|The Great Idea||Product Evaluations||Offshore Manufacturing|
|Getting Started||Patents/Patent Applications||Marketing/Licensing|
|Invention Protection||Trademarks||Invention Contests|
These are questions that have been submitted to us by new inventors just like you. We hope you will find the answers to your questions here. If you do not please write to us through our CONTACT US page. We answer each and every e-mail we receive. Please keep in mind, however, that we are not attorneys so any advice we give should not be construed, in any way, to be legal advice.
|The Great Idea|
If it is a simple idea, Could it still be a good one?
You bet! In fact, it is often the case that the simplest inventions are the best and have the widest appeal. For example, if you were to think of a simple container for breakfast cereal that is easier to deal with than the traditional cereal box, your invention would appeal to millions of people. If, on the other hand, you were to think of a new kind of foot pedal for a unicycle, that invention would appeal to far fewer people.
Many simple ideas have been the greatest. Where would we be without Ziploc bags?. . . or Velcro? These simple ideas have made a difference in all of our lives.
Can I tell all my friends about my great idea?
Fight the urge! If this idea is as great as you think it is, you do not want to do anything that might jeopardize your chances of success. Tell only those friends that you trust completely and have them first sign a non-disclosure agreement. You can explain that you must ask them to sign the non-disclosure agreement in order to protect your rights to file for patent protection, not because you do not trust them. It’s the truth.
Until your idea is protected, it is better to tell as few people as possible. In inventing, the first person to apply for a patent is the one who receives it. Because the USPTO observes the one-year rule in regard to patent applications, it is vitally important to always obtain a signed non-disclosure agreement (NDA) for your files before revealing your idea to others. As long as you have gotten a signed NDA before showing or discussing your invention, it is not counted as a public disclosure.
The USPTO has a One-Year Rule that requires that your patent application is filed within one year of the first Public Disclosure. A public disclosure can be any of the following situations: showing or describing the invention without first obtaining a signed NDA, describing it in a published document, offering the invention for sale or actually selling it. If you fail to apply for a patent within one year of any of the above instances, the invention will be considered to be in the public domain and not eligible for a patent.
Is there a company that will pay me for my ideas?
The good news is that your great ideas are a fabulous start and you may be able to turn your creative ideas into cold, hard cash! The bad news (if you want to call it that) is that it is nearly impossible to sell ideas. I wish we could tell you that such companies (those that would buy unprotected ideas) exist, but we know of no one who buys ideas. The problem is that there are many people with lots of good ideas.
That said, there is still plenty of room for innovation in this country. Manufacturers do sometimes buy or license the rights to developed products. You may indeed be able to sell your ideas once you have done the research to determine that the ideas are yours to pursue and you have, at minimum, filed a patent application with the United States Patent and Trademark Office.
What should I do after I get a great idea?
Follow through! Many people have some really good ideas for great new products, but most of them never do anything about it. Thomas Edison, one of the greatest and most prolific inventors in American history, said, "I have more respect for the fellow with a single idea who gets there than for the fellow with a thousand ideas who does nothing." Following through is the difference between a successful inventor and a dreamer.
Don't get us wrong! There is nothing wrong with dreaming. In fact, it can often be the starting point. Some people daydream terrific ideas. Others actually dream great ideas while they are sleeping. Our terrific idea came in a real dream. Inspiration can come at any time and in many ways. Be open to it.
I have seen a lot of my ideas appear on the store shelves.How can I make sure that I get the money from my good idea?
Now you are on the right track! Don’t take it sitting down. Do the work necessary to guarantee that YOU will be the one to make the money on your next great idea. That exact thing has happened to almost everyone. How many times have you seen something on the market that you yourself thought of? We can tell you that it has happened to all of us who are involved in inventing. It is a sinking feeling to see someone else making money from something that we thought of and did nothing about. We believe that ideas are "in the ether" and if an idea occurs to one person, chances are excellent that it has also occurred to several others. The person who will benefit from it is the one who moves forward, immediately!
Don't dally! If you do, your great idea could be someone else's invention. Nothing happens until you make it happen! Andy Rooney of 60 Minutes says, "Opportunities are never lost; someone will take the ones you miss." We have seen that this is true.
I have an idea for using an existing product in a completely new way for an entirely new market. Can I sell my idea to the company that makes the product?
Hmmm. This would be the absolute easiest route to success if you can finesse it! It is certainly possible that a company might pay, at least something, for an idea that would expand their existing market substantially. It is not something we have any personal experience with but it sounds reasonable. You might need to approach the manufacturer by explaining that you know of another use and a brand new market for their product that could increase their sales dramatically. Explain that you will tell them what it is if they will agree to pay you a royalty on all sales to that new market. Do your homework before you go to them. Find out how big that potential market could be. Would they be distributing the product to retail outlets that they do not currently serve, or would the product just appear in another part of a store where their product is already sold? It is certainly worth a try. We wish you great success!
My idea is so obvious I cannot believe is not on the market already. Why would this be?
We hope it is because you are the first person to think of this fabulous invention! Or, the first to follow through on the idea. However, the sad fact is that some very good products don't reach the marketplace because they are just too expensive to manufacture and sell.
But...don't jump to that conclusion. There could be other reasons as well. If a good market search and patent search does not turn up your idea, it would be wise to get a professional marketability study performed. A professional marketability study from a reliable source can give you a definitive answer to whether manufacturing cost is the problem or if there might be another reason this product is not on the market. The marketability study might also recommend that you move forward quickly with this great idea! If a good market search and patent search does not turn up your idea, the Wisconsin Innovation Center, l, is an excellent place to start. Their evaluation can give you a definitive answer to whether cost is the problem.
New products frequently appear that are so obviously useful that they should have been marketed long ago. If you are fortunate enough to come up with something that is very obvious, very marketable, and economically feasible, it could be a real winner!
I have a great idea but I don't know how to actually make it. What now?
Thinking out of the box is great and it is often the launching pad for terrific ideas, but thinking too far out of the box may result in frustration. We advise first-time inventors to stay within their area of expertise. Too often first-time inventors confuse an idea with an invention. For example, I may think that it would really be neat to have cars that hovered above the road on jets of air, eliminating the need for tires and making for a very smooth ride. That's an interesting idea, but that is all it is… an idea. I wouldn't have a clue as to how to create such an invention. Or, I might think, “wouldn't it be great to have a machine that you could just walk into that would immediately transport you to another location in the world.” Those are just ideas! They are way out of my area of expertise! Inventions like those will have to be left to the scientists, or more likely, to the science fiction writers.
Staying within your area of expertise does NOT mean that you have to know everything about how to make your invention right now. It just means that you must have the ability to find out what you need to know in order to proceed with your invention. When we began working on our first invention, Ghostline®, we did not know all that we eventually learned, but we did know that we could find the information. We could find the people who knew the information we needed to learn in order to figure out how to do what we wanted to do.
We often hear from people who have an idea (a "wouldn't it be nice if" idea) but they don't know how to do it themselves and they don't know how to find an expert in the appropriate field to help them. By the way, if you are not cautious, the expert you hire to help you develop your invention may turn out to be the actual inventor, instead of you. In order to be the inventor, you must have an idea of a way to make your invention work. At the very least, your expert may have to be listed as a co-inventor. The way to avoid this complication would be to have a special nondisclosure document that would make it clear that you are hiring the expert, paying him for his assistance, and stating that he has no claim of ownership whatsoever to your eventual invention. This document is called a contractor’s non-disclosure agreement.
The chances of success for a first-time inventor are greatly enhanced when the inventor stays within his/her area of knowledge. Don't try to invent a complicated device on your first time out. Many simple, yet useful items that will make life easier for all of us are yet to be invented.
How soon will I start making money on my idea?
This is something everyone with a great idea wants to know! We certainly did. Unfortunately, there is no quick answer. There are too many variables to be able even to make a reliable guess. We can tell you that it will probably be much longer than you think. Inventing is fun and exciting but it is not a fast process. Some people seem to think that they can have money rolling in within six months of when they first had the idea. There may be cases of this happening, but they are the exception rather than the rule. The period from idea to income will probably take two or three years or more. If you have a great idea however, don’t let the time involved deter you. Once the money does start to come in, all the effort will have been worth it.
I think my idea is a great one but how can I know if it would make a good invention?
You are a wise product developer to ask this question. Many times independent inventors are so enamored with their ideas that they fail to look at them objectively to determine if they are likely to succeed in the marketplace. There are criteria against which you should measure your idea. 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, minimizing advertising cost to educate the public about it.
- It will be inexpensive to produce. Ideally, the company to whom you license your invention would, already have in place everything they need to produce your product. It would not require a lot of tooling up expense.
- The spread between the manufacturing cost and the selling price is large. The rule of thumb is that your product must be able to sell for at least four to five times the cost of manufacturing the product. For example, if it costs $1 to manufacture your invention, it should retail for, at least, $4-$5.
- The item gets "used up." Your market will increase dramatically if your product is something that has to be purchased again and again.
- The manufacturer already has the distribution channels in place. Their sales personnel already have shelf space for this type of product allotted to their company, making it a simple matter for them to add your product to their planogram (map of the shelf space in a store).
If your invention meets most or all of the above listed criteria, you have a great chance for 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.
I know that I am the first with this idea. I haven’t seen it for sale. Where do I go from here?
We totally understand how you feel. When you have a great idea for a product that you need and you have never seen it on the market, you just assume that you are the first with the idea. We have to fight that tendency ourselves every time we come up with a new product idea. It is a natural thing to do. We are sorry to have to tell you though, that it is not as simple as that. Many, many ideas that never make it to the market have been patented. If they are in the patent database (if they have ever been patented), you cannot get a new patent on them. The United States Patent and Trademark Office (USPTO) tells us that 97% of the patents issued to independent inventors never make it to market. But they are still patent protected, making them unavailable for new patents. Other great ideas that are not patented have been offered for public sale, perhaps on an obscure website or in a catalog with limited distribution. If they have ever been offered for sale, it will not be possible to get a patent on them.
So, the first thing you must do after getting your great idea is to complete some research to be as certain as you can that the idea is available for you to pursue. You do this in two ways. First, you will need to do a market search (to be certain that it is not already offered for sale). Then, you will need to do a preliminary patent search. You can do this search yourself from the comfort of your own home or office with the resources that are available over the Internet.
I'm just a kid but I have thought of some great ideas for inventions. Can I be an inventor too?
Absolutely! There are products on the market right now that were invented by young people. Did you know that the technology for television was invented by a 14 year-old boy? Young people are great inventors! Go to any store and you will see products that were invented by youngsters. There are no age requirements for owning a patent. Go for it!
We are students and we want to know how to invent an automatic napkin dispenser. Can you help us?
The name of our website may have caused you some confusion. It sounds like we answer any question but actually this is a website run by my sister and me, who try to help people who want to be inventors. We give them advice and tell them the steps they need to take to go from having an idea to having an actual product on the market.
What should I do if I have an idea that improves an existing patented product?
Most inventions are improvements on existing products. Yours is a legal question and we are not attorneys. That said, this is our understanding of your situation. It depends on the patent on the existing product. If that patent is written in broad enough terms to anticipate your improvement, then you would not be able to develop your product. If, on the other hand, your improvement is not anticipated in the existing patent, you may be able to get a patent on your improved version of the product. I hope that is the case for you. In any event, you should speak to a patent professional. Take a copy of the existing patent along with your improvements when you go to visit with him.
I have invented a new food item. Does your information apply to food inventions also?
Food items are some distance away from the types of inventions we are familiar with, but you may need to get some sort of protection, depending on exactly what your item is. If it is a new recipe for something you may only need to keep it confidential as a "trade secret." A patent attorney or patent agent could tell you for sure.
Inventors Digest Magazine devoted an entire issue to the development and marketing of food items. Just go to www.inventorsdigest.com and look for 'Back Issues.' Then look for the one that says, "Inventing for Food" on the cover. Perhaps that magazine will give you some guidance in the development and submission of a new food item.
My invention is a . . . . . . . and I want to know if you would be interested in partnering with me?
Please do not send your ideas over the Internet. It just isn't a secure way to send them. Second, please do not tell anyone, even us, what your idea is without a signed non-disclosure document in place. We would never steal your idea but when you tell us or anyone what your idea is the clock begins ticking as far as the United States Patent and Trademark Office is concerned. You have exactly one year from the time of your first "public disclosure" in which to file for patent protection or lose it forever. We want to protect you and your rights to file for patent protection.
We are flattered that you would ask us to partner with you but we partner only with one another.
I want to make a change to a bicycle that will be an added feature. Would I get paid a royalty on the added feature or on the whole bicycle?
It is all going to depend on the agreement you and your attorney are able to work out with the manufacturer. We believe it would depend on how much your invention changes the bicycle. Is it a small additional feature or is the basic design changed so that bicycles with your invention would be significantly different from ordinary bicycles? If it is a small feature that would be added to an existing bicycle, you would probably be paid royalty only on the added feature.
If, on the other hand, your design changes the entire bicycle, we think you could reasonably expect to receive a royalty on the wholesale selling price of the entire bicycle. For example, when CPP International sells a piece of poster board with the Ghostline® grid printed on it, our royalty is based on the total wholesale selling price, not just the cost of adding the Ghostline® grid to an ordinary piece of poster board.
I have a great idea for a baby product. Should I take it to Babies R Us?
Whoa! We know you are excited about your idea but you could ruin your chances of making any money from it if you rush off to show some company your idea before you have done your due diligence. Undoubtedly, your friends are excited about your idea and want you to jump right to the end of the process. They mean well, but it would be a BIG mistake to do that now. You should have some protection in place before you show it to any manufacturer or retail store. But, first things first. . . do a market search and a patent search before you do another thing.
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I contacted a company I saw advertised on television to help me with my invention idea. I signed on with them. They did a patent search and got a design patent for me. Now they are s difficult to contact. Can I get my money back?
If you will go to: http://www.inventored.org/caution and scroll down the page, you will find lots of information about such companies. This is a website maintained by R. J. Riley, a great friend of independent inventors and a watchdog for companies that mistreat them.
We cannot comment about any company in particular but you will find what has been said by others about them on this site. I am sorry to say that your chances of getting your money back are slim. It is a sad fact, but most of the companies that advertise on the media that they will help inventors are less interested in inventions than they are in getting into the inventor's wallets. I wish I could say that your story is new to us but unfortunately, we hear it constantly. I'm sure it is no consolation but you are in good company. Getting involved with these companies is no reflection on your intelligence.
Our only advice at this point is to file a complaint with the FTC if you wish. You will find them at: http://www.ftc.gov/ftc/consumer.htm. And, if you feel that your invention is worth the additional effort at this point you can start over and handle the details yourself. You will find information on the steps to take on our website.
Should I hire an attorney to try to make that company give my money back?
Before you spend money in trying to recoup your investment with that company, you might want to contact R. J. Riley, of www.inventored.org.
I truly hope that you can get some of it back. It seems that most of these companies manage to barely stay inside the law in order to keep your money. In other words, they say that they will do a patent search, and they do. But it is a very shoddy search and they say that they will get you a patent and they do . . . but they get a design patent which is worthless if your invention is one that requires a utility patent. They take advantage of the fact that new inventors are not familiar with patent searches and patents. They also take advantage of new inventors' lack of knowledge of the way that licensing works. And they charge incredibly inflated prices for these searches and for creating prototypes. But, those things are not illegal, just unethical.
Is it important to document when I first had my idea?
Not really, the US is now a first to file country (in step with the rest of the world) so it no longer is important to prove that you were the first person with the idea. It is extremely important to file as soon as you possibly can.
I have a great idea, but I don't know how to get started. What do I do first?
The brainstorm of a great idea is a wonderful beginning but it is only the beginning. Now your inventive adventure begins! The very first thing to do is to determine if the idea is yours to pursue. With any new idea, you must start at the beginning of the inventive process. It is very important that you not tell anyone about your idea without first having that person to sign a nondisclosure agreement.
What are non-disclosure agreements and why are they important?
You need to get familiar with these right away. NDAs, described in Chapter One, are legal documents that should be used liberally by every inventor. Non-disclosure agreements (NDAs) ,sometimes called confidentiality agreements, are extremely important for protecting your idea and for allowing you the time you need to develop your product. They are simple legal documents that you should have signed by anyone to whom you show your invention. The documents state that the recipient has seen your invention and he agrees not to tell anyone else about it or to use it in any way. In addition to putting the receiver of the information on notice regarding your ownership of the information, the NDA serves another very important function. Getting a signed NDA for your files before revealing your invention prevents the disclosure of the idea from being a public disclosure. A public disclosure starts the clock ticking on the filing date for your patent application, allowing you only a year in which to file. The NDA is a legal document that you will keep in your files to prove when and to whom you showed your idea. The person who signs your non-disclosure agreement has no need for a copy. The signed agreement is for your files. However, if they request a copy, there is no reason not to give them one.
There are two basic types of NDAs that are used by independent inventors. The first is a standard NDA and it should be used when showing or discussing your invention with anyone. The second is a Contractor’s NDA and it should be used when hiring any professional to help you make a prototype or develop your invention. The Contractor’s NDA simply states that they are working for hire and any improvements or changes they make to the invention remain the sole property of the inventor. This NDA protects the inventor from inadvertently ending up with a co-inventor who would have a claim on the invention.
Do I have to go to an attorney to have a non-disclosure agreement created?
Unless there is something about your invention that requires more specific information than the usual NDA’s provide, you do not need to go to an attorney to get an NDA. NDAs are readily available from multiple sources. You can find sample non-disclosure agreements in the back of this book. Also, most inventor clubs give free non-disclosure agreements to their members and guests. If you have any question about the protection of the NDA you plan to use, consult a patent attorney or patent agent in your state.
A non-disclosure agreement (NDA), also known as a confidential disclosure agreement (CDA), is actually a legal contract between the owner of proprietary information (the inventor) and the receiver(s) of that information. It states that the parties agree not to disclose the information covered in the agreement for a specific term (in years).
What are my first steps?
Perform both a market search and a preliminary patent search . These searches can be time consuming but it is crucially important that both be performed as thoroughly as possible before proceeding further. The good news is that both of these searches can be done for absolutely no cost at all because you can do them yourself. It will only cost you the time you spend on them. If at this point you find that your invention already exists, you will have saved yourself from investing your hard-earned cash in a futile project.
Do you have a list of the steps of inventing that will help me keep on track with my invention?
We do. While many of the steps to inventing are the same no matter what your product is, there are few hard and fast rules of what must be done and when. These are steps we took when we invented Ghostline®. You may wish to use them as a guideline or you may want to blaze your own trail. Whatever you choose, hold on to your hat for a wild ride! Inventing is exciting, exhilarating, discouraging, tedious and thrilling (sometimes all in the same week!). Steps 7 and 8 are related specifically to licensing your invention because that seems to be the choice of many independent inventors.
- Research your Idea to see if it already exists
- Develop a Prototype of your Invention
- Get an Invention Evaluation
- Protect Your Idea
- Determine Your Marketing Plan (License or build a business around your invention?)
- Find a Manufacturer who will License your Invention/Patent
- Or, find a legitimate licensing agent to help you find a licensee for your product. We encourage you to at least try to do it yourself before you give up a portion of your royalties. We found our licensee ourselves and negotiated the licensing agreement with the help of our attorney. No one is as passionate about your invention as you are. You are your own best salesman!
How can I be sure that my idea is not already out there?
It is essential to conduct both a market and patent 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 for sale. 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, 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 www.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 classifications 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. If you need a little help in doing the search online we offer a free patent search e-book. Just request it through our website and we will send it right out to you.
Finally, you can hire the search done by either a patent agent or one of the firms that specialize in this service in the Washington, DC area. We have links to the patent agent we personally use as well as a firm we trust in the DC area. You can find links for both on our "Helpful Links" page.
Can I do a market search myself?
You can and you should! Before you invest money in your idea, invest your time to determine if the idea is yours to pursue.
Are there clubs for independent inventors? If so, where can I find them?
Indeed, there are such organizations and you are a wise inventor to seek them out! Inventor clubs often have patent attorneys and patent agents among their membership who give freely of their advice at the meetings. There are usually members who are prototype professionals, marketing professionals, as well as inventors at every step of the inventive process. The networking opportunities and the shared resources at the meetings can sometimes make the difference in whether you get your product to market or not. We have a list of inventor organizations on our website with links and contact information.
If you are not in an area served by an inventor’s association or club, you can find support and encouragement on websites like ours. There is help if you seek it out!
Are there any state government agencies that can help me in developing and marketing of my invention?
Yes. In nearly all states there are state planning and development agencies or departments of commerce and industry which seek new product and new process ideas to assist manufacturers and communities in the state. If you do not know the names or addresses of your state organizations you can obtain this information by writing to the governor of your state. Also, your local Small Business Development Center (SBDC) has programs, usually free, to assist you.
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I don't know what kind of protection I need for my idea (Patent? Trademark? Copyright?)
We cannot advise you for your specific situation, but these are the differences, as we understand them. A utility patent, also referred to as a non-provisional patent, protects useful processes, machines, articles of manufacture and compositions of matter. A design patent is granted on the ornamental design of a functional item. A trademark is for a product name, logo or slogan that describes a product. A copyright is for written, musical, or artistic work. An intellectual property attorney could tell you which kind or kinds of protection would be appropriate for your idea. Most patent attorneys and patent agents do not charge for the first visit with an inventor. Or, if you don’t know a patent attorney or patent agent, head to your local inventor’s club where you will probably be able to discuss the type of protection you need with a patent attorney or patent agent for absolutely no charge.
I’ve done my market search and my preliminary patent search and have not found my exact idea. How can I start claiming this idea as mine?
Wonderful! It’s looking good for your idea at this point. You can start claiming the idea as yours in a couple of ways. First, you can (same song different verse!) . . . start keeping an inventor’s journal! Second, you can begin using non-disclosure agreements each and every time you show or discuss your idea with anyone. Since the U.S. is a First to Invent country, it is very important that you start documenting when you first had the idea, when you started working on it, and that you have been continuously working on it without long periods of inactivity. We are going to keep telling you to start your inventor’s journal until it becomes ingrained, so get used to a little nagging. Like your mom, though, we are doing it for your own good!
Where can I find someone I can trust to help me get my invention patented and marketed?
Although there are many charlatans in the invention promotion business there are legitimate sources of help also. Just be sure that you are dealing with the latter, not the former! Your local inventors association or club can be a great source of help and encouragement. You can find a listing for your closest club on our website at Inventor Organizations. Before engaging any company to help you it is wise to check them out thoroughly. We have a printed copy of a USPTO pamphlet that can help you to identify the scam artists and steer clear of them.
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What is a prototype?
The dictionary describes it this way: “the original or model on which something is based or formed” For an inventor, a prototype is simply a working model of the invention. It does not need to look like the final product. It does not need to be made of the materials of the final product. It only has to show what the invention is, how it works, and that it does work. That's it!
Are "virtual prototypes" useful for independent inventors?
Yes! When the cost of making an actual prototype is prohibitive virtual prototyping is an excellent alternative. Virtual prototyping consists of 3D CAD animated drawings that illustrate what your product would look like from every angle. If there are working parts to your invention they demonstrate how the parts work. Virtual prototyping can be expensive but we know of a source of excellent virtual prototypes at the most reasonable costs available. Check our Resources page for sources of virtual prototyping.
I know my invention will work the way I envision it. Why do I need to actually build a prototype?
Your words sound familiar to us because we felt the exact same way! But not going through the prototype process would have been a huge mistake. We thought we knew exactly what our invention should be. Ghostline®, our invention, is lines that can be seen up close for lettering or drawing on poster board. We made our first prototype by simply measuring and drawing light pencil lines on poster board. When we got ready to have our first prototypes printed (after studying inks, screen and off-set printing) we first tried extremely thin black lines (too dark! We could see them across the room!). Then we tried gray lines (again too dark!) We decided to try blue lines (again, no good!) We thought we had hit upon the correct ink formulation when we tried pure white (too hard to see!). When we decided on yellow lines and had the first batch printed we were elated when we saw them at the printers (under florescent lighting). The lines were easy to see up close but could not be seen at a distance. We thought we were home free until we took them home and placed them on the kitchen table (under incandescent lighting). . . OOPS! The lines disappeared entirely! All in all, on a simple invention like ours, we went through seven or eight prototypes before we finally hit upon the exact right formula that made the lines visible from a writing distance but virtually imperceptible from any distance away.
We learned that even the simplest of inventions need to go through the prototyping process. During that process you will find things that will not work, that you thought would work. You will discover improved ways of making your invention that you might never have thought of if you had not made a prototype.
Going through the prototyping process you will be able to make your invention in the best possible form. This is very important when it comes time to file for your patent protection. You want to be the one who has thought up every possible improvement on your invention before someone else does and makes your patent obsolete.
We strongly urge inventors to make prototypes of their inventions, if they can at all! Skipping the prototyping process is a big mistake!
What if I need to tell someone my idea in order to get his or her help?
There is a right way and a wrong way to do it. Be smart! Do it the right way to protect your invention and your right to file for patent protection on it. If you need to tell someone, ask him to sign a non-disclosure form. You can find sample NDA’s at the back of this book. Do NOT show or discuss your idea with anyone, even a professional service provider, such as a prototype designer, without having him to sign the appropriate NDA for your files. The exception to this rule occurs when you discuss your invention with a patent agent or a patent attorney. These individuals are bound by the ethics of their professions to hold your idea in confidence, so sharing the idea with them without using an NDA will not start the clock ticking on your patent filing date.
Can I build my own prototype?
Absolutely! In fact we encourage you to make your own prototype. You can make it out of any materials that you find. Go to the hardware, hobby or any specialty store that might have the parts you need to assemble your prototype. Build it to be certain that it works the way you think it will.
I don’t have a machine shop; can I make my own prototype?
You can if you have tools to use or can borrow them from a relative or friend. Many independent inventors devise ways to make their first prototype themselves. If you can, do it!
How can I find someone to help me build a prototype?
There are many sources of help. The first place to look is your local inventors club that may have professional prototypers as members. Another place is in the Yellow Pages. Sometimes they are listed as prototypers. Other times they will be listed according to the services they provide. For example, if you need a machine shop to help you simply look under “machine shops” or “metal fabrication.” Be sure to take along a vendor’s non-disclosure document for them to sign before you discuss specifics of the invention.
My prototype needs some engineering, where can I find help building it?
If your product needs engineering help you may be able to find that in the engineering department of your local university. Often graduate or senior students will take on projects for independent inventors for bargain prices.
My prototype needs to be made of plastic, how can I do that?
If your prototype needs to be made of plastic you can find listings for plastic manufacturers. Speaking of plastic prototypes, if you only want to make one or two working models you may be able to make them yourself with the help of a video that explains how to make your own plastic prototype from simple readily available materials.
You can find that video at www.plasticprototypes.net.
Check out this source for rapid prototypes!
Rapid Prototyping Services - the process of converting CAD drawings into physical parts. Specializing in stereolithography. Easy online quotes that provide instant pricing for prototypes.
What is an injection mold?
It is an expensive mold used by manufacturers. They pour liquid plastic or other materials into the mold and create thousands or millions of identical products. Injection molds are extremely expensive often costing from $20-30,000 on the low side to well over $100,000 or more! Most independent inventors find the costs prohibitive. That is really just as well in most cases, if you plan to license your product. Unless you plan to be the manufacturer of your product you should make the best prototype that you can to show what your invention is, how it works and that it does work. Then, if you license your product, let the manufacturer get the injection molds made. It is unlikely a manufacturer would use your mold even if you had one made. It is likely that they will make minor changes that would necessitate a new mold anyway.
If your prototype is something that needs to have a plastic injection mold, there are less expensive alternatives. A process 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 servies by using the keywords, "Rapid Prototyping Service Bureaus".
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 to 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 around $20 per cubic inch of material used to make it.
Does my prototype have to look like the final product?
No, it only needs to demonstrate what your invention is, how it works, and that it DOES work.
How much will it cost to build a prototype?
There is no way to even guess at the answer to this question. It all depends on your invention, its complexity and the materials of which it is to be made. What we can tell you is that your first prototypes should be as crude and inexpensive as they need to be until you get all of the bugs worked out of the development.
How can I figure out how much it will cost to manufacture my invention?
That can be a difficult thing to do, but here are some guidelines: Most products need to to retail for 4 to 5 times the cost of producing them. So, if you can find a similar product that is on the market, look at the retail price and divide that by 4 or 5, that should give you a ballparkidea of the cost of production. If you cannot find a similar item, look at other items that would be made from the same materials and use approximately the same amount of materials and see if you can do the math backwards on them. This is a very rough way to do it. Obviously the best way is to find the cost of the raw materials and get estimates from manufacturers on the cost of producing the item. Some of the more thorough invention evaluations will include this information in their report.
I designed a cool new lamp. I want to have a built-in timer. Is there anything infringing or unethical about buying an off-the-shelf GE timer, cracking open the case, modifying it so that it's hard wired into my lamp )not plugged into the wall outlet as normal), and then including it with my product for sale? It's basically a sourced component that becomes part of my design.
If you buy the off-the-shelf GE timer then it is yours to do with as you wish. GE has already made their money from you. If, however, you just copy their timer and it is protected by a patent you could risk infringing their patent.. So long as you buy it you are in the clear, even if it is patented.
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Do I really need a professional evaluation of my invention?
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!) The costs for their services vary generally from around $50 (for a very limited study of your invention) to around $900 for a very thorough and useful evaluation.
Is it possible to get a market evaluation before you begin the patenting process?
It is not only possible to get a market evaluation first, it is highly recommended! Most people, in their zeal to get their great ideas out there, don't consider doing their homework first and sometimes cause themselves a lot of grief.
If you get a good evaluation before proceeding to patenting, you can often save yourself a lot of money, far more than the cost of the evaluation. These evaluations cover so many important things that product developers need to know about their new products, such as who (and what) your competition is, where the actual market lies, how large the possible market may be, manufacturing cost vs. retail selling price, possible weaknesses in the product that could be corrected before patenting, even possible licensees, etc. Good evaluation services have contacts all over the world that they utilize in evaluating new products. That is something that an independent product developer would find very difficult and time consuming to do.
These services will provide you with signed non-disclosure documents, so you can feel comfortable in disclosing your information to them. The most comprehensive evaluation that we recommend on a regular basis because we know them to be thorough is: The University of Wisconsin Innovation Service Center
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How did you find your patent attorney?
We joined our local inventors group and got the recommendation from them. We actually visited with about four attorneys before we decided on one. We hired him, had difficulty communicating with him and finally went back to the first patent attorney we saw.
How much did it cost to get a patent?
In 1994-95, when we were getting our patent, it cost between $6,000 and $8,000. We paid around $2,500 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 or patent agents do not charge at all for the first visit with them when they evaluate the patentability of your invention. Check to be certain that this is their policy, however, before scheduling an appointment.
What is a Provisional Patent Application and how might that help me, an independent inventor?
A provisional patent application is exactly that, an application. It will never result in an actual patent unless you convert it to a regular utility patent application. There are advantages to filing a provisional patent application if your product is ready for licensing (i.e. a thorough patent and market search has been done, a working prototype exists, and an analysis of cost of manufacturing vs. retail selling price has been done). It is also a good idea to have a professional product evaluation performed by a legitimate source (NOT THE COMPANIES YOU SEE ADVERTISED ON RADIO, TV AND IN PRINT). The filing fee for a provisional patent application is only $110 (significantly less than the filing fee for a regular utility patent application). The beauty of the PPA is that it allows you to legally state that your product is patent pending from the moment you drop your application into a U.S. mailbox. You are then ready to present your product to potential licensees with some degree of comfort that they are unlikely to rip you off knowing that you have filed with the USPTO. Also, if you are able to find a licensee during the one-year time period of the PPA then the licensee would likely pick up all the expenses related to filing and prosecuting the actual utility patent. You, of course, would still be listed as the inventor on the patent. The disadvantage of a PPA is that it has only a one-year time period. If you let the one year elapse without converting it to a regular utility patent application and you have divulged your idea without the use of NDA( i.e. made a public disclosure of your idea), then you would forfeit your right to ever file for a patent on that invention. (Remember, we are not attorneys and there may be nuances of the law and filing requirements that a competent attorney could and should help you to understand.) If you have NOT divulged your idea without using an NDA you may still file for a patent on your idea. You would, however, lose the earlier filing date that you would have benefited from if you had converted your original PPA to a regular utility patent application.
How much does it cost for a professional to write a Provisional Patent Application?
It all depends on where you go for help. Rates vary widely. Most attorneys and agents charge between $800 and $2,400 to write the provisional patent application.
The company I licensed my patent to is supposed to pay the patent maintenance fees. How can I be sure that they have paid them?
Maintenance fee information is available on the USPTO website and you can pay your maintenance fees online there. We advise you to keep track of the due dates and send the company reminders if necessary. Another option is to pay them yourself and then get your licensee to reimburse you. That way, you know they are paid on time. The exact location for that information on the USPTO website.
Did you do your own patent search?
We did. In 1994 it was before patent searching on the internet was available through the United States Patent and Trademark Office's website (www.uspto.gov) so we did it at our local Patent and Trademark Depository Library. The librarians there are trained by the USPTO and can help you to do a fairly thorough patent search yourself. After having satisfied ourselves that our idea was patentable our attorney recommended that we have a professional search done also. That is a good idea even though it turned out that we found the same "prior art" that the pros did. Our attorney had the professional search done for us before we knew that we could go directly to the patent search firms rather than through the attorney and save a bundle of money in the process. Our attorney charged us approximately twice what it would have cost if we had hired the professional searchers ourselves.
Is the patent search guide you offer enough of a search before I file for a patent?
No! The patent search guide teaches you how to do a preliminary patent search only. It serves several purposes. First, it allows you to do a "knock-out" search. In other words, if you find your idea right away, you will save yourself further time and money if you know how to look for it in the patent database. Also, if you do the best search that you can possibly do and have not found your invention, but you have made notes of the patent numbers and perhaps printed out the patents that are closest to your idea, you may be able to save yourself some money when you take it for a professional search.
I have never done a patent search. How do I do this?
You can do it in one of two ways. You can go to one of the Patent and Trademark Depository Libraries (PTDLs) that are scattered around the country or you can do it from your own computer. Your local library can direct you to the closest PTDL or you can find a complete listing of the PTDLs on the USPTO’s website. The PTDL librarians are thoroughly trained to help you to do the best search you can.
If you choose to do your own online patent search there are a few things you need to know in order to make sure that you check thoroughly. We offer a free step-by-step guide to patent searching on our website. There is also a new free Google patent search site that is very user friendly. You can find it at www.google.com/patents. The aforementioned search sites are for US patents only. If you wish to search international patents, you can do so at www.espacenet.com.
What is a preliminary patent search?
Good question! A preliminary patent search is another search that you can and should do before you invest your time, your money and more importantly, your heart and soul into this invention idea. Preliminary patent searches are also often called knockout searches. The purpose of a preliminary patent search is to take a look at the United States Patent and Trademark (USPTO) database to see if you find your exact invention idea. While this preliminary search won’t replace the professional patent search, if you do find your exact invention, you have avoided spending time and money on a futile effort.
In trying to do my online patent search, I cannot get any of the images. What am I doing wrong?
Relax! You are not doing anything wrong. Your problem is easily solved. First, you must have Adobe Reader (a free download) and then you simply need to download either InterneTiff or AlternaTiff, free programs that you can find by simply typing InterneTiff or AlternaTiff into Google or another search engine.
Printing Patent Images
When you are viewing patent images and wish to print them, click on the icon at the top of the image page, NOT the icon at the top of your monitor that you normally use for printing.
I didn’t find anything at all in my patent search. That’s good, right?
Not really! If you found nothing, at all, even close to your idea, you may not have done a thorough enough search. Most idea searches will turn up some prior art (similar patents or at the very least patents on products designed to solve the same problem). Patent searching is a tedious task and, even with our guide, it should take you at least a day or two to carefully look at patents using key words and then look at prior art and classification numbers. You may not have taken enough time doing your search.
Prior art is a broad term given to all knowledge, products, patents, information etc. which relate to the subject matter of a patent application and which was public prior to the date the patent application was filed. In addition to products on the market, prior art can include information in published articles and known methods and techniques
What happens if I find my product already for sale or already patented?
Don’t give up until you have no alternative! You may or may not be out of luck. It depends on several factors. If you find that your invention idea is already offered for sale and it is not patented, you may manufacture and sell it, too. If it is not patented, it is in the public domain. That means anyone is entitled to make and sell it. Many successful products have never been patented at all. The Post It Notes product is a well-known item that falls into this category. That product was never patented but it has certainly been a success in the marketplace. Many different companies make their own versions of it.
If you find that your product is already patented but is not on the market, that too, may offer you an opportunity. If the inventor never managed to get his idea to market, he may be willing to either sell the patent rights to you or he may be delighted to find someone who is as enthusiastic about the idea as he is and thus be willing to partner with you. You can find the patent holder’s name and address listed on the patent.
Do I have to have a patent attorney?
You can submit your own patent application but we would not advise it. The rules of the USPTO regarding exactly how a patent application should be written are very specific. Your best chance for actually getting awarded a patent are with the help of a competent patent attorney or patent agent. The road to getting a patent is long and there are pitfalls that a good attorney can help you to avoid. Also, a patent attorney or patent agent can write the claims in such a way that your patent is more likely to be comprehensive, affording you more protection.
My attorney filed for my patent . When the "first office action" came back from the USPTO my attorney recommended that I drop it. I did and then a year or so later I saw "my invention" on the market patented by someone else! I feel betrayed by my attorney and the USPTO! Do I have any legal recourse?
We are surprised that your attorney was willing to just accept the first office action (rejection of the patent, citing claims on other patents) as this is indeed routine with the patent office and it is almost unheard of for a patent to be accepted and issued without at least one office action. Most attorneys and their clients understand this and just prepare to have to rewrite some claims in order to have the patent allowed. We do understand that there are some attorney costs involved in rewriting the claims and resubmitting to the USPTO, but it is usually not as much as the writing of the initial application and can usually be paid over some period of time. This is a real shame that you elected to drop it, especially since someone later patented essentially the same thing.
As for whether you have recourse with the patent office, or your attorney, this is a legal question and we are not attorneys, so we cannot say what you might be able to do. We would suggest contacting a different patent attorney for advice on how to proceed.
Does the USPTO routinely reject patent applications at the "first office action" in order to drive up costs for independent inventors?
We don't know. We do know that it is their job to make certain that they protect patents that are already issued by rejecting any claims that could overlap those on existing patents. So, for this reason, we believe they sometimes get over zealous in rejecting claims just to protect themselves. We think they figure that if you really want your patent badly enough, you will provide proof to them that your claims do not interfere with those of a patent that is already in existence.
What's the difference between a patent attorney and a patent agent?
Both patent attorneys and patent agents must take the same qualifying exam with the United States Patent and Trademark Office. Patent attorneys and patent agents are equally qualified to write and prosecute your patent. The only difference is that a patent attorney can represent you in court, should the need arise. A patent agent cannot represent you in court. A patent agent is not an attorney. Also, a patent agent works only on patents. They cannot help you with trademarks or copyrights. Otherwise, you get the exact same quality of work on the writing, filing and executing of your patent. Generally, the fees charged by patent agents are substantially less than the fees of patent attorneys.
How much should a professional patent search cost?
Any patent attorney can get a search done for you. The patent attorney does not do the search himself/herself. They will contact professional searchers and have them perform the actual search. The patent attorney adds on a fee for handling this for you. You can get the exact same quality search done yourself at a substantial savings if you hire the search done by either a patent agent (who will do it himself) or by going directly to the search firm in the Washington, DC area. Patent attorneys will sometimes charge clients up to $1,200 for a search when the clients could hire it done themselves for around $250 or less. We list links for a couple sources of reasonable patent searches on our Resources page.
If I decide to file for a patent, how can I be sure that someone else has not already filed for a patent on my exact invention?
You can't. It is a bit of a gamble when you file. It is possible that someone else has already filed but it has not yet been published. Patents are published 18 months after they are filed unless you are only filing for a U.S. patent and have specifically indicated on your application that you do not wish to have it published until it issues. If you are filing for patents in countries other than the U.S., it is our understanding, that 18 months is the maximum amount of time that it will remain unpublished.
I found a patent for my invention but it is very old and expired. Can I patent it now and sell it?
If you have found your exact invention then, no, you cannot receive another patent for the exact same invention even if it is no longer sold in the market place. Once a patent expires it becomes a part of the public domain and anyone who wishes may manufacture and sell it.
A literary work or an invention whose copyright or patent has expired or that never had such protection is said to be in the public domain. These works and inventions are available to anyone.
I did a patent search and found a very close match to my invention but mine is better - am I out of luck?
Not necessarily, it all depends on how the claims are written on the offending patent. If they are "broad" and anticipate your improvements then you would be out of luck. If, however, the claims do not anticipate your improvement you may still be okay. When my sister and I were inventing Ghostline® we found a patent for a product that also produced a poster board with a very faint grid. It served the exact same purpose as our invention. At first we were devastated until we read the claims carefully. It was then that we discovered that the patent that concerned us had a completely different and inferior method for applying the grid to the poster board. We were able to go on and get three patents on our product. So, the moral of this story is read the other patent carefully. If you are not certain that you understand the patent language (sometimes it can be very obtuse!) then take it to a patent professional (a patent agent or a patent attorney) and have them review that patent as well as your product idea.
I have an idea I want to patent. I do not have an actual prototype. Can I do that?
This is what the USPTO says about that: "A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required."
You can apply for a patent without having created a prototype but you need to have a fully developed description and drawings of what the invention would be. Note: While you can do this, it is not advisable because, even though you may have the invention fully visualized in your mind, prototyping almost always reveals changes that should be made to the invention before filing for a patent. If you file for and receive a patent on your idea and then another inventor makes those changes and/or improvements that you could have discovered in the prototyping process, his patent may just make yours obsolete in regards to marketing.
How long does patent protection last?
The term of a utility patent is 20 years from the date of filing. The term of a design patent is 14 years from the date of issuance.
I have been making and selling my invention for years. Can I get a patent on it?
This is a legal question, but our gut feeling is that you cannot now file for a patent when you have been selling the product for many years. Check with an attorney to be sure.
Should a patent attorney sign a non-disclosure agreement too?
A patent attorney, or patent agent, is someone that you can trust with your idea. Patent agents and patent attorneys are ethically bound to keep your information confidential. They would soon be out of business if they disclosed anyone's invention. Also, there is no legal reason to need an NDA from one of these professionals. Disclosing to them without an NDA does not constitute a public disclosure.
That said, be very careful of others to whom you entrust your information. There are legitimate sources of help for inventors for everything from protecting your idea to help with creating your prototype or marketing your invention, but stay away from those companies who advertise that they will take your idea and make you a millionaire. Those are the ones to beware of.
I have an idea for an item of clothing. Can I get a patent on clothing?
In general, we think that if you have invented some innovation in garments (something unlike anything that is presently on the market) it may be something patentable. We have seen that done in a new type of children's wear.
You would need to consult a patent agent or patent attorney with some specifics about the garment in order to get a definitive answer.
My idea is for a new game. I know many games are not even patented; do I still have to do a patent search?
It is necessary to do a good patent search to make sure that your game idea has not already been patented, because many toys and games are patented, but you are right when you say that many toys and games are not patented. It is not always necessary to have a patent in order to market toys and games. This is because the industry is so hungry for more and more new games and patenting is too long a process. Often, a copyright is all that is necessary for something like a board game. You could ask a patent agent or attorney to be sure, but toy agents are happy to look at such items that are not protected and they (at least the ones we work with) are very ethical and would not steal an idea.
Be sure to also do a good market search to make sure that your game is not already on sale someplace. Just check stores that carry games and then check the Internet carefully by typing in key words that might describe your game and then following the links to see what is being sold. Then, check out all catalogs that you can. Most catalogs are online now, so that search is not so difficult.
I want to create a new invention by combining two existing products. Can I do that if the existing items are patented?
This is a legal question and we are not attorneys so we cannot give you an answer. You may have a great idea and there may be a way to do it, but you will need to consult with a patent attorney or patent agent to know for sure. Many patent attorneys and patent agents will give you your first visit free in order to determine if your idea is patentable. Just call their office and ask the person who answers if that is the policy before scheduling your appointment.
My husband works for a large company that made him sign a contract saying that anything he invents while he works for them belongs to them. He has invented something that has absolutely nothing to do with his work. Can we file for a patent listing me as the inventor instead of him?
We are not attorneys but we believe the answer is no. That would be fraud on the patent office. Please check with an attorney to be sure. It is our understanding that the patent must list the actual inventor/inventors.
What do the terms "patent pending" and "patent applied for" mean?
They are used by a manufacturer or seller of an article to inform the public that an application for patent on that article is on file in the Patent and Trademark Office. The law imposes a fine on those who use these terms falsely to deceive the public.
Should I worry that the Patent Office will give others information contained in my application while it is pending?
All patent applications are maintained in the strictest confidence for at least 18 months (for international patent applications) and until the patent issues for U.S. patents if the inventor has specifically indicated that he/she does not wish to have it published until it issues. After the patent is issued, however, the Office file containing the application and all correspondence leading up to issuance of the patent is made available in the Files Information Unit for inspection by anyone and copies of these files may be purchased from the Office.
May I write to the Patent and Trademark Office directly about my application after it is filed?
The Office will answer an applicant's inquiries as to the status of the application, and inform you whether your application has been rejected, allowed, or is awaiting action. However, if you have a patent attorney or agent of record in the application file the Office will not correspond with both you and the attorney/agent concerning the merits of your application. All comments concerning your application should be forwarded through your attorney or agent.
Is it necessary to go to the Patent and Trademark Office to transact business concerning patent matters?
No; most business with the Office is conducted by correspondence. Interviews regarding pending applications can be arranged with examiners if necessary, however, and are often helpful.
If two or more persons work together to make an invention, to whom will the patent be granted?
If each had a share in the ideas forming the invention, they are joint inventors and a patent will be issued to them jointly on the basis of a proper patent application. If, on the other hand, one of these persons has provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor and the patent application and patent shall be in his/her name alone.
If one person furnishes all of the ideas to make an invention and another employs him or furnishes the money for building and testing the invention, should the patent application be filed by them jointly?
No. The application must be signed by the true inventor, and filed in the Patent and Trademark Office, in the inventor’s name. This is the person who furnishes the ideas, not the employer or the person who furnishes the money.
Does the Patent and Trademark Office control the fees charged by patent attorneys and agents for their services?
No. This is a matter between you and your patent attorney or agent in which the Office takes no part. To avoid misunderstanding you may wish to ask for estimate charges for: (a) the search (b) preparation of the patent application, and (c) Patent and Trademark Office prosecution.
Will the Patent and Trademark Office help me to select a patent attorney or agent?
No. The Office cannot make this choice for you. However, your own friends or general attorney may help you in making a selection from among those listed as registered practitioners on the Office roster. Also, some bar associations operate lawyer referral services that maintain lists of patent lawyers available to accept new clients. By the way, if you are looking in your yellow pages under “Attorneys” and you cannot find listings under “Patent Attorneys”, try “Intellectual Property”. The USPTO maintains a list of all attorneys and agents who are licensed to practice before them and you can locate them by state to find one near you.
Will the Patent and Trademark Office advise me as to whether a certain patent promotion organization is reliable and trustworthy?
No. The Office has no control over such organizations and does not supply information about them. It is advisable, however, to check on the reputation of invention promotion firms before making any commitments. It is suggested that you obtain this information from the Better Business Bureau of the city in which the organization is located, or from the bureau of commerce and industry or bureau of consumer affairs of the state in which the organization has its place of business. You may also undertake to make sure that you are dealing with reliable people by asking your own patent attorney or agent or by asking others who may know them.
Are there organizations in my area that can tell me how and where I may be able to obtain help in developing and marketing my invention?
Yes. In your own or neighboring communities you may inquire of such organizations as chambers of commerce, and banks. Many communities have locally financed industrial development organizations which can help you locate manufacturers and individuals who might be interested in promoting your idea.
If someone infringes my patent, will the Patent Office prosecute them?
No. A patent gives you the right to sue an infringer but the USPTO takes no part in enforcing patents.
The Office cannot act or advise concerning the business transactions or arrangements that are involved in the development and marketing of an invention. However, the Office will publish, at the request of a patent owner, a notice in the Official Gazette that the patent is available for licensing or sale. The fee for this was $25 the last time we checked.
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Did you trademark the name Ghostline® and is a trademark important?
Yes, we did trademark the name Ghostline® and it is very important. Utility patents last for twenty years while trademarks last as long as the mark is in use. Our license agreement for Ghostline® states that the licensee will continue to pay royalty to us, even if the patent has expired, if they continue to use the trademark. It is unlikely that after twenty years they would be willing to abandon the brand name that they have spent all that time and money establishing in the market. Trademarked names have equity in the market.
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Where do I go to find information on copyrights and how much they cost?
The Library of Congress is in charge of copyrights. You may contact them at http://www.copyright.gov/. Copyrights are inexpensive and easy to obtain. Prices begin at $35 for a basic claim copyright.
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I don't know how to find off-shore manufacturing for my product. Where should I start?
There are professionals who assist independent inventors in getting their products manufactured overseas. Find it listed on our resource page.
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I have a patent on my invention. Should I license it or sell it outright?
In our opinion, licensing is the best choice. When you license you will receive an income from your invention without the expense or hassle of manufacturing, distributing and advertising it yourself. Usually, the independent inventor will receive more, in the long run, from a license than they would receive from a one-time lump sum payment.
I want to create a business out of my invention and manufacture and sell it myself. What are the obstacles to achieving my goal?
In our opinion, that is a difficult path to follow. When we first invented Ghostline® we manufactured it ourselves while we were still patent pending and before we found a manufacturer to license it. We had moderate success. We were able to sell it to local teacher and office supply stores. At one point we were even able to get it placed with a distributor who sold it in a seven state area. During that time we tried and tried to get some of the major mass distributor chain stores to carry Ghostline® but had absolutely no luck. Without exception they all told us that they loved our product and would like to carry it but could not because we were a "single product vendor." They explained that if we could get it licensed to a manufacturer who already sold them products they would be happy to carry it. And, that is exactly how it worked out. Once we licensed Ghostline® our licensee was immediately able to place it in all the stores like Wal-Mart, Target, K-Mart, Kroger, Walgreens, etc., that had eluded us.
We recommend licensing for independent inventors. It is the easiest way to get wide distribution of your product in the shortest amount of time.
How long did it take for you to get your invention on the market?
From the time Mary first dreamed of it until we actually saw it in the stores it was about 2 1/2 years.
If I license my invention, how much royalty can I expect to get?
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%. It all depends on the item and the industry. It also depends on the size of the manufacturer. Generally, the larger the manufacturer (with market saturating coverage) the lower the percentage of royalty paid to independent inventors. Often the inventor ends up with about the same amount of money if he/she goes with a smaller manufacturer and a higher percentage rate vs. a larger manufacturer with a lower percentage rate. It is a personal decision for the inventor to make.
Do you make enough money now that it was worth all the time, trouble and money involved?
Absolutely! When we were working on developing Ghostline®, our first invention, we both had full time jobs but took one day a week to work on our invention. After it was all said and done and we began receiving "mailbox money" (quarterly royalty checks that come to us without any work done by us), we both said, "If we had known how lucrative and how much fun it would be we would have devoted more than one day a week to it so that we could have arrived at this point sooner!"
Should I license my invention, sell it myself or sell it outright to a manufacturer?
That is a very personal decision that each inventor must make for himself/herself. Based on our experience, we would recommend that you license it. If we had sold it outright we would have received far less than we have received (and continue to receive) in royalties. We would discourage inventors from trying to manufacture and sell their product themselves. It is very rare to find an inventor who has the experience and know-how to face the challenges and expenses of advertising, manufacturing and distributing their own product. In addition, no matter how terrific the invention is, most large retail companies will not buy from "single product vendors" (independent inventors). Their shelf space is allotted to companies that sell them many products.
How do I find the companies that might want to license my invention and how do I contact them?
Your public library’s reference department maintains some directories of US businesses. They also maintain several business databases that you can access from your home computer. Ask your reference librarian how to access them. Some of these are ReferenceUSA, Thomas Register, Gale Virtual Reference, EBSCO, and Business Source Complete.
Another way to find potential manufacturers is to go to the directory of manufacturers http://www.mfginfo.com.
Still another way is to go to stores and look at products that are 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 key words. For example, if you have invented a new type of baby swing, use keywords "baby swing," "infant furniture," "baby supplies," "child swing," etc. etc. etc.
Your online patent search can also give you leads to possible licensees. Look at the patents closest to your invention and get the names and address of companies that are listed as the "Assignee." Those companies obviously do license inventions.
Another option 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 manufacturer to see. You can find listings for these types of services by using keywords on a search engine, such as Google. We don’t recommend this way because you are gambling that the right manufacturer will look at that website. It is too passive to depend on as a way to get a product licensed. You can also get help in getting your invention licensed by enlisting the help of a legitimate product marketer, but this is another very long shot as ethical product are extremely rare.
We saved the best way for last. The very best way, we believe, is to attend a trade show of the category of your invention. There, you will find almost all of your target licensees under one roof at the same time.
Trade Shows are a great place to find multiple potential licensing partners!
A great way to locate potential licensees is to go to a tradeshow for that industry. There are LOTS of them. Just go to Google and type in "____________ (your category of invention ~ for example, ‘golf’) trade show" and it will come up with links to lots of trade shows that feature that category of products. At these shows the manufacturers of your type of product will have booths and they will be selling to the retailers who attend the show ordering products for their stores. I would suggest that you join one of the associations that sponsor these trade shows. You can probably join as an associate member for a reasonable fee. Then, go to one of the shows as an attendee. Do not rent a booth. That is an unnecessary expense and besides, you don’t want to be tied down to a booth. The first couple of days you should just walk the show floor and make notes on the companies that look like potential licensees of your product (your item would fit right in with their existing line of products). On the last day of the show (when all the buying by the retailers is done) go to the booths you identified as potential licensees. Give them your business card and ask them if they ever license products from independent product developers. They will either say that they do, they do not, or they might. If they say that they do or they might explain that you are an independent product developer and you have a product that would fit right in their line of products and you would like to call them in a couple of weeks to set up an appointment to show it to them. Do not tell them exactly what your product is. Simply tell them that it is a product that solves such-and-such problem. Get their business card. In a couple of weeks call and remind them that you met them at the _________ show. Tell them that you are a member of that association and you will immediately be treated as a professional and someone who is familiar with their industry. Your chances of getting an appointment to show them your invention are dramatically increased when using this method. At that point make the appointment and go and pitch your product.
Before going for your appointment be sure to prepare a top notch presentation. We have a free guide to preparing your presentation.
Do not give your presentation to them at the trade show. They may set it aside and lose it or, even worse, they may turn you down on the spot because they haven’t had the benefit of your explanation (with the passion of the inventor that you are) of why your product will make money for them. Don’t give them a chance to brush you off at the trade show. Just meet them, get their card and make your real pitch when you go for the appointment.
I'm having trouble composing a script to use when I call the companies that we are interested in to license our product.
There are a few key points to remember when making appointments with potential licensees.
- Never call yourselves inventors, call yourselves Product Developers.
- Use a company name, if you have one.
- Call the New Products division of the company. Nurture a relationship with the folks in that department of the company. Hopefully, one of them will decide that your product could be a feather in their cap and guide it through the process.
- Do not give them a detailed description of your product. Just describe how it solves a common problem in a simple and inexpensive way.
- Request a face-to-face meeting. Schedule the appointment.
It might go something like this:
Greta: “Hello, Mr. New Product Head! This is Greta A. with AllGRinns, Inc. We are product developers and we have developed a product that is a perfect match for your company. It is a logical extension to your line of products. And, it's patented! We are looking to license it exclusively to one manufacturer. We'd like to show it to you first.”
Mr. New Product Head: “You have? What is it?”
Greta: “It is a simple way to solve a problem common to dog walkers all over the world. It is one of those ideas that you are going to wonder why it hasn't been around before. It is so exciting and perfect for your company that we would like the opportunity to bring it and show it to you. When can we do that?”
Mr NPH: “Just tell me what it is.”
Greta: “It’s a brand new product that neatly solves the problem of walking more than one dog at the same time. I know that you are aware of the problems inherent in the currently available leashes designed for this purpose. This idea easily and inexpensively makes these other products obsolete. I would really like the opportunity to show you how it works and I’ll gladly travel to your location for just a few minutes of your time. “
(Here, if he says he is unaware of the problems with similar products, explain briefly the problem that is happening with the current products that your new product solves.)
Then, try to nail down the appointment without giving him any more specifics.
If you can get the face-to-face meeting that is best. If you are able to meet with them do not give them your printed presentation until you are done. You don't want them looking through the presentation rather than looking at you. The presentation is designed to speak on your behalf after you have left or if you are unable to meet with them in person.
It is not really necessary to be secretive but you may generate more interest and get to schedule the in-person meeting if you are a bit coy. If they insist, don’t anger them; go ahead and tell them what it is so they will see that it truly is a logical extension of their product line. Then, try to nail down the appointment without giving him any more specifics.
Then, at the meeting, tell them about your website and give them a demo DVD if you have one.
What if the company I contact insists on knowing what my invention is when I call them?
I have never had one to take that attitude and I have talked with a lot of them. I tell them I have an improved folder or an improved binder, or an improved whatever and they make the appointment. They usually just need to know the specific category of item so that they can have the right vice-presidents in the meeting. The likelihood of their asking more than that is extremely slim. They work with product developers all the time and they know that unless there is already a published patent, they do not want to disclose everything on the phone. I don't think you will have to "dig your heels in", but if you do, you will probably not get the appointment. Remember, at this point they hold all the cards. Tact is the order of the day.
If I am sending my presentation to a manufacturer, at what point do I get them to sign a NDA?
As for how to handle the situation of getting a non-disclosure when you are sending the presentation, first of all, never send a presentation without first having phoned and actually talked with someone. Try to reach the company president if it is a small to medium sized company or the head of new products if it is a large company. Tell them that you have a patent-pending product that is a perfect fit for their line of products that you are seeking to license. Ask if you can send them some information on the product. At that time, when they agree to accept the information, tell them that you will send (or fax) a non-disclosure form that you wish them to sign before you send the information.
Chances are excellent, especially if it is a large company, that they will have submission documents that you will need to sign before you can send your presentation. We have found, in fact, that many large companies require that you sign their submission documents but they will not sign your non-disclosure document. At that point, you will need to decide whether to go further with the submission. We have done so without difficulty with a lot of companies, but it is a personal decision as to whom you can trust. Have you actually filed your patent application? If so, a non-disclosure from them is not such a sticking point.
A big company I contacted about possible licensing of my product says they will NOT sign my non-disclosure agreement but say I must sign their submission documents. Must I?
It is not unusual for large companies to refuse to sign your non-disclosure agreement. They will not do so because they will be saying, in effect, that they have never seen your invention idea before. This may not be the case. Your idea may have already been submitted to them by another independent inventor, or their research and development department may be currently developing a product similar to yours or they may have developed such a product in the past. If they were to sign your NDA you could then claim that they had "stolen" your idea when in reality, they had not. As for the submission documents, you will almost certainly be required to fill those out and send to them before your appointment. They may go ahead and set the appointment, but you will have to have those documents back to them before submitting. These big companies are extremely concerned about independent inventors suing them and claiming that the manufacturer stole their invention. These documents are required by them for their self protection against such suits.
Should I license my invention exclusively to one company or should I license it nonexclusively to several companies?
The main points to keep in mind when securing multiple license agreements is that the royalty rate received from each company is very likely to be significantly less than the percentage you would receive if you had one exclusive licensee. If you have enough licensees the added distribution could more than make up for accepting a lower percentage of royalty from each company. Second, it is sometimes more difficult to get a licensee interested in licensing your product if they know that their competitors will have the same opportunity to make and sell the unique feature. On the other hand, if the feature is something that everyone who makes your type of product will want, it could work. Many products are licensed to multiple licensees. The final consideration when licensing nonexclusively is that the burden of enforcing the patent will remain with you, the inventor. Nonexclusive licensees will normally not take on that responsibility. If you are making enough money from all your licensees you may have the resources to enforce the patent yourself. Keep in mind that patent infringement lawsuits are very expensive, sometimes running a million dollars or more and your licensees will expect you to vigorously enforce a patent on which they are paying you royalties.
Should I hire a professional to initiate/negotiate/draw up my license agreement?
These are three different things. First, to initiate the discussions between you and the manufacturer, you can do this yourself, if you wish (we did), or you can enlist the services of an agent. If you use an agent you will give up a portion of your royalties as payment for this service. That is the downside. The upside is that often an agent can get the ear of the manufacturer when that seems to be the most difficult part of getting a product marketed. But, legitimate agents are very difficult to find.
As for negotiating the agreement, again, you can do this yourself, but you will need (in our opinion) the assistance of someone who is familiar with license negotiations. We used our patent attorney on our first license (Ghostline®) and he did his best, but we later learned that if we had known about and used a licensing attorney, we would have had a much better license agreement (more in our favor). At the time, we didn't know there was such a thing as an attorney that specialized in contracts and licenses. A contract attorney would be the one to draw up the agreement. Even though this may be a bit costly, in our opinion, this is not the time to cut corners because rather than costing you money, this person may make a lot more money for you by writing the contract to protect your interests.
When I’m negotiating my licensing agreement should I get an upfront payment and a clause requiring the licensee to pay me a minimum amount of royalty each year?
A good contract attorney will have it written into your license agreement that you will be paid a minimum royalty during each royalty period regardless of the amount of product sold. That is standard. As for an upfront lump sum, those are less common. We did get a nice lump sum upfront (against royalties) with Ghostline® because we had three companies wanting the license. But, if you have only one company wanting the license, upfront sums are less common. It is certainly worth a try. On our subsequent licenses, we have not been able to negotiate a lump sum upfront. But, that is not so important as long as you get a good license agreement, especially since these upfront sums are usually advances against future royalties rather than signing bonuses.
Finding the Source for Nearly any Product by Dane
Have you ever been to a specialty store and seen something you thought might sell well in your business? But maybe you wondered how to find the wholesale product source for it? Here’s a way to find out the wholesale product source for just about any product.
Look at the UPC Label. Nearly every product on the market is labeled with this code. If you’re not sure what a UPC Code looks like, About.com has a write-up on UPCs here.
Write down the first 6 numbers of the UPC Code (or enter them in your PDA). When you get back to the home office, get on the web. The Uniform Code Council maintains a free reverse lookup website, where you can type in those numbers and VOILA! It will show you the primary supplier (with address) for that item.
I think my product is perfect for one of the shopping channels on television. How do I get my product on tv?
We have come across a book that tells you exactly how to do that in a simple easy-to-understand way. We LOVE this little gem of a book. It is by Nick Romer, a man who has walked the walk and now shares everything he has learned with the reader. It is available in bookstores and on Amazon.com. This potentially life-changing book (published by John Wiley & Sons) is bargain. If your goal is to get your product on the shopping channels this is the guide you need!
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I heard about a Mom's contest for Good Morning America. I just reviewed the contest specifics. I was wondering if you could review the contest.
Bob Wise, patent attorney answered this question in this way:
I looked at the contest website. I would be very hesitant to enter this contest - for two reasons.
Number 1 - as you noted the royalty will be based on NET sales. They define that as " selling price less costs of manufacture, costs of shipping, costs of packaging, costs of promotion, costs of insurance, overhead costs, volume discounts and returns and allowances". Most of these costs could be fairly determined. However, overhead costs is the cost of their headquarters (and who knows what else). Accountants can play lots of tricks with that. They can really stick it to you there. Also, "volume discounts" is a real pig. What they will do is sell a few items at the "normal" price, and then sell large volumes at "volume discounts" which will probably not have much profit, so you'll get screwed there. They may even be receiving disguised rebates from advertisers or customers that you will never hear about or receive the benefit of.
Number 2 - the problem that I would strongly object to is that they require you to "assign" or sell your patent to them, even though they say they will pay you a "royalty". (This use of terms is designed to trick people). Royalties are normally only paid on licensed patents (which means you still own the patent). If you sell the patent to them, you don't own anything except their contract, or their promise to you. That's not a royalty. Here's how they can screw you. What if they pay royalties for a few months and then lose interest in your product. They will certainly stop paying the maintenance fees on the patent and it will expire. You are guaranteed to not make any more money if the patent expires.
They don't say this, but I'll bet that the contract you are required to sign will be with an underfunded independent entity. If they break the contract, there will be very little inside the entity that you could get your hands on even if you were able to win a lawsuit.
They're also lying at the end of the questions where they say that a 5% royalty on NET sales is standard or even high. That's not true.
I wouldn't enter this contest. It's strongly rigged in their favor and provides almost no protection for your interests.
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I have good ideas but no money. Where can I find funding?
Funding is about the biggest obstacle an independent inventor has to face. We have a link for you to check out. It has several sources of possible funding. The second link, http://inventors.about.com/cs/gettingthemoney is from a search engine called About.com. There are a number of funding sources listed there. We do not have personal experience with them, so check them out thoroughly before doing business with them, but we have no reason to believe that they are not legitimate, either. It is just a good policy to check out any unknown source. There are several books written in recent years about invention funding. Check Amazon.com for the latest information on those.
The Wisconsin Innovation Service Center has a link on their website with the following information:
Raising start-up capital step-by-step guide
The following is a link to a step-by-step guide introducing entrepreneurs to the early stage investment scene. It was created for entrepreneurs who would like to raise funds from angel investors but who do not have experience doing so and simply links into existing resources.
There are now several sources for crowd funding (where a lot of people invest a small amount in your invention instead of a few people investing a lot. . . plus you retain full ownership of your company. It is FREE to list your product when you follow their guidelines. The most popular of these is Kickstarter.com. Others are indiegogo.com and gofundme.com.
There is some good, trustworthy information on this site.
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