greater your chances of success. This does not mean that it
cannot be successful if it does not meet all of these criteria; it just means it
is not as likely. For example, an expensive item that is a " one-time
purchase" can be a successful invention if the potential market is large
enough.
Inventor�s
Journal
The
first step is to buy a blank book with stitched in (not glued in) pages that
are numbered." Write your idea in detail in the book and include
drawings.
Fill in the pages completely, writing in ink from top to bottom and
side to side, ignoring the margins. Do
not �white out� or erase anything.
Just cross out any mistakes. You
must not leave any spaces that could be filled in at a later date.
That is why it is important to cover the entire pages.
Do not skip any pages. Write
on both the front and the back of each page.
This is VERY IMPORTANT as it establishes when you first got the idea
and exactly what your idea is.
After you have
thoroughly described your invention, have a friend who will have no
financial interest in your invention to read, sign and date the book after
they have signed a nondisclosure agreement.
Date each subsequent entry and keep the journal of your progress with
your invention. Staple receipts
for materials, etc. to the pages. Periodically
have a friend (it does not have to be the same friend as long as
he/she signs a nondisclosure agreement) read, sign and date the
journal.
Search
It is
essential to conduct a search to make sure that you are the first person
with the idea. We suggest that
you start by going to the type of store that would eventually offer your
invention for sale. For
example, if your idea is an office product, go to office supply stores and
make sure that you do not find your invention already being offered.
Also, check specialty catalogs that might be likely to carry an
invention such as yours. If you
do not find it at the kind of store that carries similar items or in a
catalog, then it is time to do a patent search. There are several ways to do this. One way is to go to the nearest Patent and Trademark
Depository Library (see the list posted on our website under
�Libraries�). The
librarians in the Patent and Trademark Depository Libraries are very
knowledgeable and helpful and this service is free.
Or, you can conduct a fairly thorough search online by going to
uspto.gov (on our �Links� page) if you enter every key word that you can
think of to describe your invention. It
is also very important to do a �classification� search.
Many times you will come across inventions listed in the same
classification as yours that you might have missed doing only a key word
search. It is also very important to search all possible years.
When we were inventing Ghostline, we found a patent from 1877 (that
was NOT a typo) that had to be listed as �prior art� for our second
patent. USPTO.gov is the
official site for the U. S. Patent and Trademark Office in Washington.
You can do that search without cost also.
Or, if you wish, you can hire the search to be done by one of the
firms that specialize in this service.
Several such firms are located in the Washington, DC area.
It is possible
to do a good patent search yourself. We
conducted our own patent search at the Patent and Trademark Depository
Library here in Dallas. The
librarians there led us through it step by step.
We satisfied ourselves that we had done a thorough search.
When we went to our patent attorney, however, he looked over all the
printouts we had made of any patents that we thought looked similar to our
idea in any possible way. He
said it looked like we had done a pretty good job but he still thought it
advisable to have a professional search done.
We did, and the professional search
came back with exactly the same "prior art" we had found.
If you live
anywhere near Washington, DC or if you can make a trip there, you can go to
the U. S. Patent and Trademark office and do the search there yourself.
The public is welcome to go there where you can look through the
actual files of patents (as opposed to looking in the books at the
Depository Libraries).
Your local
inventors association or patent attorneys can refer you to patent search
firms if you choose to go that route.
Prototypes
After
you have completed a search and satisfied yourself that your idea is unique,
it is time to make a prototype (working model).
It does not have to be elaborate or expensive.
It does not have to be made of the materials that the final product
would be made of. Just make it
out of any material you can find. It
only needs to demonstrate what your invention is, how it works and that it
DOES work. If your invention is
something that you cannot make even a rough prototype of yourself there are
companies that specialize in making prototypes.
Their fees, however, can sometimes be quite expensive so if you are
able to make it yourself you are often better off to do so.
If your
prototype is something that needs to have a plastic injection mold they are
extremely expensive. Now,
however, there are less expensive alternatives.
A process that is called "Rapid Prototyping" accomplishes
the alternatives to plastic injection molding. The machines that do the
rapid prototyping are basically 3-D printing machines. The machines take a
drawing and "build" a model, microscopic layer by microscopic
layer. There are several different machines that are able to build
prototypes in this manner. The most common rapid prototyping machines are
the ThermoJet, Genisys, Prodigy, JP System 5, Objet Quadra and the Z402. You
can find listings for companies all over the world that provide rapid
prototyping services by using the keywords, "Rapid Prototyping Service
Bureaus" or by going to:
http://home.att.net/~castleisland/u_lks.htm.
On this site, page down to the heading "Commercial Service
Providers" and you will be able to find the rapid prototyping service
closest to you.
Rapid Prototyping does not replace plastic injection molding for durability.
It is, however, able to make a prototype that will clearly demonstrate what
will be needed to manufacture your invention. A prototype made with the
rapid prototyping process is usually more than sufficient for an inventor to
show a prospective licensee. And, the cost is dramatically less expensive.
It is not unusual for a plastic injection mold to cost tens of thousands of
dollars. Rapid prototyping can cost as little as $14.00 per cubic inch of
material used to make it. That's quite a difference.
Before you
show your idea to anyone to have him or her make a prototype (or anyone else
for that matter) it is essential that you have him or her sign a
nondisclosure agreement.
Invention Evaluation
Before you
spend a lot of money on a patent for your invention it is a good idea to get
it evaluated by a professional firm. They
can analyze the competition, the market acceptance and the cost of
manufacturing your product among other things.
There are several places you can go for legitimate invention
evaluations (BEWARE OF THE SCAM EVALUATION AND PROMOTION COMPANIES � see
sections on scams below). The
costs for their services vary generally from around $50.00 (for a very
limited study of your invention) to around $500.00 for a very thorough and
useful evaluation. You will
find a few listed below:
www.uww.edu/business/innovate/innovate.htm
Wisconsin Innovation Service
Center
Offers technical & market assessment services for new products
and service ideas (for individuals and companies
throughout the U.S., Canada and several foreign countries.)
www.oit.doe.gov/Access/inventions/inventions.html
US Department of energy�s
Inventions & Innovations Program
Offers financial & technical
support (grants) & business training for
development of energy saving inventions
Wal-Mart Innovation Center,
Springfield, MO
417-836-5671 Center for business
& Economic Development Southwest
Missouri State University
- 901 South National
- Springfield, MO 65804
http://www.walmartstores.com/win/index.html
I2
Innovation Institute
http://www.wini2.com/
www.innovationcentre.ca
Canadian Innovation Centre�s
Inventors� Assistance Program Offers
evaluation and commercialization services, quarterly
newsletter, information and resources.
Patents
Before you
file for a patent it is important to understand a little about the process.
It is possible that someone has had your idea, patented it and not
done anything with it (thus the importance of a thorough patent search). It is also possible that someone may have already filed for a
patent on your invention but it is still in the patent pending process.
If it has already been patented you can find out about it.
If it is in the patent pending process you must decide if you want to
proceed with your own patent application hoping that you are the first.
Patent pending applications are made public after 18 months if the
inventor has not specifically indicated that he/she does not wish to have it
made public (and they are not filing for any foreign patents).
For the first 18 months after a patent has been applied for the
patent pending applications are not made public so there is no way to find
out if one is already in the system.
If your idea
is great enough, your enthusiasm is great enough, the potential profit
margin is great enough and your possible market is large enough, you may
decide that you want to try for a patent.
Only you can make that judgment call after you have conducted the
most thorough patent search you possibly can.
There are a
few ways to go about filing for your patent.
The first, of course, is to go to a patent attorney.
The second is to go to a patent agent.
The third is to do it yourself with the help of patent application
software or with the help of a book.
Our
recommendation is to hire a patent attorney to do it for you if you can.
We were really �shoe-stringing� it when we first invented
Ghostline and we considered writing our patent application ourselves.
Our plan was to find the existing patent that was closest to ours and
use it as a sort of template to go by.
In our case, anyway, that would have been a big mistake!
Our patent attorney was able to write the claims in such a way that
it made our patent much stronger than it would have been if we had done it
ourselves. Scrimping on the
attorney fees would have cost us dearly in the value of our final patent
(assuming that would have been able to navigate our way through the process
at all!).
When people
hear that for a patent attorney to file for a utility patent often costs
between $8,000.00-$10,000.00 it can be discouraging.
That is a lot of money to come up with.
What most people don�t understand is that you do not have to come
up with the total amount at the start.
We paid around $2,500.00 to start and then paid other fees as they
were due. It is our understanding that most patent attorneys allow
clients to pay fees as they come due and as work progresses on the patent.
Many patent attorneys do not charge at all for the first visit with
them when they evaluate the patent ability of your invention.
Check to be certain that this is their policy, however, before
scheduling an appointment.
The second way
to file for a patent is to use a patent agent.
They are as qualified as patent attorneys to draw up and file your
patent application (Patent Agents and Patent Attorneys have to pass the same
test on their competency). Patent
agents are not attorneys, however and could not represent you in court.
Patent agents are usually substantially less expensive than patent
attorneys.
The third way
to file for your patent is to do it yourself.
You could check out the patent writing software.
There is a user-friendly software program that guides you through the
steps and even has a patent attorney look over your application before you
submit it to the U. S. Patent and Trademark Office.
You can find it listed on the UIAUSA.com website.
Finally, you
may choose to write and file for your patent yourself.
If you choose this last option we would encourage you to get the book
Patent It Yourself by David Pressman.
You can find the book at either your local bookstore or at the
UIAUSA.com bookstore online. That
is not the only book that would be helpful.
There are many others as well. Also,
if you do choose to patent it yourself we would suggest that you have an
attorney look over your application before you submit it.
They will often do that for a reasonable fee.
Provisional
Patent Application
If your
purpose in filing for a patent is to obtain the �patent pending� status
you may want to file a provisional patent application instead of filing an
application for a regular utility patent. It costs only $80.00 to file a
provisional patent application and the format is much looser than it is for
filing for a regular utility patent. Basically a provisional patent
application will "hold your place in line" at the patent office by
allowing you the earliest filing date possible. It will never result in
an actual patent.
Within one year after you
file your provisional patent application, you must file for a regular patent
or lose the advantage of the earlier filing date. Provisional patent
applications are not even looked at by the examiners at the patent office.
Provisional
patent applications are very attractive to some inventors because they allow
the inventor to have as early a filing date as possible and it allows them
to list their product as "patent pending." That gives the inventor
one year in which to find a company to license his/her product without going
to the expense of filing for a utility patent.
***IMPORTANT NOTE***
It is very
important NOT to divulge your invention to anyone (without a nondisclosure
agreement) because the USPTO has very strict regulations about when you can
file for a patent. You have ONE YEAR from the time that you first make your
invention public (either by showing it to someone without a nondisclosure
agreement or by offering it for sale or public use). The USPTO is VERY STRICT about that. The one-year clock starts running the moment you �make your
invention public� and if you apply for the patent one year and one day
after that they will disallow it. DON�T
LET THE CLOCK RUN OUT ON YOUR INVENTION!
Click on our button that says
"Non-Disclosure"
to find a sample that you may print out.
Since laws may vary slightly from
state to state or country to country it is always wise to have a local
attorney look over the agreement before using it.
Help to avoid Scams
Beware of companies that advertise that they will help inventors to
develop and market their inventions. Many of those companies are charlatans who prey on
unsuspecting inventors. They
charge large fees to represent the inventors and then do little or nothing
to represent them at all. We
always tell anyone we visit with to NEVER PAY MONEY TO A COMPANY THAT
PROMISES TO DEVELOP AND MARKET YOUR PRODUCT WITHOUT CHECKING THEM OUT
THOROUGHLY TO SEE IF THEY MAKE GOOD ON THEIR PROMISES!
The following are
sites you should visit before signing or submitting your
invention to any invention promotion or development company:
http://asktheinventors.com/scam.htm
http://uiausa.com/Redflag.htm
http://inventored.org/caution/list/
www.rjriley.com/caution
www.inventorfraud.com
www.ftc.gov
Most legitimate companies sign agreements that will allow them to
receive a portion of your revenues in payment for their services. They do not ask for money up front.
Finding Potential Licensees
Once you have your patent in hand and have
had your invention evaluated by a legitimate evaluation service (
several are listed on our "Helpful Links" page ) it is time to
concentrate on finding a licensee for your great invention.
- The first and probably the easiest way to find a
manufacturer is to go to the library and look in a set of books called
the Thomas Register. If you go to the library, the librarian can
help you to find a list of manufacturers in the United States who
manufacture items similar to or at least in the same category as your
invention. You can also find The Thomas Register online at http://www.thomasregister.com.
- Another way to find potential manufacturers
for your product is to go to the directory of manufacturers ( http://www.mfginfo.com
)
- Still another way you may find just the right
manufacturer is to go to stores and look at products that are closest to
or more similar to your invention. Most of the packaging should list the
name and address of the manufacturer.
- You can use the internet to locate potential
manufacturers through the national Yellow Pages or by using keywords.
For example, if you have invented a new type of baby swing, use keywords
"baby swing," "baby furniture," "baby
supplies," "child swing," etc. etc. etc.
- Still another way to find a manufacturer is to
let them find you. You can do this by listing your invention with
services that will post your invention on the Internet for manufacturers
to see or by enlisting the help of a legitimate product
developer. You can find listings for these types of services in a
magazine called "Inventors Digest." You can find
"Inventors Digest" either on the newsstand or on the Internet
at http://www.inventorsdigest.com
PRESENTING YOUR PRODUCT
Before you call the manufacturer to make an appointment to show them your
invention you must prepare a professional looking presentation that explains
what your invention is and why it is important.
Even if you are going to meet with them personally it is important to
leave a presentation with them that they can have to refer back to or to show to
other key decision makers in the company.
Harvey
Reese�s book, How to License Your Million Dollar Idea, explains the benefits
of having a great presentation for your product.
He states that you should always meet with the manufacturer in person.
Obviously, if you can do that it is always preferable to meet with them
in person. That, however, was not
possible for us when we were trying to license Ghostline.
The manufacturers of poster board were scattered all across the country
and when we were first starting to explore potential licensees we just could not
afford to go trotting here and there. That
was why it was doubly important that our presentation be first class.
We designed our presentation to �speak for us� when we could not meet
with manufacturers in person. Our
presentation was able to inspire at least two large manufacturers to either come
to us to visit about Ghostline, or pay for us to come to them.
If
you would like to see a sample format for this presentation, click on Presentation.
After
completing your presentation proofread it, then proofread it again and again!
You must not send out a presentation with even one typo. Also, go over each page to be certain that it looks perfect.
Make sure all the margins and indentations are exactly the same.
It will defeat the purpose of making a professional looking presentation
if it does not look absolutely perfect.
Once we finished the presentation we took the whole thing to Kinko�s and had
them bind it in a very nice looking binder.
It looked very professional. We
prepared one of these presentations for each company we were interested in. It cost a bit to do it but it was well worth it.
Just think how much more impressive it will be for a company to receive a
professional looking presentation that answers their questions than it would be
to receive just a letter. Also, if
you go to the trouble of making a nice presentation it looks like it is a much
more valuable product. If you
respect your invention and how you present it, it is more likely that the
potential licensee will also.
Then, when we were ready to send them out we chose to send them by Federal
Express. Again, people just think
something is more important if it comes by Federal Express.
It makes them open it and pay attention when they might easily dismiss a
letter.
Finally,
we suggest that you send the presentation to the president of the company rather
than the new products division of the company. If the president or his assistant passes it along to the new
products division they are more likely to pay attention to it than if it comes
directly to them.
LICENSING
Licensing is a very personal decision and only you and your attorney can work
out the specifics. Every situation
is unique. There are a few things
that you should consider. First, if
you choose to offer an exclusive license, that is you will license to only one
licensee, it is customary that the licensee assume the responsibility to enforce
the patent. This is a biggie.
No matter how great or strong your patent is it may be challenged.
If it is challenged the legal fees can be enormous!
It is very advantageous to the inventor to have a company assume that
responsibility.
If you choose to offer non-exclusive licenses (that is more than one company
will be licensed to manufacture and distribute your product) it is customary
that the responsibilities for enforcing the patent remain with the inventor.
Not many inventors have the resources to assume this responsibility.
The percentage of royalty paid to an inventor varies.
The most common percentage is 5%. That
is not a hard and fast rule, however. Some
royalty rates can be as low as 1 � 2 % or as high as 15-20% or more.
It all depends on the item and the industry.
When
drawing up your licensing agreement we would suggest that you include provisions
that allow either party (you or the manufacturer) to terminate the contract
after a specific number of years with adequate notice.
In addition it would be ideal to include a provision that would allow you
to renegotiate the contract after a specified number of years.
We would also suggest that you include a provision that addresses what
would happen if the company you licensed your product to filed for bankruptcy or
went out of business. Finally, you should include a guaranteed minimum of
royalty to be received each contract year and penalties for late payment of
royalties.
Inventors clubs and associations
We STRONGLY recommend that you get in
touch with your closest inventors association or club.
They can be your most important resource for they are filled with people
who have �been there and done that� and can tell you about valuable local
resources.
There are a couple of links you can go to in order to locate your nearest
inventors club. They are:
The United Inventors� Association at www.uiausa.org/InventorOrg.htm,
or
Inventors�
Digest Magazine at www.inventorsdigest.com/connect/orgs.html
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