Machine Design
Patent and Business Strategies for Inventors

Patent and Business Strategies for Inventors

Have you ever had a great idea and wished you could figure out how to get it to market, but you weren’t really willing to “bet the farm” on it? As someone who has been in that position on several occasions, I can share a few insights.

First, I’ve never been tempted to contact one of those firms that markets heavily about how they help novice inventors develop ideas and provide lots of support at every step of the way. I’ve generally assumed, perhaps unfairly, that they’re much more interested in the fees they’ll collect than in really helping me succeed.

Second, I’ve never sought out angel investors or venture capitalists as a way to fund the process. They provide much more mainstream approaches, but such investors will rightly expect that you will be totally focused on achieving certain agreed-upon milestones on schedule. And they will be quick to walk away if they see the opportunity fading. It’s a high-risk, high-reward, time-critical approach that makes sense if you’re already financially independent or young enough and without major family obligations that you can weather a spectacular failure and move on with your life. Or you really like to gamble.

My approach has always been to do my inventing “nights and weekends” as a complement to a regular job that pays the bills, investing my own funds on a schedule I can afford and putting in a few hours a week slowly pushing the idea. Not every idea is a success, but with this strategy it’s possible to eventually succeed financially if only one in 10 ideas sees some level of commercial success.

Like many in the Machine Design audience, I have a small basement shop and some design tools that let me tinker and pursue ideas while avoiding the expense of real-estate rental, hiring employees, and bank loans or other debt. Thus, when some of my efforts proved to be “ahead of their time,” I’ve been able to weather the long haul until the market catches up. During that time, I am able to keep the idea alive while maintaining full ownership of the IP, persisting in overcoming the obstacles that will intrude, learning more about the markets involved, and laying a solid foundation for success. That old adage that success is 1% inspiration and 99% perspiration is true, and you need to give yourself the opportunity to actually invest that 99% without worrying about investor demands or running out of money.

In the process of acquiring 10 patents and writing over a dozen additional provisional and non-provisional patents, I’ve gained a lot of insights that you may find useful.

• If you work for a company, especially one involved in design, manufacturing, or consulting, there is a strong possibility you were required to sign an agreement that assigns the rights to any invention you conceive to your employer. Sometimes this provision extends for patent filings that occur 90 days or more from the date you leave the company. So before you do anything, talk to your boss or someone in your HR department to find out if you can carve out some type of exception to that policy. Companies are often willing to let you individually patent ideas that lie outside their competitive area of interest. If you can’t do that, and you’re unwilling to launch your own business, there is little reason to pursue this strategy.

• Your only protection as the inventor of a product is a patent. And the only circumstance under which most potential customers/acquirers/licensees of your idea will even talk to you is if you have at least applied for a patent. They don’t want to be embroiled in any charges that they’ve stolen your idea. A patent application, with its definitive time stamp, sets clear boundaries on who owns what.

• Patent lawyers are really expensive. Until you’re sure you have something likely to provide a return on what could be a substantial investment, figure out how to use the many tools available on U.S. Patent Office’s website www.USPTO.gov. It’s especially important that you learn how to use their advanced search tools for patents and published applications.

• Our patent system is based on the “first to file” principle. Fortunately, you can file a provisional patent application on your own, without help other than reading the guidelines on the USPTO website, as soon as the idea crystalizes in your mind. The cost for a first-time inventor filing under “micro entity” status is only $65. If you don’t qualify for that rate, the fee for a “small entity” is $130.

Provisional patent applications are good for one year. That time window lets you explore an idea more fully with reduced risk that it will be stolen. This exploration should include your own efforts to determine whether the idea is truly novel or so close to someone else’s patent that it is not worth pursuing. It should also include reaching out to potential customers/acquirers to determine whether there is any significant level of interest, i.e., do you have a product idea people will actually pay for? And finally, this one-year window gives you an opportunity to create a prototype, even a crude representation, to determine whether the idea will actually work. For this latter goal, I’ve found the 3D printer on my home desktop to be priceless.

• Submitting a provisional patent requires that you be able to adequately document/describe your idea in both words and figures. If you’re not a good writer, get help from friends or family. And think carefully about all the different ways your idea’s general functional characteristics might be realized. Your provisional patent not only registers the priority date for your idea claims, it also limits what you can later claim (without losing your priority date) in a subsequent non-provisional patent application.

The drawing portion of the application can be made much easier if you can create a range of drawing views from one of the available drawing software packages–preferably a solids modeling program. If you know how to use one of these programs, great. And if your employer will let you use company software for a personal project like this, it can be a big cost saver. However, should you need to acquire your own design software, there are several alternatives worth looking at. SolidWorks is a superb choice for small inventors, but it costs about $5,000 for the initial license and has substantial annual subscription fees. Other, more recent 3D solids programs, are less expensive. AutoDesk’s Fusion 360 and OnShape are two that come to mind. There is actually a version of OnShape you can get for free with the only limitation that your cloud-based file storage cannot exceed 5 GB. Patent drawings at the provisional level don’t necessarily need to conform to any particular format, but the USPTO publishes a definitive drawing format guide you should get in the habit of using.

• After you decide your idea is worth pursuing beyond the provisional patent level, legal protection starts to become more expensive. If there is a chance your idea will have broad appeal, especially on an international level, the investment in a patent attorney is certainly warranted. If, however, you determine there is a small market, but one worth pursuing for a small business, maybe something you could do almost at a hobby level for the enjoyment and small additional income it could afford, then you might think about prosecuting the non-provisional patent yourself. The USPTO lets individual inventors file pro se. I’ve done it once under just this set of financial considerations. The process is still underway, so I have limited experience to describe the plusses and minuses.

• One strategy I’ve used on several occasions is to solicit help in the patenting process from a larger firm interested in licensing the rights to the invention. Under these terms, they typically fund the out-of-pocket expenses for all legal fees. Inventors are generally expected to contribute their time to support development of the required patent specification and drawings with no compensation other than for direct expenses.

A natural extension of this strategy is to also solicit help from the licensing firm to defend the patent once it issues. This is potentially a huge factor in your overall business strategy because the value of a patent is only as good as your ability to defend it against potential infringers. As an individual pitted against a multinational corporation, you would have almost no chance of enforcing your rights. With the help of a larger firm, the odds go up substantially. Most agreement language around this type of provision will give the licensing firm “the right, but not the obligation” to defend the idea. Typically any damages won in a patent trial go to whoever funded the suit, and in the case it would be the licensing firm and not to you. That’s okay because your interest is in protecting the royalty stream from the license and if that continues, you win too.

I find the whole process of invention, design, and marketing of ideas to be fun and a great sideline to my normal work life. As hobbies go, it’s one of the few with the potential to actually supplement your income rather than be a steady economic drain. Like every hobby, it gets easier as you develop skills and more experience. It’s also a great way to keep my mind active and something I hope to do well into what would otherwise be a quiet retirement.

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