LAURENCE J. SHAW, PHD
Seven Tips for Independent Inventors
As a patent agent and inventor myself, I’ve met and worked with a hundreds of inventors. Here’s some advice based on my 25+ years of experience …
1. Do your prototyping!
You’ve come up with a fantastic invention? Great! Yes, you probably need to protect it by filing a patent. But should you file for your patent right away? Maybe. The US patent system allows inventors to file a relatively inexpensive provisional patent application first, and then file the full non-provisional application within a year. So often it’s a good idea to make sure you’re the winner of the “race to the Patent Office” by filing a provisional application as soon as possible.
But I often see inventors wanting to jump right to the patenting stage and failing to appreciate the importance of prototyping. Though you are not required to have a prototype to obtain a patent, that doesn’t mean you shouldn’t. In fact, I find that the farther along an inventor gets in the prototyping process, the more successful their endeavor will be. In the world of patents, the “devil is in the details.” Not only is one required to disclose all the “enabling” details of your invention in your patent for it to be considered valid, it’s often the unexpected details discovered during prototyping that allow the patent application to pass the Patent Office’s rigorous examination process.
2. Watch out for your first public disclosure or offer for sale
Often, in a rush of enthusiasm a new inventor will make an announcement about their invention in some public forum, such as a conference, rotary meeting, or on social media. Even if the announcement is vague, important patent rights may be lost. In the United States you have one year from your first public disclosure or offer for sale to file for a patent. However, if you plan to obtain patent protection in foreign countries, you need to file your patent application before your first public disclosure or offer for sale of your invention.
3. Don’t go overboard with the NDAs (Non-Disclosure Agreements)
Whereas you have to be extremely careful about your first public disclosure or offer for sale, one can be overly cautious regarding private disclosures. A simple “Please don’t tell anyone” should be enough of an NDA before disclosure to most people. You’ll never get anywhere if you require everyone you’ll ever need to discuss your invention with to sign a written NDA. For instance, if you need to talk to the pet shop owner down the street about your hamster toy invention, just ask during a quiet, private moment (such as when she’s about to close shop) if you can have a confidential discussion about your invention. It’s generally only the people who are manufacturers or distributors in the industry of your invention who you need to have sign NDAs. Also, it’s generally not the nascent inventions that are stolen, it’s the inventions that have already generated substantial revenues. So don’t spend all your time and energy looking over your shoulder when you should be looking ahead! (And keep in mind that once you’ve filed a patent application, you’ve already won the race to the Patent Office, making NDAs all the more unnecessary.)
4. Don't use "invention development" companies
There are a lot of companies out there that claim they will bring your product to market. Only a small fraction of inventions, even patented inventions, make it to the market, and even a smaller fraction ever make a profit. Invention development companies that offer to market your invention generally have very poor track records. Be especially wary of those that require an up-front fee. In any relationship, it is best that both parties’ interests be well-aligned. Invention development companies which require an up-front fee profit regardless of whether the product makes you, the inventor, any revenues, and that is not a good alignment of interests.
5. Pick one invention and stick to it
Inventors have ideas, and most inventors have a lot of ideas. But it’s not the “I’m an ideas person” inventors (i.e., those who expect someone else to do the real-world legwork) who are the most successful. It is the inventors who dedicate themselves to one idea and get their hands dirty with the prototyping and development challenges who are the most successful. Yes, there are rare instances where someone comes up with an invention, gets a patent, and right away licenses it to a big corporation and makes oodles of money. However, that is extremely rare. The easy part is coming up with the invention. The next easiest part is patenting it. The hard part is bringing it to market and making money. If you really want to bring your invention to the world, you should be prepared to spend substantial amounts of time and effort on the post-patenting part. So if you have a number of great ideas, pick the one that you’re willing to devote yourself to and stick with it.
6. Beware of cheap patent preparation services
You generally get what you pay for, and that is particularly true in the world of patents. A cheaply-written patent application can actually be worthless. Every word of a patent application is important -- a two-letter preposition can mean the difference between a valuable patent and a worthless one. Worse yet, a poorly written application has a far greater likelihood of being rejected by the Patent Office, never to be issued as a patent. So beware of bargain-basement prices.
7. Less passionate and visionary minds won’t understand
You should expect that you, the inventor, will have an unrivaled enthusiasm for your invention. You will be the one who stays up nights tweaking, planning, strategizing and fine-tuning to make what began as a flash of inspiration into a reality. The upside is that this passion and enthusiasm is the fuel for the dedication which is required. The downside is that it can be a lonely road. There will likely be rejections along the way. People will question why you are spending so much time on your spreadsheets, why so much money needs to be spent on equipment, why the garage is so full of this and that, etc. And because you are creating something new, standard ways of doing things may not be appropriate. You may have to go against the common wisdom, you may have to ignore the advice of friends and family. Inventing is the road less traveled. That is the adventure.
With passion, dedication and hard work, it is possible for the independent inventor to bring his or her vision to the world. Good luck!
These tips are intended as general advice and should not be considered legal counsel. Best courses of action will always depend on the particulars of your invention and situation.