A patent is a grant of property right by the Government to the inventor "to exclude others from making, using or selling the Invention."
Utility Patents: Are granted to anyone who invents or discovers any new useful process, machine, manufacture, or composition of matter.
Design Patents: Are granted to any person who has invented a new, original and ornamental design for an article of manufacture. It is the appearance that is protected.
- e.g. process - cracking petroleum into its fractions
- manufacture - umbrella, pen
- machine - carburetor, bicycle
- composition of matter - alloys, drugs
Plant Patents: Are granted to any person who has invented a new asexually reproduced plant.
- e.g. radio cabinet, tea pot, tire tread
Successful inventions involve commercialization. Many libraries have books on patenting, marketing, licensing, developing business plans, etc. Read as much as you can -- this can save you time and disappointment. Think as dispassionately as possible about each issue raised .
Remember a good money making product does not necessarily have to be patentable--many successful products are the result of good marketing, manufacturing, and packaging. Some examples are:
- the computer game Mortal Combat ®
- Liquid Paper ®
- Vaseline Brand Lip Therapy ®
- Crest Tartar Control Toothpaste ®
Step 1: Idea
- Does your idea solve a specific problem or serve a specific need?
- Could you get a patent? (Is your idea new, novel and unobvious?)
- Would your solution sell ? (Ask yourself this at every step of the way.)
- Can your solution be economically manufactured? (Ask this at every step.)
Step 2: Patent Search
** Note searching can be a time-consuming and difficult process. The average time spent per search is 25-35 hours.
- Will you do the preliminary search yourself or will you hire an attorney to find out what patents already exist?
- If you plan to do the search yourself, go to your local Patent Depository Library. In Texas, there are five Patent Depository Libraries:
- Austin - McKinney Engineering at UT- Austin
- College Station - Sterling Library at Texas A & M
- Dallas - Dallas Public Library
- Houston - Fondren Library at Rice University
- Lubbock - Texas Tech University
- To whom would you sell your product?
- Who would license your invention?
Step 3: Patent Application
- A common misconception is that a patent application is a form like an employment application. It is not. A patent application consists of a detailed technical description, drawings, and claims. See an attorney or book, such as David Pressman's Patent It Yourself, for more information.
- Who will buy this product?
- Can this product be manufactured economically?
- If you know the answer to these last two questions, send in your application and immediately go to next step.
Step 4: Commercialization means---Marketing/Licensing
- There are three basic ways to profit from a granted patent:
- Sell your rights for a one-time payment to another.
- License your patent to another in return for periodic royalty payments.
- Acquire necessary capital and commercialize the product yourself.
- Therefore you need to prepare a business plan. Some things to think about:
- Will you use mail order?
- Will you use direct sales,
hire a marketing firm,
use direct mail or calls to solicit?
- Will you prepare your own sales presentation?
- Will you need prototypes
- Who will (or how will you) manufacture your invention?
- How will you find capital?
- How will you find potential buyers?
- Prepare a strategy:
- Determine what companies are in your product's area.
- Find out how to contact them AND what they need to know.
- Look at professional presentation and correspondence samples in a book.
- Pick good names for your product and your business.
- Check for trademarks in any Patent Depository Library.
- Check your county clerk's office for business names.
- Keep good records.
- What was the name of the company and their contact person?
- When did you contact them and what was said?
- What information was sent?
- Have any agreements prepared or checked by an attorney before you sign.
If you decide to use the services of an Invention Promotion firm to assist with the patenting and commercialization of your invention, the Federal Trade Commission provides some Facts for Consumers.
The National Inventor Fraud Center provides information on companies, groups and web sites have been recognized to be useful for inventors at http://www.inventorfraud.com/goodguys.htm.
(with many thanks to David Pressmans Patent It Yourself)*
Even the cleverest invention has no guarantee of market success; even the dullest invention can be patented. The inventor who wants more than the sheer satisfaction of having invented or of having been issued a patent must work to develop the invention -- a process better described as an art than as a science. The sources and suggestions below are intended to help inventors start working toward success in the marketplace:Should I pursue this at all?
This is a hard question to answer but David Pressmans Patent it Yourself (Nolo Press, 9th edition, 2002 and frequently revised) can help. The book is a great aid to the independent inventor and chapter 4, Will Your Invention Sell?, takes an inventor through a series of questions to evaluate the usefulness of an invention and the implied possibility (or lack of it) for marketing success. For a fee you can arrange for an objective evaluation of an invention. The United Inventors Associations (UIA) Innovation Assessment Program is a fee-based service providing evaluation of inventions. The UIA uses the services of the Innovation Institute which can also be contacted directly. Another independent evaluation service is the Wisconsin Innovation Service Center .
Be prepared to spend money.
Legal, travel, and other expenses will be upon you even before you can seriously pursue investors. Legal expenses include filing fees (incorporation and patent, for example), so even if you think you can proceed without an attorney, there will be bills. Lost work time and business trips also have a cost. If you honestly have no money to spend on the development effort, you are most likely out of luck.
Invention Promotion Companies.
Do not spend your money or waste your time with these firms.
Please Read: Facts for Consumers, Invention Promotion Companies from the Federal Trade Commission.
Some people have the mistaken idea that receiving patent protection is like being given a blank check. It is more like buying an insurance policy. In case your invention turns out to be valuable, your patent gives you the right to sue infringers. Plan to have a patent application underway before you talk with potential investors or others. You will want to have protection and, according to David Pressman, company representatives will want you to have protection. Besides the Pressman book noted above, see the U.S. Patent and Office Trademark Offices (USPTO) web site for information about how to proceed and be sure to note the USPTOs Independent Inventors Resources pages.
Legally Establish Your Business.
Have your business affairs in order, with your business legally established, so that you are ready to negotiate contracts. Incorporation and establishment of a limited partnership are handled at the state level. In Texas, the office of the Secretary of State handles this process. (They can be reached by phone at (512) 463-5555.) Travis County DBA (doing business as) filing information is available online or call (512)854-9020 to reach this office by telephone. Partnerships - even if the arrangement is not for a limited partnership - still need legal establishment between (or among) the partners.
The Small Business Administration (SBA) provides guidance in its web pages for starting a business. Likewise, the Texas state agency, Texas Economic Development provides advice and links to help in starting a business. See the Guide to Starting a Business page.
We have no definitive advice on finding investors; options and solutions vary with the inventor, the field of invention, and good luck or lack of it. HowStuffWorks explains commonly-used financing options and how to pursue them. Unless you easily can provide financing out of personal resources, the money used to develop your product will come with a price. The price may be a crimp in your lifestyle or a percentage of your business.
If venture capital or a business angel turns out to be the source of choice, HowStuffWorks advises using all personal and business contacts to find and connect with the investors. Venture Capital is a Yellow Pages heading, so sources are not necessarily difficult to identify, but the inventor will still have the job of persuading the angel or the venture capital agent that the investment will be a good one. Venture capital incubators additionally provide business advice and a physical place for operations to begin. See the web pages of the National Business Incubation Association.
Banks and other lending institutions may be a source of money for new businesses. Expect that collateral or some other loan guarantee will be required.
Many books have been written to help those trying to make a small business successful. In the University of Texas at Austin library catalog, an SK (Subject Keyword) search using small business finance yields many matches relating to the financing issue. Limiting to Recent Years makes a more manageable set.
For a fee of $25.00 (verify the amount for Publication in Official Gazette in the Patent Service Fee section of the USPTO Fee Schedule), the USPTO offers the service of printing a notice in the Official Gazette indicating that a patent is available for licensing or sale. Contact the Office of Patent Publication at 703-305-8283. The Patent Office does not offer financial assistance for developing a patent (remember that the inventor is the one paying out) and Patent Office staff do not offer advice on how to make money from a patent.
While some inventors believe that all they have to do is invent and a major company in the field will be waiting to pay all the expenses of patenting and product development, David Pressman warns against counting on this possibility. Large companies have their own development departments and, besides a reluctance to take on outside inventions, will (as noted above) want the inventor to have applied for patent protection and have formed a legal business entity.
Finding Manufacturers and Distributors.
In his Patent It Yourself chapter 11, How to Market Your Invention, David Pressman recommends to independent inventors that they find and work directly with a manufacturer and distributor. He additionally recommends that the ideal is to find a company close to your location, not too large, and experienced with the kind of product you have. Pressman suggests first thinking of your own network of acquaintances for leads to qualified companies and then, if necessary, looking at the packaging of related products to see who is making them. Company directories (such as the Thomas Register and D&B million dollar directory : America's leading public & private companies) can also be helpful. Chambers of commerce have local information which may be particularly helpful.
A knight in shining armor is unlikely to appear by your side to help you take your invention to a marketable product and then on to a profitable enterprise. It will most likely be up to you and to your hard work. The U.S. Patent and Trademark Office requires money from you, rather than the other way around. Established firms prefer that new products originate from within the organization. Those with money to invest will require a benefit for themselves or for their organization and will require convincing that you and your invention are worth an investment. Most advisors agree that YOU will have to be determined and willing to work hard on behalf of your invention. The quest is possible but is not likely to be easy.
*The most recent edition of Patent it Yourself can be found on the reference shelves of the Engineering Library. The call number is KF 3114.6 P74 2002.
Subject of invention searching is used to determine if a specific invention has been previously patented. This type of search is done because patents are granted for new, novel, and unobvious inventions. Without doing such a search you might waste time and money applying for a patent, when one has already been granted. Application fees are non refundable. Patents are issued on how the claimed invention works, not on its application or use. Issued patents are classified into a searchable subject hierarchy. These classes are then used to determine if an invention has been previously patented. Searching is more efficient and less frustrating if you read the following first:
Patent It Yourself, by David Pressman, read Chapters 1, 5, and 6.
An Introduction to U.S. Patent Searching, by Susan Ardis, Chapters 5, 6, and 13.
The rules for what can be patented are quite rigid, for example, an invention must be new, novel, and original. Generally, simply substituting one ingredient or element for another is not patentable; neither is changing the size nor is using an old technology or invention to produce new results. U.S. patents are granted on specific devices, processes, composition of matter, or products of manufacture. Patents are not granted on ideas--to get a U.S. patent there must be a reduction to practice.
Patent Search Tools, listed in order of use:
Index to the Manual of Classification
Manual of Classification
Patent Database such as CASSIS*, Lexpat, Derwent, Claims, etc.
*CASSIS is available in any Patent and Trademark Depository Library for free. The others are available in many libraries for a charge.
Step 1: List all essential parts of the invention
how it works, e.g. how does a zipper work?
steps involved in the process
Please remember that a mechanical or electrical patent is granted on how the invention works, not its application or use. Composition of matter patents (e.g. drugs, alloys, or plastics) consist of inventions where there is a chemical change among the ingredients. Also remember that patents are granted on the claimed invention, not the description.
Step 2: Use Tools in the order listed
Index to the Manual of Classification
Manual of Classification
Step 3: Use computer database to get a list of patents in selected class/subclass
Step 4: Check patents in the Official Gazette
if any are similar to your invention--then check the complete patent.
if none are close--then rethink and return to STEP 1.
Step 5: Check the complete patent of "good ones"
check for first classification of these good ones and THEN search that class/subclass too.
Step 6: Evaluate results.
Most people need to return to STEP 1.
It is not unusual to have to repeat this process many times for the various aspects of the invention.
The following is a list of the tools for performing a preliminary patentability search for an invention. The tools are given in the order in which they are to be used, along with brief information on how to use them and on their role in the search process. All sources can be found at the Patent Office web site (http://www.uspto.gov). To maneuver from the USPTO home page, select “Patents” on the left side of the page and then, from the list, select “Search.” On the search page, look for “Tools to Help in Searching by Patent Classification.” The Manual of Patent Classification and the U.S. Patent Classification (USPC) Index are both there. A search starts with the Index and web links lead a searcher through the steps, excepting the extra step of searching patent applications. http://www.uspto.gov/patft/index.html goes directly to the “Patent Full-Text and Full-Page Image Databases” page for accessing the “Tools” link, the database of issued patents, and the database of patent applications.
For a web-based tutorial to help in understanding the steps and using the tools, see:
1. Index to the U.S. Patent Classification System.
The Index provides alphabetical indexing to the Manual of Patent Classification . Look up terms that describe an invention, and use the matching class and subclass numbers to go to the more detailed information in the Manual . (We prefer to use a “Ctrl-F” command to find a word the page or to look down the alphabetic list, but it is possible to search for a term in the “Search For” box found at http://www.uspto.gov/web/patents/classification.) Click on the class number -- the first of the two numbers that compose a classification -- to go to the main heading for the class. Click on the subclass number -- the second of the two numbers -- to go to the correct entry within the listing of subclasses.
2. Manual of Classification/Manual of Patent Classification
This is the authoritative source for subject classifications used by the U.S. Patent Office and is arranged by class number. Use class and subclass numbers found in the Manual to locate and investigate sections of likely interest. In order to understand the context, browse the class schedule, paying attention to the dot-indent structure of the sections of greatest interest. Revise the search strategy as needed. Click on the subclass number to go to the Classification Definitions for that specific classification (class/subclass pair). Scan up the page to see the introductory information for the class (or, at the top of the Manual page, clicking on the “ Class #” link takes a searcher to the introductory information for the class). Click on “P” to request a current-classification search for the particular classification.
3. Classification Definitions
The Definitions provide additional information, including search notes, to help in understanding the Manual of Classification and its structure. Clicking on a subclass number takes a searcher to the Manual. Clicking on “P” requests a current-classification search for the classification.
4. Searchable Databases.
There are two “USPTO Web Patent Databases”: Issued Patents and Patent Applications . The Issued file contains images of all granted US patents from the current week back to 1790. TIFF software for viewing the images is offered on this page: http://www.uspto.gov/patft/help/images.htm . Full-text versions are offered starting with 1976. Back through 1976, the Issued file provides indexing of a variety of fields; prior to 1976 only “Current U.S. Class” and patent-number indexing are provided reliably. The Applications file allows searching in a variety of fields, including current classification, but subject indexing must be considered preliminary. For both databases the “Quick Search” option uses a pull-down menu for search-field selection; the “Advanced Search” interface requires constructing the search statement, with a list of options provided
Issued Patents . Use initially to help determine if a search is on the right track. Search “ Issued Patents ” by classification (“Current US Classification” is the field) to obtain the list of patents currently assigned to a particular subject group. Keyword searching in this file may help in exploring patent records but should not be viewed as a substitute for classification searching. Ultimately provides the list of granted patents to be investigated and allows viewing of all text and drawings for comparison with the features of the invention being searched.
Published Applications . Search by “Current US Classification” but remember that indexing work is not complete. Keyword and other searching may be helpful.