Please Select an article below:

• How to Become a Successful Inventor

• Matters to Consider Before Filing a Patent Application

• My Patent Application is Filed-Now What?

• What Is My Invention Worth?

• Protecting, Developing and Marketing Your Idea

• Top 10 Mistakes Made by Inventors

• Why should I get a patent?

How to Become a Successful Inventor

Wouldn't it be great to be one of those people who have made millions off of one of their inventions? Well if they can do it why not you? Your ideas are probably just as good, or better than a vacuum seal system for food, or a sweeper that picks up water. You probably have inventions in your garage, but have no idea how to market an invention. You need to know how to go about showing your new idea to the right company.

The first step to becoming a successful inventor is to understand the difference between an idea and an actual invention. Ideas alone have no value; it is the actual "reduction to practice" of your idea that could make the idea patentable and hopefully sellable. A reduction to practice occurs when a prototype is made, or when the invention is fully described in writing and drawings. If you really want to sell your invention, you will probably need a prototype made to demonstrate it to a prospective buyer or investor.

Ideas are just a starting point, far too ephemeral to package and sell. They also happen to be a dime a dozen. A single idea can become any number of actual products, some of them good, some not worth the time of day. So if you do have a great idea, consider that to be step one. Now reduce it to practice, take it to the next step. Design and build a mock-up of the faster drying system for jerky and fruit; produce a drawing or write a detailed description of how your system works, the type of bags used, the power required, the closure that's the key to the whole operation. Once you have done this, you've crossed the line, gone from being only a dreamer to becoming an actual inventor  and maybe now you do have something to sell.

When you have successfully taken this next step, when you've come to realize what real value is all about, you've begun the process of converting yourself into an achiever. And now maybe you'll have an honest shot at all those millions, because when you understand how it's supposed to be done, you really can invent your way to wealth. Once you get this far you will want to look into getting a patent for your invention so that no one can duplicate it exactly as you have designed yours. Making your idea into an invention will take you on your way to making your dreams come true!

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Matters to Consider Before Filing a Patent Application

    1. Is my invention truly novel and non-obvious?  

In order to be eligible for a patent, your invention must be unique and non-obvious.   There's an old expression that goes:   "there's nothing new under the sun."   This expression is meant to suggest that most "new ideas" are not really new.   With close to 7 million issued patents, it is not surprising that many patent applications are rejected for lack of novelty or for being obvious.   A preliminary patentability search is therefore a critical first step before investing in a patent application.  

Our patent searches are conducted by former Patent Examiners who are intimately familiar with the Patent Office Classification System and who are skilled at using the Advanced Search Tools provided at the U.S. Patent Office.   Our Searchers are instructed to find any issued patents, patent applications or other published references that describe your invention or a significant feature of your invention.   If we find such a reference, we report it to you so that you are aware of what has already been patented and what is known in the field of your invention.   Our Patent Attorneys will also give you an honest assessment of your chances of getting a patent in light of what is discovered during the search.  

    2. Is my invention marketable?

Even if your invention is patentable, you should consider whether it is marketable.   A significant number of inventions that get patented are never successfully marketed.   Although some inventors are satisfied with simply getting a patent, the expense of obtaining a patent should compel one to consider whether the patent will generate revenue.  

When evaluating the market for your invention, you should consider both the U.S. market and foreign markets.   If you believe that your invention could be successfully marketed abroad, we would be happy to discuss filing patents in those countries, or filing an international patent application under the Patent Cooperation Treaty.  

      3. Consider filing a Provisional Patent Application

A Provisional Patent Application is a quick and economical way of securing a filing date with the U.S. Patent Office, as well as "patent pending" status, before filing a formal Non-provisional Patent Application.   Once you've filed a Provisional Patent Application, you can conduct market studies on your invention without jeopardizing your patent rights.   At the same time, you don't have to worry about someone stealing your idea and filing a patent application on it since you've already filed an application.   It is also reassuring to know that another inventor can't come along and file a patent application on a similar or identical invention before your application is filed.  

Please note that once you've filed a Provisional Patent Application you have 12 months from the filing date of the Provisional to file a formal Non-provisional Patent Application.   If you miss the deadline, you lose your Provisional Application filing date.   Furthermore, if you disclosed your invention, you risk a 35 U.S.C. 102(b) statutory bar to filing a Patent Application.    Therefore, please consult with a Patent Attorney before the 12 month period expires.

       4.   What can I expect after my patent application is filed?

A Provisional Patent Application does not get examined by the Patent Office, so nothing really happens until you file a formal Non-provisional Patent Application.   Once you've filed a Non-provisional Patent Application, the "patent prosecution" phase of the application process begins.   Patent prosecution describes the interaction between the Patent Office and your Patent Attorney or Agent concerning your Patent Application.   Oftentimes, Claims in a Patent Application are rejected or objected to in a first Office Action from the Patent Office.   Your Patent Attorney's/Agent's job is then to argue that your Claims should be allowed based on evidence presented to the Examiner.   Alternatively, your Claims may have to be amended to satisfy the Patent Office.  

There may be several office actions issued by the Patent Office before a final decision is made regarding your Patent Application.   Law firms outside the Washington D.C. area are often forced to reply to these Office Actions by mail, which can delay the processing of your application by months or even years.   Our attorneys can meet face-to-face with the Patent Examiner assigned to your Application, which is very helpful in accelerating the processing of your Patent Application.   In addition, other factors can help accelerate the processing of your Patent Application, including the age of the Inventor and the nature of the invention.   Consult with a Patent Attorney or Agent to learn more about these factors.  

      5.   What happens after patent prosecution?

If one or more Claims in your Patent Application are allowed, you will receive a Patent in the form of a Certificate of Registration.   Your patent is good for 20 years from the filing date of the Patent Application.   It is therefore to your benefit to minimize the patent prosecution phase, so that you can maximize your patent term.   For the life of the patent, you control the manufacture, use and sale of your invention.   This can be an enormously powerful right.   In addition, anyone that infringes on your patent may be subject to treble (triple) damages going back to the date of publication of your Patent Application.  

      6.   How do I make money from my patent?

This is a question we often get from our clients.   We are not an invention marketing company and therefore offer no service for promoting your invention.   However, your Small Business Administration office should have resources available for contacting potential marketing firms or representatives from companies that might be interested in your invention.   Please make sure to check with the Better Business Bureau ( www.bbb.com ) before enlisting the services of any invention marketing firm.   Also see the following "Scam Prevention" report issued by the United States Patent & Trademark Office.  

Before disclosing your invention to any non-patent attorney, you should have a Confidentiality and Nondisclosure Agreement in place.   Even after you file a Patent Application, it is a good idea to have such an agreement in place to provide maximum protection.   If you plan to collaborate with another person or company, make sure that your Nondisclosure Agreement contains an assignment of rights back to you concerning any changes or improvements to your original invention.   Otherwise, the other person or company may become a co-inventor.  

For further assistance or to find out more about patenting your invention, please contact one of our Patent Attorneys who will be happy to help.

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My Patent Application is Filed-Now What?

Once someone has developed an idea, and has taken the necessary steps of consulting a patent attorney or patent law firm, they usually wonder what happens next. Of course the legal representative will explain the process of getting a patent, but it's advantageous to have some advance knowledge of how the process works and what the inventor can do while waiting for a decision from the Patent Office.

If the a patent attorney has already filed a patent application for the invention, then that suggests that a successful, comprehensive patent search has found that no similar patents. Once a patent application has been filed, the applicant's status is referred to as "Patent Pending". The next step in the application process is referred to as the "patent prosecution" phase, which generally proceeds as follows:

First, an examiner from the United States Patent and Trademark Office (USPTO) reviews the application to make a decision on whether the invention is patentable. The USPTO provides a manual (Manual of Patent Examination Procedure) to help them determine what is patentable. For example, slogans, logos and names are considered trademarks, while music, art and writings fall under the category of copyrights. These types of intellectual property are not patentable. Patentable subject matter would include: business methods, processes, compositions, products and machines. The examiner must ensure that the actual invention falls within one of the established categories of patentable subject matter.

If the examiner finds that the request falls within one of the acceptable categories, the USPTO must then investigate whether the patent is for an actual new invention of a product or process. The patent office will conduct another detailed search to help determine if the invention is new. Should there be a similar patent pending application, the inventor with the earlier date of invention gets awarded the patent. (The date of invention is legally established as the date when the inventor has proven it works, or the day on which a workable process was conceived.)

Once the patent prosecution phase is underway at the USPTO, the company or entrepreneur will have completed and signed documentation that can be used as evidence of their conception of the idea. The inventor can then claim ownership of the product, composition, process or machine. As such, they should start labeling the product or process awaiting decision on the patent application as "patent pending". Appropriate markings on the product or process include: "pat. pend", "pat. pending", or "patent applied for", followed by the application number.

This gives warning to others that the inventor may be able to bring a legal suit against any individual or company who utilizes, copies or sells an invention if the patent is awarded. Those who infringe a patent could be sued for damages as well as back-dated and future royalties and have their productions or manufacturing processes seized.

After eighteen months, the U.S. Patent and Trademark Office publishes the application. (note: An inventor can request Non-Publication at the time of patent filing to avoid publication.) However, should the USPTO publish it prior to the patent being granted, the inventor has provisional rights during the patent-pending stage and can sue for damages from the date the application was published. Once the patent application is approved, all patent rights begin and infringement issues may be pursued.

Patent protection allows the creator of an idea to exclude others from making, using or selling the product, method or process. The patent owner can then sell rights to companies or other parties in exchange for royalty payments or some other form of compensation. An inventor should therefore seek patent protection for their invention as soon as possible.

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What Is My Invention Worth?

You've developed the idea, put time into the patent application and construction plans, now the real question is; What is this idea going to be worth to other people? You probably gave this at least a brief thought when you developed the idea to make sure it would be worth the cost to produce. However, a more detailed analysis of the invention's value will be needed before developing a marketing plan.

So, how do you determine your invention's value? There are many factors that must be considered when arriving at a figure. Starting basic, you should consider what you would pay for the idea if you were buying it from someone else. Obviously, you decided that the idea was marketable, or you wouldn't have made it this far. Next, consider what you would pay for it at the store if you needed, or wanted, it. This figure will help you determine the ultimate value of the product.

The next question to answer is; What market are you shooting for? If your invention is designed for the general public the price will be lower in order to reach the largest number of people. If the product, or idea, is aimed at businesses you may determine the value, and subsequent price, can be set higher. The market will have a large influence on the price you set for your product.

When doing market research you will also be able to determine if there are other, similar, products available. If there are similar products available this will help in determining the value of your invention. You will not be able to charge a lot more for your product or idea without justifying the additional cost in some way. Simply approaching a problem from a different angle may not be enough to justify an increased price tag. Offering a more efficient solution, or easier approach, to a problem might be enough to increase the value of your idea.

Another variable in the value of the invention is whether you are planning, and able, to produce the product yourself. The value of the product becomes a combination of the cost of the raw materials, in combination with each other, and the value that the final product holds for the intended audience. For example, if a product uses gold as one of its raw materials, and the product is not available in any other form, the value of the invention will be higher. Conversely, if your invention is just a variation of currently available products, meant to be produced less expensively, and with added convenience, the price set for it may be lower.

Many inventors choose not to produce their own products. This may be due to a lack of facilities, raw materials, or desire to produce the product. Some inventors specialize in developing ideas and then selling these ideas to companies who will produce the products under their own name. Determining the value of the idea then becomes essential in setting a price. Again, the target market, and its size, must be determined to estimate the number of units that could be sold. The final sale price of the product, minus the production cost and marketing costs, will equal the profit that can be realized from the invention. A business will not pay more for an idea than they can turn around for a profit. This means the value of the product will be based on the potential profit that can be realized by the sale of the product in the target market.

Lastly, when determining value of an idea, many inventors will do their own market survey. They will approach people in their target market and ask them questions to determine their likelihood to purchase the proposed product and what price they would pay. This research will give a real world estimate of the value of the product. The key is to take all answers into consideration and look for the common threads.

All of the factors should be considered when determining an inventions value. After considering the market, any similar products, the cost of production and potential sales price, and value and availability of the raw materials, an estimate of value may be determined. Each factor separately influences the value, but the collective value of all factors will help determine the ultimate value, and final price of the product, or idea.

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Helpful Tips for Protecting, Developing and Marketing Your Idea

The tips we are about to share with you are based in part on the experience of inventors who successfully patented, developed and marketed their inventions.  These tips may or may not work for every inventor and will likely require you to adapt them to your own unique situation. 

1. Keep a notebook or log to record concept development. 

A notebook or log can be helpful for several reasons: (1) it helps you keep track of your progress and testing results, so you don’t repeat steps; (2) it can serve as evidence of date of conception in the event another inventor claims that they invented first. 

2. When you have a completed concept for your invention order a patent search. 

A patent search is a relatively cost effective way to determine the likelihood of getting a patent for your invention.  A patent search may also inform you about other similar inventions and help you differentiate your invention from these inventions.  Also, a patent search may also be used as evidence to help establish date of conception. 

3. Avoid any public disclosure or offer for sale of your invention before you file a Patent Application. 

If the patent search suggests that there is a good likelihood of getting a patent for your invention, then you should file a patent application as soon as possible.  You should not make any “public disclosure” or “offer for sale” of your invention before filing a patent application, as it could result in a loss of patent rights.  An “offer for sale” might include working with invention promotion companies who may try to sell your invention to third parties and should be avoided. 

4. File a Patent Application.

As you can imagine, we recommend using a licensed patent attorney or agent to draft and file your patent application.  A patent application is one of the most complicated legal documents that exist and should not be taken lightly.  The U.S. Patent and Trademark Office has stringent requirements, as provided in the Manual of Patent Examination Procedure (MPEP), for proper format and contents of a patent application.  In addition, the strength of your patent often depends on how the legal claims are written.  The claims define the legal boundaries of your invention and ideally should be drafted to cover your invention broadly, while avoiding any conflict with another patent reference.  Therefore, you should work with an experienced patent attorney or agent who is familiar with MPEP requirements and is skilled at drafting patent claims.

5.  Visit your local Small Business Administration or Other Business Centers (e.g. Women’s Business Center) for Help in Setting Up Your Business and Applying for Grants or Loans.     

Coming up with a great new idea or invention is only half the battle.  The other half is developing an effective business model around your idea.  There are probably many resources in your area, including chambers of commerce and your State Corporation Commission, which may provide guidance in helping you select a business structure (e.g. corporation, partnership, etc.), a business name, and a business plan. 

6. Prepare a Business Plan.

Having a realistic business plan is very important to any new start-up, as it helps keep you moving in the right direction.  However, a business plan is often a work-in-progress and will likely evolve over time. 

7. Create a Brand Identify for Your Invention and Get it Trademarked. 

A strong brand name or logo can help you establish a unique presence in the market.  For many companies, their brand name or logo is one of their most valuable assets (e.g. Rolls Royce ®).   You should have a professional trademark search done on your brand name or logo to help you avoid infringing an existing trademark and help determine the likelihood of successful registration of your mark with the U.S. Trademark Office.

8. Research Your Field.

If your invention or technology falls into a specific industry, such as the medical field, you should learn as much as you can about the people and organizations who would need or want your invention.  For medical equipment, the National Institute of Health is a great resource.  Libraries can also be a great source of information about an industry and companies in that industry.  Studying about problems facing people or companies in the field can also help you discover other applications for your invention. 

Make sure you also find out about any regulatory and licensing requirements that apply to your product (e.g. FDA requirements).  Applications to one or more regulatory or governmental bodies may have to be submitted before selling your product. 

9. Feasibility Studies.

A feasibility study helps you assess whether your development plan can be accomplished within budget.  This may involve talking to engineers, mold makers, industrial designers and prototype developers to determine what can be made within the scope of the patent or patent application and the costs involved.  In some cases a manufacturer may have all of these resources available to you – i.e. a one stop shop.   

10. Build a Prototype.

Building a good prototype is often crucial step in development because there are cost implications if changes have to be made after molds are created.  You should consult with the mold maker and/or manufacturer before committing to a final prototype, as it may help you reduce costs by making a cheaper, better mold from the prototype.     

Once the molds are made, they are sent to production/manufacturers. 

The type of material used for your invention can also affect your costs (e.g. light vs. heavier plastics).  Such considerations should also be included in your feasibility study (see step 9). 

11. Find a Manufacturer.

Choosing the right manufacturer is obviously very important.  Ideally, you want to find a manufacturer who can produce the right sized lots for you at the right price.  You may also want to develop some demand for your invention (see step 12) before you start to produce it.  That way you will have a better idea of how many items to produce and know that there are customers ready to purchase the items.  One idea is to offer customers a discount for placing order before the product is produced.  However, you should make sure your manufacturing plant is set up before starting to market. 

12. Marketing Plan.

A strong marketing plan should be a part of any business plan.  This may include sending your product to companies for evaluation and finding the right person at the company to send the invention to for evaluation.  Local business centers, trade shows and trade organizations in the field of your invention can help you network with people and identify the right person to talk to about your invention. 

Presentation is always a very important aspect of marketing.  You should make sure that your product has attractive packaging and is presented in a most appealing manner (e.g. consider creating a media kit for your product). 

Advertise your product in relevant catalogs, magazines and trade publications.  This may be a cost-effective way to advertise to the people most likely to purchase your product.

Tip1:  In many cases, companies are reluctant to buy a product unless the inventor is in direct competition with them.  You may therefore need to work with smaller retail outlets and suppliers initially (see step 14) and compete with the bigger companies before approaching them with your product. 

Tip2:  Make sure you include the name and contact information of your patent attorney on letters mailed to prospective buyers, manufacturers and distributors in case they have questions.

13. Get a Distributor.

A distributor is a company that specializes in distributing or selling other companies’ products.  Getting a distributor interested in your product is not easy, but if you have connections in the industry they might recommend you to a distributor with whom they do business.  A personal recommendation could be the key to getting a distributor interested in your product. 

A big distributor may then recommend your product to larger manufacturers in your industry. 

14. Retail Outlets and Smaller Suppliers.

As part of your marketing plan, you can also seek out retail outlets that may be interested in carrying your product.  Also, don’t overlook smaller suppliers in the industry who supply to other companies. 

Once your supply is in place, you can present your product to all of the different types of potential buyers who may be interested in your product (e.g. send out your media kit!). 

15. Licensing Agreements.

Whenever you deal with manufacturers, distributors, suppliers or retailers make sure you consult with your attorney about entering into licensing agreements.  A licensing agreement is a legal instrument that helps you control the manufacture, sale and use of your invention. 

16. Be Alert for Scams.

At every step of the way you should always be alert for potential scams.  Unfortunately, there are many disreputable companies that prey on inventors.  Many of these companies try to convince inventors that they don’t need a patent attorney or agent, and instead should just try to market their invention before they apply for a patent.  

This is one of the greatest mistakes an inventor can make because an inventor can lose his/her patent rights forever by following such advice. 

Unlike these invention promotion companies, a patent attorney or agent is regulated by the United States Patent and Trademark Office.  Furthermore, a patent attorney is ethically bound to work in the best interests of his client.  An inventor should therefore follow the advice of United States Patent and Trademark Office, which recommends working with a registered patent attorney or agent. 

For a list of complaints against invention promotion companies see the following page at the U.S. Patent Office website:
http://www.uspto.gov/web/offices/com/iip/complaints.htm

To check if someone is a registered patent attorneys or agent in good standing, please go to the United States Patent Office website at:  https://oedci.uspto.gov/OEDCI/

Summary

Having a great product that is easy to sell is obviously a critical factor in determining ultimate success.   You may therefore want to invest in a professional marketing analysis by a reputable company to help determine its market potential.  The other important point is that you should be excited about your invention and believe in it.  Personal enthusiasm is one of the first signs anyone will look for when you present your invention.  

Good luck with your creation.  We hope it will make the world a better place!

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Top 10 Mistakes Made by Inventors

1.   Disclosing your invention to a non-Patent Attorney before filing a Patent Application.

Not only can this result in someone trying to steal your idea, it can also damage or destroy your patent rights.   Your foreign patent rights are destroyed if you disclose or offer your invention for sale prior to filing a patent application.    In the U.S. you have 12 months to file a patent application from the date you disclose or offer your invention for sale.  

2.   Trying to prepare and file a patent application yourself.  

Patent application drafting is a skill developed over many years.   Even novice attorneys have difficulty mastering the art of Claim drafting.   If you elect to draft your own patent application you will likely waste hundreds of dollars and be terribly frustrated.   Filing a patent application and engaging in patent prosecution is a legal process that requires an experienced professional.   Otherwise you will be groping in the dark and will probably get little or no real patent protection for your efforts.   

3.   Neglecting to do a professional search before filing a formal Non-provisional Patent Application.  

Many inventors view the search as a mere formality before filing a patent application.   In reality, a search is very important in discovering what has been patented in the field of your invention.   That way, you can make an informed decision about whether to proceed with a patent application.   A search is also invaluable in helping the Patent Attorney draft your claims in such a way as to avoid the closest invention(s) to your own.  

A search should be performed by a professional searcher who is familiar with the Patent Office Classification System and who can consult with Patent Examiners regarding the appropriate sub-class to search.  

4.   Retaining an Invention Marketing Firm without researching the company.  

We strongly recommend checking out any Invention Marketing Firm with the Better Business Bureau and the U.S. Patent Office.   You can see a list of Invention Marketing Firms who have been the subject of complaints on the U.S. Patent Office web site at:  

5.   Assigning your rights to a third party without consulting a Patent Attorney who represents only your interests.

Some inventors have been known to actually give away their patent rights to a charlatan in exchange for their services.   We recommend that you not sign any documents concerning your patent rights until you have consulted with your own Patent Attorney.

6.    Failing to have a Confidentiality and Nondisclosure Agreement in effect prior to disclosing your invention.

Even after you file a Patent Application, it is a good idea to use Confidentiality and Nondisclosure Agreements whenever you disclose your invention, until a Patent actually issues.  

7.   Failing to include an assignment of future intellectual property rights provision in a Nondisclosure Agreement.

If you plan to collaborate with someone else to develop or manufacture your invention, make sure a Patent Attorney is consulted to avoid losing rights to improvements or changes to your invention.  

8.   Failing to disclose all of your invention information to your Patent Attorney or Agent before they begin working on your Patent Application.

Patent Attorneys and Agents are governed by strict rules of ethics that require them to keep any information received from an inventor strictly confidential.   In addition, Patent Attorneys are governed by Attorney-Client privilege and are not permitted to disclose your information to any third parties without your permission.

In light of these safeguards, an inventor should feel that their information is secure in the hands of their Patent Attorney or Agent.   In addition, the inventor should make sure that his or her Patent Attorney/Agent has all of the disclosure for the invention before beginning to work on the Patent Application.   The Patent Office will not permit additions of new matter once your Patent Application has been filed.   It is therefore very important to make sure your invention is fully described in the originally filed Patent Application.   Full disclosure up front may also save you money since most Patent Attorneys will charge a substantial fee for making significant changes to your Patent Application after it has been written.

9.   Putting off getting patent protection for an invention you genuinely believe has value.

Inventors are sometimes intimidated by the patent application process, or deterred by the cost of obtaining a patent.   As a result, they take no action to protect their intellectual property.   The opportunity costs of failing to take action often substantially outweigh the cost of pursuing patent protection.   The longer an inventor waits, the more likely it is that someone else or some company will file a patent application on their idea. Therefore, it is critical for an inventor to consider all available options before deciding to delay seeking patent protection.

Some options to consider are:

(1)   Provisional Patent Application - this is a much less expensive option that allows an inventor to secure a priority filing date and "patent pending status."   The provisional patent application however is only good for 12 months.   A formal Non-provisional Patent Application must be filed within the 12 month period to keep your priority filing date.

(2)   Patent Office Document Disclosure Program - this allows you to send your invention information to the Patent Office for the purpose of establishing some proof of conception of your invention.   If you are ever involved in a dispute with another inventor over how invented first, you may present your Document Disclosure date as evidence.  

(3) We offer flexible pricing plans that allow you to pay 50% of the cost of filing a formal Non-provisional Patent Application when the work is started, and the balance when the Application is mailed to you.

10.   Not believing in the potential of your invention.  

Inventors often get discouraged by what other people tell them about their invention.   In fact, some of the silliest sounding inventions have gone on to become enormously successful.   If you have a vision and are persistent in taking the necessary steps to protect your idea, you may find that your intellectual property is worth much more than you anticipated.

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Why should I get a patent?


A patent gives the patent owner the right to control who makes, uses or sells the invention claimed in the patent for a period of 20 years from the patent application filing date.

Here are some real life examples of how valuable a patent can be:

Example 1 – A Patent Can Help Attract Investors

A small company, located outside the U.S., developed a simple plastic chemical product, which had novel properties and would clearly be patentable. However, they could not afford to make or market the product without additional investors. By filing a U.S. patent application, investors were attracted by the likely prospects of patent protection, and with this financing the product became an immediate commercial success.

Example 2 – A Patent Application May Keep Competitors Away, Even if the Products Involved are not Patentable

Another company wished to sell a very profitable pharmaceutical product (an over-the-counter type of medication) already having a generic formula and trade name, and which was the same as several other competing products. It was therefore recommended that they provide an unusual package for the product, which itself might be patentable, and then filing a design patent application only on the package itself, as well as a copyright application for the designs and words on the package. They were then successful with the product, and their competitors could not share in this success because they could not copy the packaging.

Example 3 – A Trademark May Help Protect an Unpatentable Product

A woman wished to market a very old type of child's toy. However, such old and well known products are not eligible for any type of patent protection. I suggested that she think of an interesting, imaginative name for the toy, and then file a trademark application (total cost less than $2000). The product immediately became a major success due to its imaginative name. Even though the product could be easily imitated, she had no competitors because they could not use the product's name, since actual trademark rights had arisen.

Example 4 – A Patent Can Be Licensed for Profit

A large foreign company ABC filed a U.S. patent application seeking protection on a chemical product used in an automotive component. Their product was successful and profitable. A large U.S. automotive manufacturer had also filed for patent protection on a similar chemical product, and this threatened a lawsuit between the two companies. The loser of such a lawsuit could be forced to pay extensive damages, and such damages are often in the millions of dollars. To avoid the prospect of litigation, a payment was made to the company owning the earlier-filed patent application in order to obtain a license for rights to make and use the product, thereby avoiding a lawsuit.

Example 5 – A Patent Can Support A Lawsuit for Infringement

A small company ABC obtained a patent on an electronic consumer product. Later, many large manufacturers used similar ideas in their consumer products. The ABC company then consulted a patent llitigation attorney. Patent litigation ordinarily is expensive, ranging anywhere from several hundred thousand dollars to many tens of millions of dollars, and the small company could not pay for this. However,the patent litigator agreed to conduct the litigation on a contingency basis (that is, a percentage of the money received if successful). The patent litigator then proceeded to demand license fees from dozens of companies. After some negotiations, many paid a license fee immediately to avoid litigation, while a few defended the patent lawsuits. As a result, the small company received large amounts of money from its patent very quickly, even though they could not initially afford to conduct the patent litigation.

Example 6 – A "Patent Pending" Designation May Frighten Away Competitors, Even if it Does Not Result in an Issued Patent

A company located within the U.S. wished to sell a novel clothing product in the U.S. However, their main competitor often copied their products and, being larger and more powerful, was able to cause this company to suffer low profits on their entire product line. This company nonetheless decided to proceed with a patent application, even though they knew it was questionable whether the product would be deemed patentable by the U.S. Patent Office. As a result, they filed a patent application, as this would permit them to use the designation "patent pending" on the clothing product, even though this designation does not provide any actual legal protection (only an issued patent provides legal protection). As often happens, in view of the designation "patent pending", their competitor was afraid to copy the product, and the company immediately enjoyed greatly improved prospects. The competitor feared that if a patent did issue, they would be forced to stop making and selling the product, and so did not wish to risk a costly initial investment in manufacturing and marketing.

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