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When Do You File a Patent? You’d Be Surprised!

skpatentI want to talk about when you should file a patent.  And based on my experience, I have a different approach to this than many other folks.  Trust me, I know exactly what it feels like to come up with an exciting new product idea, and Boom! That’s when fear takes over. Is someone going to steal my idea? 25 years ago, that fear hit me, and sure enough I found a patent attorney who assured me that my product idea was novel, so I went ahead and filed two patent applications.  Those applications cost me close to $15K apiece! Later I learned that I filed those two applications way too early in the process.  Way too early!  It turned out, as a result of my rush to file, both of those applications were useless.  Waste of money and time.  It’s just not true that you need to file for a patent as your first step.

Now let’s fast forward to today.  I’m a big patent holder. I have over twenty patents in my name. I’ve even defended my patents in federal court against one of the largest toy companies in the world. That was painful. But I learned a great deal about when you actually need patent protection as well as when to file for that protection.   You don’t need a patent for every idea. You just don’t! If you have a “big” idea you’re actually going to need multiple patents (not just one), like my big idea called Spinformation.

Now don’t get me wrong.  I’m not saying that you don’t need to protect your idea at all.  I’m just saying you don’t necessarily want to file a patent as your first step.  What you need is to establish perceived ownership. You can get that perceived ownership with a Provisional Patent Application. PPA’s are one of the most wonderful tools for us people with creative ideas. It provides your idea with “patent pending” status for one year and it is very affordable (depending on your circumstance its only $65 to file one). During that year, the USPTO does not even review your PPA! It’s an inexpensive tool that essentially buys you time! Time to find out if your product idea has any merit, if it has any market, if you can possibly license it or commercialize it. Putting “patent pending” on your idea gives you just enough perceived ownership to license it with a much lower cost and risk.

I also believe that you can write your own PPA but you MUST do so in a way that creates value. With some effort, you will do a better job than any patent attorney.   I would certainly recommend that you have a patent attorney review your work, but I wouldn’t have a patent attorney write the first draft. There are ways to become an expert with your own idea so you can write your own PPA’s.

Full disclosure: I’m not a patent attorney, I cannot give legal advice, but I have filed many, many PPA’s myself, and as previously mentioned, have lots of patents too. I understand this process from a business perspective, not from a legal one. So here are a few of my tips about when and how to go about filing a PPA:

  1. Don’t file for a patent first! It’s too early. That’s going to go against the advice of a lot of your friends, family and business associates! “File a patent! You need to protect that idea!’ And I don’t want you, out of fear, to rush out and file for a patent. I mentioned earlier that I made that mistake and I learned a lot along the way. Realize that 97% of all patents never make any money! Why not? Something must be wrong. People are spending lots of time and money to get patents that aren’t making them money. Those patents are expensive wallpaper for an office! Why is this happening? People didn’t take the time to determine whether their idea was even marketable in the first place!
  1. You must become an expert on your idea. To become an expert, you need to do two things. The first thing to do is a Google image search to try and find your idea. See if it’s out there. Become an expert in your micro-category. You’re going to learn a lot just doing this. It’s also going to reveal a list of potential licensees that you can contact about licensing your idea.

The second thing you need to do is to learn how to search for prior patents. It’s not that difficult. You can do it two ways: you can go to Google patents, type in similar words, and I can guarantee that you’ll find patents out there that are close to your idea. But, you still want to find your uniqueness. Always look at the drawings first. If it looks like your idea is really close to another, start reading the whole patent. You can also do the same thing by going to the USPTO.gov and look for prior patents. These two sources are where you want to look for prior patents to learn more about your idea.

Now…you’re definitely going to find something similar to your idea. Don’t panic! Find your uniqueness. Look at the drawings first, then read the claims, and then read all of it. If it’s so close to your idea, that’s not the end of the world. You might be able to reach out to that inventor and ask what happened. You have already checked online and that idea isn’t out on the market yet, so something went wrong. Try to figure it out. Call that inventor and ask him, “I’m a consumer and I love your idea, what went wrong?” Listen to his story and most likely he is going to tell you a couple things: 1. He didn’t have the money. 2. It was too early. 3. He just didn’t know what to do. But he’s got a very expensive plaque on his wall, and he would probably welcome your call to try and find a licensee for him. You can work out this sort of deal. Contact a licensing attorney, drop a one-page about how you guys work together. It’s pretty simple to do.  That’s what you do if you find something that’s exactly like your idea and you still want to go forward with it.

  1. If you’ve done your homework, both for prior art and a Google image search, you probably found other products and ideas that are similar. Know your point of difference. Know your uniqueness.
  1. Now you can make your list of companies that you’re going to submit your idea to based on the information you gathered. Not only that, but the provisional patent application that you are going to file will now have value.
  1. The great thing about a PPA is that you can write it yourself. It doesn’t require any special legal language. You are just going to tell your story. There is a certain format to the PPA that you can look up online, and it is very easy to do. Here are some notes
    1. Field of Invention: The overall picture of the industry; make sure to not put your own invention there.
    2. State the problem: What problem are you having, or that other people have, that you’re solving?
    3. The Solution: Your invention. What is it? Make sure you describe it in great detail. Tell as much as you can, especially from all the things you’ve gathered. Maybe you’ve built a prototype. Maybe you know it works. Maybe you know what doesn’t work. Do your homework and know more about it than anybody else.
    4. The Summary: Bring it all together. Make sure to include all the points you have mentioned before.
    5. Drawings: This part is extremely important to me. I love the drawings because a drawing is worth a thousand words. They don’t need to be professional patent drawings. Sometimes I’ll even include a flow chart with drawings to tell a story. It’s almost like instructions for when you get something and you have to put it together.

Most big ideas might require a wall of patents, like mine did. But most other ideas do not. In fact, some ideas go in-and-out of the market so quickly it doesn’t matter if you have a patent or not. It’s not about protection, it’s about selling. Do your homework first. If you do the things I just talked about and decide to file a PPA, it’s easy to do and it gives you the perceived ownership needed for when you reach out to other companies and potential licensees. A PPA is enough for them to sign a licensing agreement. In every licensing agreement that I’ve seen over the years, in fact over 15 years, no one has a patent! It’s all because of this great tool called the PPA, as it gives you the perceived ownership you need to sign a licensing agreement. Check it out, take a deep breath, and don’t panic. I know there’s that fear out there, but use a PPA as your tool to move forward with your ideas.

I’ve written a book that goes into way more detail about this topic, and actually gives you a step-by-step approach to writing and filing your own PPA. Check it out here!

And, together with patent attorney (and founder of the award-winning blog IP Watchdog) Gene Quinn, we developed a program called SmartIP that walks you through each and every step of writing and filing your own PPA. Check it out here!

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Thursday, 21 March 2019

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