Patent, Trademark & Copyright : Law Office of Kloss, Stenger & LoTempio

What Inventors Need to Know...

Tom Demitry is an entrepreneur, an inventor, a salesman, a marketer, a man of ideas and as he will tell you first and foremost a father and a man of God. He is constantly coming up with new ideas and new ways to reinvent himself. His passion and enthusiasm are endless.

I met Tom about 10 years ago when I first became a patent attorney and he was looking for someone to help him file a patent application and get a patent for his invention, the PaintMat (PDF). Little did he know that he was my first client! It was the beginning of a long term working relationship and friendship.

Although that product never really became a financial success, Tom took the PaintMat idea across the country selling the product he had patented, manufactured and marketed and learned a lot of lessons in the process.

Since then he started a new endeavor selling baseball caps and various styles of hats with a Christian theme and marketing the hats under the registered trademark (.PDF) SpiritDomes®. This time it seems that Tom is on his way.

I thought a blog post about him might give inspiration and guidance to other inventors and entrepreneurs who are starting out. Here are a couple questions and answers from our interview:

How did you establish a national brand and hat line in this difficult economic climate?

I have 30 years experience in the head-wear business and I received my vision in church on one fateful Sunday. I was thinking of ways I could spread the word of God and had an awesome idea that was very unique in the industry. 

The idea is to imprint a quote from scripture on the under-visor of my product and design the artwork for a hat around the particular quote from the bible; a "SpiritDome".

No one in the world was doing this so I wanted to establish my own unique niche. Being different than everyone else is what helped the brand really take off. The key is to be different and it is what our target consumer, the youth of today want to be- unique and different!

What have you done to protect your idea?

I thought the best way to protect my brand was by filing for a registered trademark. I filed a trademark application with the United States Patent and Trademark Office (USPTO) through KlossLaw and SpiritDomes was a registered trademark within one year of filing. I believe a registered trademark is the best protection available because no one can ever use it in business. It's also versatile in that I can create product line extensions with the brand and the new products would carry the same protection.

What else do you do to build brand recognition?

I've always felt that if a brand was started at the grassroots level and done consistently over a long period of time, that would be the greatest protection of all. Next, all consistent marketing done to promote building the brand such as signage, promo cards, websites, Twitter, facebook, Linkedin, labels, etc. helps to shape the brand properly as well. What's great about the times we live in is that network marketing to get the word out is affordable and effective. The internet is amazing!

Another thing we're doing is partnering with producers, directors, musicians, speakers, etc. to spread the word about our brand.  The value of word of mouth really adds up. We also label our products with SpiritDomes.com to promote our website so that the public knows of and has a direct link to us. The web page is the easiest way to learn more about what we do.

What is the value of Trademark and brand recognition?

Building a profitable company is what we all try to do. The company builds equity in assets like inventory, real property and cash which have a value or net worth. The beautiful thing about brand building is that the brand name itself has what you call Brand Equity. The brand and goodwill in the company itself has value that can be sold for profit depending how famous it becomes.  Just like real-estate appreciates in value when people recognize the great location, the brand gains in value as more people know and recognize the name and associate it with a company that provides a quality product.

"A patent is limited by time but a trademark can last forever if the brand is built consistently and properly over time."

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Recently I met with Ron Roberts, President of Rolite Manufacturing. Rolite is a roll forming manufacturer that produces metal products of all shapes and sizes for large and small companies.

I toured their manufacturing facility and was amazed at how a compact roll of sheet metal can be stretched, cut, pounded, bent, stamped, shaped and sized into a variety of configurations.

Take a look at the video I uploaded to Youtube of all the different ways they can manufacture metal products.

Ron told me that every product they make must be made to have the right  "Form, Fit and Function."

• Form: the look of the product projects the presentation the inventor intends;
• Fit: the product meets all the requirements necessary; and
• Function: the product must work the way it was intended.

Here are few questions and answers from my interview with him:

Can you help inventors make prototypes to use as a sales prop?

Many times we’re able to work with the inventor and help figure out the manufacturing details. We can gear their idea to existing equipment and help them lower startup costs. We help inventors in the process of manufacturing, we call it "engineering time" it's kind of like a research and development of the product without actually stepping on the toes of the inventor.

Our goal is to have cheaper startup costs for the inventor. Truthfully, independent, individual inventors are a small percentage of our business. Typically they don't have the financial wherewithal and know how to take it to the next level and we try to help them bridge the gap.

What are some of the biggest problems that inventors have that you are able to resolve?

We think outside the box, we have tooling and the presses that are capable of shaping and bending any piece of sheet metal into almost any position. We try to do it as simple as possible and we often design ways to make products inexpensively as possible. We also work with other companies to make a product, for example we've recently made a metal product which needed an attachment combination of a piece of cloth material and small brass fittings which were produced by outside sources and attached by our company.

What can you do to make a salable product better than a company located overseas?

Others need to find a manufacturer overseas in places like China because of cheap labor. We can do it better than an overseas company because we can:

• Produce a high quality product (Assembly and manufacturing is done locally).
• Avoid Secondary and third operators.
• Provide a short response time to customers problems and queries.
• Take care of quality issues as soon as they happen. If you're using somebody in China and there's a problem they would say “maybe we'll implement it on the next run” with us we fix it now.
• We deliver on time because there is not an ocean we have to ship across.
• If there's a legal problem outside the USA what legal recourse do you really have?

What considerations do you take into account before making a product?

"What are the fixed costs? How much is it to make? Can it be sold for a profit at every level? If not we can’t make it."

There are a five tiers of cost on any product:

1. Manufacturer
2. Distribution representative
3. Wholesaler
4. Retailer
5. Final Customer cost

What steps do you take to preserve the rights of your clients?

"With us it is mum's the word, we do our best to keep everything confidential. We have an in-house Nondisclosure Agreement (NDA) which is fair and protects both the inventor and our company. If the inventor has their own NDA we will sign it if it is fair and reasonable."

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What is patentable subject matter? Many people believe that they can patent anything. But the truth is there is only certain statutorily allowable subject matter that can be patented (35 USC 101).

Here's a list of the basic allowable subject matter:

1. Process (Method of making infrared heaters which reduces costs by 25%) 
2. Machine (Motorized device for clearing leaves out of a gutter without climbing)
3. Article of manufacture (Pencil, chair)
4. Composition of matter (Paint, drugs)
5. Or any new and useful improvement thereof (Chair with a footrest)

If your invention falls into one of the above categories it must also be:

• New (no one has ever done it before) 35 USC 102
• Useful (it can't be something that has no use whatsoever) and
• Non-obvious 35 USC 103 (It must be non-obvious to one having ordinary skill in the pertinent art at the time the invention was made)

It doesn't take much to show that your idea is new because the slightest change will cause it to be original. And useful isn't really much of an obstacle, almost everything has some sort of use. There is a joke among chemical patent attorneys, "Any chemical composition has a use, it either kills grass or helps it grow!"

The hard thing to understand and to teach is what is non-obvious! I sometimes use the example of the invention of a table to get this idea across.

Let's pretend you were around 10,000 years ago and you were the first person to invent a table. Your table has a square top, a bottom and four legs.

Now someone makes an improvement on the table and tries to get a patent. The improvement is that the top is circular in shape instead of a square. The argument by the patent office may be someone skilled in the art (a carpenter) would think it obvious that the top could be made in any shape or dimension and a round top would be rejected as an obvious improvement.

Even though the improvement of the first ever circular top is new, and it is useful it would be arguably not patentable if it was determined that it would be an obvious improvement for a carpenter to make a table top in any shape.

Now let's take a different approach. Let's say that the new inventor was the first to invent a table with pedestal legs connected to the center of the bottom. It could be argued that this way to connect the legs to the top is a non-obvious improvement and would be potentially patentable in the prehistoric patent office.

But obviousness can be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so.

So if there was a chair in the prior art with a with similar legs like the pedestal legs of the invention table the examiner might combine the references of the square table with the chair and say it was obvious to come up with the new table.

I am not trying to replace the many legal treaties and case law on this the question of obviousness, not to mention the Manual of Patent Examining Procedure (MPEP) where there are many examples of what is non-obvious. I hope the simple logic of the table scenario is an easy way to generally grasp this concept.

 "Clipart courtesy FCIT"

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Can you patent an idea? No.

Many potential inventors say to me “I have an idea I would like to patent” but what they do not understand is that the invention itself is patentable, not the idea. In order for an idea to become a patented invention, the inventor must be able to teach someone of ordinary skill in the art how to make and use the invention.

In 1966 Eugene Wesley "Gene" Roddenberry came up with the “idea” for the transporter. In the Star Trek television series Captain Kirk would use his communication device (which looked a lot like the cell phones of today) from a planet’s surface to order his engineer to “beam me up Scotty.”

Could Roddenberry have applied for a patent in 1966 for the cell phone or a transporter? Not unless he could describe to someone skilled in the art how to make and use it.

The law doesn’t even require that you actually make it (“reduction to practice”) you just have to be able to describe how to make and use it. 35 U.S.C. 112 often referred to as the enablement clause reads

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same…”

§ 112 paragraph 1 requires nothing more than objective enablement. In fact, an inventor can "constructively" reduce an invention to practice, which is unique to patent law.

"The statute does not contain any express requirement that an invention must be reduced to practice before it can be patented. Neither the statutory definition of the term in § 100 nor the basic conditions for obtaining a patent set forth in § 101 make any mention of "reduction to practice.” Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 60-61 (1999)." 

As Judge Pauline Newman as described, "[t]he inclusion of constructed examples in a patent application is an established method of providing the technical content needed to support the conceived scope of the invention" because "[u]nlike the rules for scientific publications, which require actual performance of every experimental detail, patent law and practice are directed to teaching the invention so that it can be practiced." Hoffmann-LaRoche, Inc. v. Promega Corp., 323 F.3d 1354, 1377 MPEP § 608.01(p).

People often come to me with an idea of how some type of machine might help solve a problem. But when I ask "how do you make it?" they cannot describe the inner workings of the machine. I ask them to tell me how it works and they say "can’t we get someone like an engineer or an electrician to make it work?"  I reply "wouldn’t that engineer be the inventor?"

If we go back to 1969 and the wireless phone idea... just having the idea to transmit voice signal wirelessly wouldn’t be enough to get a patent. You would have to be able to describe it like George Sweigert of Euclid, Ohio did on June 10, 1969. Sweigert  is the man who is credited as the person who came up with the first cordless phone and was awarded US Patent Number 3,449,750 (.PDF). Download the patent to see the way he described how to make and use his invention.

The bottom line is that your new idea of a way to solve a known problem can only be patented if you can describe how to make and use it. You cannot  get a patent on the idea alone. 

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The official United States Patent and Trademark Office (USPTO) Facebook page promises to deliver the latest USPTO news, photos and videos.

Through Facebook the USPTO will directly connect with the public and the intellectual property community.

According to David Kappos the USPTO’s Facebook page is meant provide

“a place where users can tell US what YOU think. Users are encouraged to comment on our posts and tell us what you “like” and “dislike” about to the USPTO."

The Invent Blog reported that under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos said:

“Technology has profoundly impacted the way we all consume information and communicate with one another... “I’m confident our Facebook presence will complement the USPTO Web site as a means of communicating and connecting with the public and our stakeholders in the intellectual property community.

With more than 400 million people on Facebook, we knew it was an important place for us to be.”

USPTO Director David Kappos welcomes Facebook users with the following message:

Welcome to the USPTO’s page on Facebook! We're excited to be launching this forum to communicate with you and share the latest news from the USPTO. We know thousands of innovators, members of the intellectual property practice community, and USPTO employees are active on Facebook, so we’re pleased to be able to bring information and updates to you here...

Check back here daily, as we will be providing regular updates including press releases and other news, details on upcoming events, speeches, updates from my blog, photos, video, fun facts and more. Just like checking your Facebook page, we hope visiting our page will become part of your daily routine.

The USPTO’s Facebook page is a supplemental page to the official USPTO web page. It makes you think, doesn't everyone need a Facebook page? I enjoy connecting  with over 1000 long lost friends from the good ole days at my  Vincent LoTempio facebook page and I launched a page for my law office at Kloss, Stenger & LoTempio, although  I have to admit there has not been much action there. But I love this social networking. Everyone is getting involved.

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What Inventors Need to Know...

Most independent inventors want to license their invention to a retailer. Usually an inventor does not have the experience nor the money to market, manufacture and distribute a product on their own. So when I ask an inventor if I had a magic wand and instantly gave you a patent, what would you do with it? I get an answer like “I would take it to a large retail chain and work out an exclusive licensing agreement.

Whether they could even get their foot in the door is a long shot in itself, but let’s just say an inventor has a buyer’s ear or is working with a product developer. No matter how good the product is, it will not sell itself.

Are you looking to make a deal? What bargaining power do you have if all you have is the idea? What else can you bring to the table? The more information you have, the better negotiating leverage you have when bartering the licensing royalty rate.

In order for a product developer to properly analyze and evaluate the retail opportunity of a product the following critical points need to be addressed (not listed in any particular order as to importance):

1.  Wholesale price range
2.  Suggested retail pricing
3.  Unit Cost
4.  Current inventory (number of units on quantity)
5.  Sales presentation material
6.  A  good presentation of all of the products benefits and features
7.  Target market
8.  Estimate of market size
9.  Close up image or text version of packaging
10.  Bar code
11.  How many fit in store case pack
12.  Overall product dimensions
13.  Product weight (single item)
14.  Intellectual property protection: trademark (brand name) and patent protection
15.  Current retail stores or on-line retailers carrying product
16.  Do you have current manufacturing? domestic or international
17.  Current competing products in the market: sizes and pricing
18.  Estimated production time for new inventory
19.  Are there any other variations or a contemplated next generation of the product?

Each side in the negotiation brings certain elements to the table. Every element you can add raises the odds that an agreement will be made. And each element raises the bargaining power to negotiate and profit from any deal.

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What Inventors Need to Know...

Inventors often ask me “can I get a provisional patent?” But there is no such thing as a “Provisional patent.” A provisional patent application is a patent application that is used by a patent applicant to secure a filing date. A provisional patent application never matures into a patent. And there is no patent protection until a non-provisional application is allowed and issued as a patent. In order to maintain the filing date, a non-provisional patent application must be filed within the 12 month period starting from the filing date of the provisional patent application.

One of the most important things that an inventor should be aware of is that the disclosure of an invention in a provisional application should be as complete as possible because the claimed subject matter in the later-filed non-provisional application must have support in the provisional application in order for the applicant to obtain the benefit of the filing date of the provisional application.

The bottom line is if new matter is not disclosed in the provisional application, then the new matter will only get the benefit of the later filing date, which defeats the purpose of having filed the provisional application in the first place.

Independent inventors and startups focus too much on the "costs less" part while missing the bigger picture. People think that a provisional application can be quickly filed because the rules don't require all the formalities of a non-provisional application. While this may be true, if the disclosure of the invention is not the same in the provisional application as it is in the later filed non-provisional, the filing date will be lost.

The rule for DETERMINING THE EFFECTIVE FILING DATE OF THE APPLICATION is:

(D) If the application properly claims benefit under 35 U.S.C. 119(e) to a provisional application, the effective filing date is the filing date of the provisional application for any claims which are fully supported under the first paragraph of 35 U.S.C. 112 by the provisional application.

An inventor can still file a non-provisional application that claims priority to any provisional application, but with a weak provisional as the foundation there will likely have to be plenty of new matter added to the non-provisional application. Adding, subtracting, modifying parts, or changing the structure or operation of the parts would all qualify as not fully supported changes. An inventor will not be able to rely on the filing date of a weak provisional patent application for these new disclosures.

I believe that a strong provisional application should be prepared so as to look and feel exactly like non-provisional application so that the only thing a patent practitioner needs to add are the claims. If the non-provisional patent application is filed with the same disclosure as the provisional patent application the filing date is preserved. This will become even more important if the Patent Reform Act of 2010 is ratified and the first inventor to file system is enacted.

Here are a few basic points regarding a provisional patent application:

• Provisional applications provide an early effective filing date and a one-year extension as to the filing of a U.S. non-provisional patent application (35 U.S.C. 119; Benefit of earlier filing date; right of priority)
• In order to retain the priority benefit of the provisional patent application, a regular U.S. patent application and any foreign counterpart applications must be filed within one year of the provisional patent application and must claim priority based on the provisional patent application or the provisional patent application will become abandoned
• The foreign patent application may include national, regional (e.g., European), or Patent Cooperation Treaty (PCT) patent applications
• Provisional applications can be filed without any formal patent claims, oath or declaration, or any information disclosure (prior art) statement
• Provisional applications have a lower initial cost with one full year to assess the invention’s commercial potential before committing to the higher cost of filing and prosecuting a non-provisional application for patent
• The 12-month pendency for a provisional application is not counted toward the 20-year term of a patent granted on a subsequently filed non-provisional application which relies on the filing date of the provisional application.

The USPTO recently posted an article in the InventorsEye April Newsletter answering basic questions about a provisional patent application. The newsletter also provides a checklist of some facts the USPTO deems important:

1.  A provisional patent application expires after one year;
2.  A provisional patent application cannot be extended;
3.  A provisional patent application cannot be renewed;
4.  A provisional patent application will never become a patent;
5.  Provisional applications may not be filed for design inventions;
6.  The USPTO does NOT examine provisional patent applications on their merits.;
7.  The USPTO does not conduct a prior art search on provisional patent applications;
8.  The USPTO does review provisional patent applications to make sure they meet minimum filing requirements;
9.  A provisional patent application is not published by the USPTO (unless claimed as priority in a later-issued or published non-provisional application); and
10.  The term "patent pending” can be used by the inventor for the duration of the one-year pendency of a provisional patent application.

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New inventors are often looking for a short overview of the patent process. Ordinarily sending inventors to the United States Patent and Trademark Office (USPTO) web site is like sending someone into a great quagmire.

But there is a nice flow cart with links directing viewers to pertinent information regarding each step of the process for getting a utility patent on the USPTO web page.

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The Patent Reform Act of 2010 was recently made public in the form of an (“Amendment to S. 515”). Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.) spoke at an Executive Business meeting (webcast) February 25, 2010 about this amendment to the patent reform act.

Leahy stated, “When Senator Orrin Hatch (R-Utah) and I started this process several Congresses ago, along with Congress members  John Conyers Jr.,  Howard L. Berman, Lamar Smith and others in the House, we wanted to improve patent quality and the operations at the PTO, and address runaway damage awards that were harming innovation. We are close to a compromise that will address these issues. No one will think this a perfect bill, but we are close to a comprehensive patent reform bill that benefits all corners of the patent community.”

The 2010 amendment of the "Patent Reform Act" proposes a number of so-called improvements that are the subject of other LoTempioLaw blog posts (See the list below). This post is directed at the proposed change regarding First-Inventor-to-File.

First-Inventor-to-File

The proposed change does not call for a “First To File” system as some people mistakenly believe; it proposes a “First Inventor To File” system. Remember you cannot file a patent application in either system unless you are the inventor. Because two people can independently invent the same thing at different times there may be a race to the patent office by two inventors.

The current US system awards a patent to the inventor who is the first to invent regardless of whether the application was the first to be filed in the patent office for that invention. The new system will reward the inventor who wins the race to the USPTO and files the first application.

In the current US system, when two inventors seek a patent on the same invention the fact finder must determine who invented it first (it doesn’t matter who filled it first). The proposed “First Inventor To File” system will minimize Issues such as

• whether an inventor “abandoned, suppressed, or concealed” the invention
• “when was first conception,”
• “when was actual reduction to practice” and 
• “if the inventor used reasonable diligence coming to the patent office with the invention”

People now question if a first-inventor-to-file system is put in place will big business always beat the independent inventor to the patent office to file a patent application? Under Secretary of Commerce and USPTO Director David Kappos, says that there is a big misconception regarding “First Inventor To File.”

With the “First Inventor To File” system there is no risk of business beating the independent inventor to the patent office to file a patent application because the interloper is not an inventor. All filers have to sign an oath and declaration under penalty of criminal sanctions.“This leaves only the issue of simultaneous, non-collaborative invention—what we call interferences. The chances that a patent will be subject to interference based on a first to invent claim—that’s our current system—is .01%. In 2007—the most recent year for which we have statistics. The total number of interference cases for all applicants of all sizes that were decided based on a priority claim was seven! Of those seven decisions, only one involved a small or medium sized entity, and not a single one was won by an independent inventor who was the second to file. That means we already essentially have a first inventor to file system.”

Is this a naive view of the world? Or will non-inventors race to the office to file applications and basically say, hey prove I didn’t invent this invention. Will more litigation result because of this proposed change in the patent law? Or will the independent inventor just lose out on his/her invention because they won't have the wherewithal to fight it out in court even if he/she is the only true inventor?

The Professional Inventors Alliance USA viewpoint is that this provision will not guarantee that the actual inventor will be granted the patent.

"It creates conditions for very poor prior art, which is the existing knowledge of a similar innovation known to the general public. It burdens examiners with questionable applications by non-inventors. It creates a new malpractice liability for patent practitioners who may not beat another party to the patent office, thereby increasing the potential for litigation.

Kappos thinks the benefits will be reaped in the cost savings when filling internationally,

"... all other countries in the world use a “First Inventor to File” system. The change in the Patent Reform Bill will streamline the process for you to acquire patent rights and reduce your costs in seeking rights outside of the United States as you consider entering the global marketplace. This change will make it easier for you to “go global” with your invention."

Personally, I think this argument is much to do about nothing. I haven't heard many inventors consciously say I know it is a "first inventor system" so I don't care if somebody else files before me. I think that even with the system as it is now, inventors still believe that it's vitally important to be the first to file. Being the first to file always has its advantages. Even the patent office recognizes a patent application as a "constructive reduction to practice." I'm sure that if inventor observes an application pending in the United States Patent and Trademark Office for their invention he/she is less likely to go forward and file a second in line application regardless as to whether it's a “First Inventor to File” or a "First Inventor to Invent" system.

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What inventors need to know…

Inventors Eye is a new electronic publication by the United States Patent and Trademark Office for and about America’s independent and small entity inventor community.

Inventors can find information about working with the USPTO; events, organizations and meetings of interest to the community; issues that impact independent and small entity inventors; and stories about successful inventors.

 The first issue had a few great articles and links under the titles Advice, Events and Network:

• Patent Reform: An Open Letter to the Independent Inventor and Small Business Communities from Under Secretary of Commerce and USPTO Director David Kappos
• Protect Your Innovation: Avoid Scams, By Ronald Jaicks : Office of the Solicitor
• Spark of Genius: The Spiral Eye Needle, By John Calvert: Inventors Assistance Center
• Advice:     Do Your Homework
• Events:     Where Independent Inventors Meet
• Network:  Organizations for Inventors

Inventors Eye will appear every other month on the USPTO web page. 

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What inventors need to know...

How does an inventor take a good idea and then develop it into a new product? Recently I asked this and other questions relating to invention development to the affable forward thinking Justin Aiello. His company Aiello Designs takes ideas and turns them into reality. Here are a few questions and answers from the interview:

What do you do?

In general, I help independent inventors, start-ups and small companies take new ideas from concept to production. This includes Design, Engineering, Prototypes and Production Sourcing. I do not offer services with regards to funding, sales, marketing or licensing.

What makes an idea good or bad?

"I have seen great ideas fail and bad ideas succeed in the marketplace. What makes a successful product is good marketing, sales, design and manufacturing. What is right in one case is not necessarily right in another. You know you are right if it makes money and wrong if it doesn't."

How much information do you need to create a working prototype of product?

People come to me from all walks of life with different levels of expertise. Good ideas are not limited to the experts. Here are a few examples:

• The inventor comes in with just the idea. The inventor recognizes a problem and does not have an answer. Our company figures out a solution and designs a product to solve the problem.
• The inventor has a detailed drawing of a patented or patent pending product and we make a prototype.
• The inventor has a prototype and we make additional refinements. The process of developing a prototype is an ongoing series of tests and refinements.
• The inventor has a prototype completed without any need for refinements and we work out the mass manufacturing details.

How can the independent inventor with a new idea without "deep pockets" capitalize on a good idea?

I have found an independent inventor's path is somewhat limited:

1. Manufacture and sell it through a buyer to a mass retailer. Here the inventor will likely need investors.
2. Obtain a royalty agreement and license the rights to sell the product. Here, the inventor is in a better bargaining position if they possess a patented or patent pending product and a prototype.

"If you invented a new "Pet Nail Clipper" then go to the aisle in the pet store where they are selling these devices and investigate each one. Learn the names of 10-20 companies that will be able to produce, distribute and manufacture your product. Find out who in the company you need to talk to in order to sell your idea. Get yourself in the door with a patented or patent pending product and a prototype and then maybe you will make a deal."

How would you describe the ideal client/inventor candidate for product development?

• 50+ years old, having the "entrepreneurial spirit."
• Has high disposable income.
• Not risk adverse.
• A person that can enjoy the process. Even if the product doesn't sell, they had fun with it.
• Good business contacts. The inventor needs to understand one person cannot do everything. You need help with manufacturing, distribution and marketing. "An inventor who has an in at QVC or brother-in-law who is a buyer at WalMart has a better chance to succeed."
• Good business sense:  a. Inventor knows where they want to go with a product;
                                               b. There is a business plan to get there (road map); and
                                               c. Knows when to call it quits. "Don't throw good money after bad."

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THE INVENTOR’S BIBLE

About the book

THE INVENTOR’S BIBLE, includes a workbook to help an inventor take an idea from conception to the distribution of a product. The book touches on marketing, licensing, and selling an invention. The book reviews the invention process, including:

• Patenting
• Selecting a manufacturer
• Finding the right market
• Developing a marketing plan
• Presenting a product to a company
• Negotiating a royalty deal

My review of the book

This book provides a good explanation of the invention process. The real life stories teach inventors of the potential pitfalls commonly encountered by new inventors. It maps out an inventors voyage through invention, development of the product, to protection and marketing. I think The Inventors Bible is a good book for independent inventors. The book is well written, very readable and covers a lot of useful topics. The Inventor’s Bible is an excellent collection of practical information from an inventors prospective, based on the author’s business experience. Even though the book is not presented from a legal viewpoint it is helpful because it looks at inventing, patenting and product development from a business angle.

About the Author

Ronald L Docie, Sr’s career in selling inventions spans more than three decades. His inventions are featured in Wal-Mart, Kmart and thousands of other distribution channels. As an agent for inventors, Docie has negotiated license deals with many companies including General Motors, and he’s a consultant to Johnson & Johnson on idea submission. He is the president of Docie Development, LLC, an international company that provides services for inventors and corporations.

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What inventors need to know...

“Does the product infringe on a patent?” and “Should a patent application be filed?” are questions a product developer would want answered before going forward with manufacturing, marketing and distributing a product. But what makes a product a long term profit generator?

"Imagination is the beginning of creation. You imagine what you desire, you will what you imagine and at last you create what you will." George Bernard Shaw

There are many factors an inventor needs to take into consideration in order to create a profit generating product from from an idea. I asked Richard P. Conway, new product developer/ inventor and founder of Ingenious Products Inc. to help me put together a list of keys which contribute to a products' long term sales success. Here's the list we came up with:

1. The product solves a real and obvious national consumer need; a convenience product  which creates an easier, faster, less expensive way to deal with an old problem.
2. It’s new and buyers understand they can't get it anyplace else.
3. It communicates instantly its use and benefits to the end buyer on the shelf. Obvious perceived value at the point of purchase.
4. It provides a wide market solution for the national customer (broad market, i.e. something everyone uses like a toothbrush. Not a narrow market product like a tuning fork).
5. It is clearly identifiable to the buyer and Branded with a trademark  (set to enter the market with a unique name i.e. balance buddy).
6. Eye catching packaging (looks cool). Attractive packaging can drive shelf sales and enhance or boost buying interest.
7. It can be sold in multi-generations: i.e  offer new improved generations to keep it fresh on the shelf for the retailer and end buyer.
8. It is recyclable or biodegradable to match the "going green" initiatives set by retailers for packaging and product materials.
9. It is priced right for impulse purchases by the end consumer.
10. Product manufacturing costs are low enough to have a sufficient price mark up margin (i.e. 5x cost) to allow the manufacturer, wholesaler and retailer to make money.  Factors in lowering the cost of manufacturing:     

                   a) Low freight cost: not an odd shape; relatively small and light weight
                   b) Packaging: can be packed on pallets for regular store order fulfillment in 4 to 6 units
                   c) Easy to make: i.e. not labor intensive, small number of parts, made from a mold

Probability of success increases with with each additional factor. If your product doesn't meet all these standards hopefully its strong points will carry the day. Can you think of any other relevant keys to success? Comments are welcome.

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What inventors need to know...

Clients have been asking me to write a blog post about companies providing invention promotion services and whether or not they can help inventors. I saw a law blog post today by IP Watchdog regarding a lawsuit filed by INVENTION SUBMISSION CORPORATION (dba Invent Help) in the United States Federal District Court for the Northern District of New York.

This case was filed against the corporate entity IP WATCHDOG INC and Eugene R. Quinn Jr. and Renee Quinn as individuals. Invent Help claims that their company has been irreparably injured by IP Watchdogs’ past false advertising, deceptive trade practices and defamatory portrayal of Invent Help and its inventor assistance services. One such example of alleged defamatory portrayal is stated in the complaint as:

"[IP Watchdog] state[s] that InventHelp's... invention submission model is to get inventors to spend large amounts of money for services of dubious quality."

Whether this particular invention promotion services company provides services of dubious quality or high quality in which an inventor can take advantage of is a question that may be argued in court. IP Watchdog blog stated, “Rest assured, I will vigorously defend [this case]." Remember the truth is an absolute defense in a defamation case. So are all his allegations true? Will we learn the truth? Will it go to trial? Cases like this are more likely to end in settlement.

I found an article written in 2004 by Bob Sullivan the technology correspondent for MSNBC.com entitled, "Got an invention? You, too, can be scammed" where he explored the vagaries of the invention industry and he told of how, FTC targeted this firm in the past, "

The Federal Trade Commission and various state authorities have taken several sweeping legal actions against invention firms, beginning with a 1994 settlement with Invention Submission Corp., one of the largest firms. In that deal, the firm agreed to pay $1.2 million to redress consumers without admitting to any wrongdoing."

The complaint is interesting because it essentially raises the same issues against IP Watchdog that have been raised against Invent Help in IP Watchdog's blog. Here's an excerpt from the complaint:

"[IP Watchdog] advertise and promote their competing inventor services on their blog in promotional pieces titled "Not All Invention Companies are Created Equal" and in a number of blog postings linked thereto including but not limited to "Beware Invent Help Press Releases","Avoiding Invent Help & Other Invention Scams", "My Position on Invent Help the UIA and Inventors Digest", "Quinn Resigns from UIA Over Invent Help concern", "How Inventors Can Avoid Scams, Traps and Raw Deals", "Falling Prey to Invention Submission Scams", and "No holes Barred: IPWatchdog Addresses Ethical Charges" as well as "Inventing" and a number of blog postings linked thereto. Each of these web pages features IP Watchdog's "Patent Pending Today" promotion of its Invent + Patent System. When the consumer clicks on the Defendants' promotion the consumer is taken to a IP Watchdog webpage explaining IP Watchdog's: a) Watchdog's: a) patentability search and opinion service and b) on-line service for generating a provisional patent application and instructions on "patent pending" submission to industry called the "Invent +Patent System."

Invent Help alleges that IP Watchdog draws people into his website by describing "scams" perpetrated by the invention submission companies. Invent Help further alleges that  "... IP Watchdog's invent + patent system allows [IP Watchdogs'] clients to submit 'inventions' that can be sold or licensed and that [IP Watchdog] can refer inventors to a 'reputable licensing and marketing company' who will do the licensing work that [Invent Help] claims to do rather than 'steal all of your money' like Plaintiff does." (see paragraph 25 of complaint).

If you go to the Invent Help web page entitled The Truth About InventHelp® - Avoid Invention Scams where they list FAQs about Spotting Inventor Fraud you will find they indicate "The law requires an invention company to give you an explanation of its track record in advance," while they say  "we're proud of our record and provide it to you in advance" they fail to list what their track record is on this page. I finally found it on a page entitled InventHelp® Client Invention Stories: Weed Thrasher, That was a curious place to put this nugget of information:

"From 2006-2008, we signed Submission Agreements with 5,692 clients. As a result of our services, 94 clients have received license agreements for their products, and 21 clients have received more money than they paid us for these services."

The law they are referring to is the The American Inventors Protection Act of 1999. This act established certain inventor rights rights when dealing with invention promoters. Before an invention promoter can enter into a contract with an inventor, it must disclose the following information about its business practices during the past five years:

• How many inventions it has evaluated;
• How many of those inventions got positive or negative evaluations;
  
• Its total number of customers;
  
• How many of those customers received a net financial profit from the promoter's services; and
  
• How many of those customers have licensed their inventions due to the promoter's services.

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As a father of four, Richard P. Conway was helping one of his children learn how to ride a bike and while trying to hold on and run behind the bicycle, he thought, "there has to be a better way."

From there his journey as an Inventor to new product developer began. He has since received a United States Patent, registered the trademark (pdf) and brought his first invention the "Balance Buddy" to almost every national retailer in the country. Now he is helping other inventors do the same thing. To share his success, Richard founded, Ingenious Products Inc. to help other inventors bring their ideas to market.

He agrees it wasn't an easy road and he learned a lot of lessons the hard way, that's why he hopes to help other inventors avoid some of the same pitfalls. He graciously agreed to answer a few questions about what inventors need to know...

Tell me a little about you and how did you get started as an inventor? 

I got started solving common problems around the home. I was so excited and passionate about my inventions I immediately began presenting my inventions to companies that could sell my product. I quickly realized this was a huge error because I had not taken the necessary steps to properly protect my idea from being ripped off by others. That is exactly what happened. Because of those bad experiences.I now make sure each product has the necessary protection.

What is the first thing a new inventor should consider? 

I encourage all inventors to first take a hard and detailed look at their invention. At the idea stage it is very critical to determine there is a  large enough market/need to sell the product. Without  demand there is no retail/license opportunity. Most inventors rush into this process because of their passion and enthusiasm and overlook the real importance of their target market.  Remember it is all about selling your invention! Long-term financial success is market dependent. 

What should a new inventor do after they have determined the target market?

Determine sale price. Before a product can be manufactured you must estimate early on whether your target market can afford to purchase the product.

Determine the cost to manufacture the product. The cost estimate needs to be as accurate as possible. Underestimating the cost will lead to financial ruin! Some factors that enter into the equation and are often over looked by inventors: manufacturing materials; assembly; customs charges; freight-case boxes; barcodes-graphics; work-packaging design, packaging costs; inventory; warehousing; processing orders; fulfillment; logistics and much more…..

What are things an inventor should avoid? 

Most inventors rush into this process because of their excitement and passion. STOP everything and seek professional advice from a patent attorney first. This professional will be able to give you valuable insight and guidance early on whether your invention has initial merit. Then the inventor must answer some very critical questions: Who is going to manufacture their product? Can I afford to have the product made? How am I to sell the product? Is the target market big enough to make selling it worth while? What is the true cost of the invention? Will retailers be interested in the product? Can retailers make money selling the product? And much more…. 

How did you finance your business, and how have your finances changed as you've grown your business?

I was be able financed my business initially through my personal savings however it took much more than I had ever expected. Like most inventors capital is limited so deciding early on the direction you want to go is very critical to be successful in the whole process.

 There are only 3 options to this step: 

1. You fund the process totally by yourself (including family and friends) 
2. You sell or license your invention to a company that specifically handles that type of product for a very modest or low royalty. 
3. You partner with a company that has a variety of products and is interested in adding your invention /product to the products it currently sells. This is basically a hybrid of option1 &2. Here you still get a royalty however it is typically significantly higher.

Why is it higher you should ask? It is really quite simple, the company is interested in expanding into a new product segment/market to increase their sales and take market share from current competitors. Make no mistake about it, these are the only 3 options available. 

Are you selling your products, and what sorts of licensing deals do you have in place?

Yes, our company focuses on seeking out new innovative products that are potentially in demand in large markets. Product demand first and foremost. We nearly exclusively prefer to partner with inventors and their products where we provide the depth and resources needed to develop and sell a product in national and international markets. We  have placed products with most of the major national retailers targeted to the mainstream consumer. We seldom target niche markets or the specialty retail segment.

For for the rest of the interview, see after the jump.

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Inventors should know...

A lab notebook containing accurate records can preserve patent rights. A laboratory notebook should include information such as:  how the inventor came up with the idea; when the idea was "reduced to practice;" and evidence of invention such a hard copy of e-mail  communications.

Two of the most visible inventions from the last two centuries were disputed in court as to who invented it first. Philo Farnsworth invented the television and RCA argued against the patent.

Alexander Graham Bell filed a patent application and later that same day Elisha Gray  filed a patent caveat for the telephone.

A few tips on maintaining a laboratory notebook:

1. Use permanently bound, numbered laboratory notebook

2. Describe the work so that it can be repeated in your absence

3. Write in ink

4. Permanently attach any printouts

5. Have your notebook witnessed regularly

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Thanks to @ipwatchdog for tweeting this week about the pitfalls of inventors representing themselves and the USPTO effectively advancing "submarine patents" through Patent Office delay.

"Inventors who represent themselves always wind up with rights more narrow than they should."

@ipwatchdog makes two points I would like to comment on:

First, when the USPTO causes long delays for an unpublished patent application, it essentially creates a "submarine patent."  The problem with "submarine patents" is that when issued, it forces companies already using the newly patented technology to pay retroactive licensing or rights fees. US Patent No. 7,631,368, was a pending application out of the public eye for about five years before it issued.

The second point is that the patent claim is so darn long and  "narrow" because it has so many elements, it would be almost impossible for anyone to infringe upon it. Therefore making it not only a "submarine patent" but a "wallpaper patent" as well,  essentially having no value. The only thing it is good for is to  hang it on the wall. The submarine was sunk by the heavy load of elements in the claim.

Inventors should know...

The lesson here is, make sure you are represented by a registered patent attorney or agent that knows how to draft broad claims.

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What Inventors Need to Know...

An inventor does not need a prototype to file for patent protection. Many inventors incorrectly believe they need a working prototype in order to file an application for a patent. The law requires that a patent application include a description of the invention so that somebody skilled in the art can make and use it. However, prototypes can be useful to prove whether the invention will work properly.

I spoke with Merry R. Constantino, a former Product Design Manager at Fisher-Price and currently the president of a "new product development company" called Product Logic and she said that,

A common problem when making a prototype after a patent application has been filed, is that all of the bugs have not been worked out of the product and often the 'end product' that we produce is not the same thing that was described in the patent.

Inventors should know that no "new matter" can be added to a patent application after it is filed.

There are many manufacturing and marketing factors that an inventor should consider in the initial idea stage. Here are a few of the things that Product Logic brainstorms when making a prototype:

• Human Factors/Ergonomics
• How can it be made with the fewest possible number of parts?
• What is best way to mass produce (labor sensitive)?
• What is a cost-effective way to produce?
• Can it be made in a way that others cannot easily copy?
• What is the best material it should be made from?

Another thing that an inventor should know is that when working to prepare a prototype with a new product development company is that if the company makes changes which improve the product it is possible that the company becomes a co-inventor.

Merry stated that "our company assigns all rights over to the inventor for any product that we work on." It's important to understand that when an inventor retains the services of  a company to produce a prototype there is a risk of loss of intellectual property rights unless a written assignment of rights document is prepared and executed by the parties.

If an inventor plans to license or sell their "patent rights" to an invention,  it may be necessary to build a prototype to demonstrate  to a potential licensee how great it works. In order to mass produce a product it may be necessary to design a working prototype as a model of reference for the manufacturer to duplicate.

Although an inventor does not need a prototype to get a patent, working out all the potential manufacturing issues before filing appears to be a logical step in the invention process.

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So you have a new invention, what next?

Inventors usually have a questions like: Should I get a prototype? Do I need to have a patent to protect the idea? Who can I speak about it to? Is it a good idea? Can I make money from it? Who can I trust? Is there some great blueprint I can use to follow? Is it possible to get a manufacturer to make the product for me and pay me a royalty?

Many inventors come to me with their ideas but don't know what to do about it. I tell them that I do not want to encourage them or discourage them however ideas don't usually sell themselves. It takes many things to sell the idea. In order to take a product from the idea stage to the store it is necessary to learn what it will take to manufacture, market and distribute the product.

There's a good checklist  described as the ABCs of inventing in Inventors Digest . I think this list is a good starting point and should be thought of as the "Inventors 10 Commandments":

1) Stay away from invention marketing companies that advertise on radio and late night TV.

2) Keep good records about your idea...some day they may be the back up you need to prove YOUR idea is YOURS! (Lab notebook)

3) Do your own patent search online at  the USPTO or at a Patent Depository Library.

4) Build a model.

5) Have your invention evaluated by a non-biased professional (even if your Mom’s in the business, go to someone else!).The nonprofit United Inventors Association offers an excellent invention evaluation.

6) Read all you can about new product development. Go to your local book store or library . . . others have gone before you. Don’t reinvent the wheel.

7) Network with other inventors. Join a local inventors’ organization.
Who can I trust? What do I do next? How do I find the help I need?

8) If your patent search looked promising (see #3), make an appointment with a patent attorney, patent agent or professional patent searcher. Show him the results of your search and follow the advice.

9) Do what you do well and hire pros to do the rest.

10) Don’t fall in love with your invention, but if you’re sure you’ve got a winner (see #5), hang in there! 

These are all great points and should be taken into consideration. One thing inventors should understand is that it's a long way to Tipperary. Anything that is worth it may take a lot of blood, sweat and tears to be a success. The ancient Chinese Confucius said, "A journey of a thousand miles starts from the very first step."

Remember the inventor's first step is coming up with the idea. There are many more steps that need to be completed in order to bring a product to market.

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