As President of a local inventors group I can’t tell you how many inventors I meet who have spent big bucks to procure a patent but never built a prototype. So they have no idea if the invention really works. Others who have a garage full of product, just collecting dust because they never tested the market before hand. However, most successful inventors and product development companies that I know, start off with a Proof of Concept Analysis BEFORE they start spending money. So if they do it, why not you?
A full Proof of Concept Analysis consists of three equally important parts: Business Analysis, Ownership Analysis and Product Analysis. These steps should be developed simultaneously or at least completed before moving on to development or you WILL certainly regret it later. I usually start with the one that I consider to be the weakest link in the chain. For example, if I think ownership might be an issue I will do a pretty strong patent, product and industry search especially if I think I have seen something similar.
After you savor that wonderful “Moment of Discovery” and you have finished daydreaming about striking it rich, you really do need to move forward to take a cold hard honest look at your new product. At this point you don’t have to go into excruciating detail, just a quick overview to make sure it is worth pursuing. The questions generated will form the basis of your development process.
Let’s take a look at each part individually.
Here you want to identify the market and get a rough idea of its’ size. This can be done using statistics found in trade magazines and websites, the Census, the Bureau of Labor Statistics or by comparing a similar or competitive product.
I once was developing a tool for use with PVC for electricians. I looked up the category on www.bls.gov. There are 579,150. That sounds pretty good until you derate it by all the electricians in the category who do not work with PVC on a regular basis and you come up with maybe 50,000 to 75,000.
Now derate that by the attitude of the average field tech. What I mean is those that will think like this: “What’s wrong with the way that I’ve been doing this for years?” Now you are lucky to have a market of 10,000 and a likely sustainable market, which is made up of new people needing your product after the initial surge, of under 1,000. Do you wonder why that lovely prototype that I built is collecting dust on the self? No sense wasting time on an invention without a reasonable market. Move on.
In addition to market size, under any business analysis you should consider basic cost and price point, which can be derived by comparison. For example a motorized sheet metal cutter could be guesstimated by adding the cost of a manual cutter and a drill with a motor approximately the size you would need. A pool toy may have several parts of similar complexity and made from the same foam material as those inexpensive ice chests and bottle holders. Simply add them up with a factor for assembly and you’ve got your retail price point. Now, do you think that is in the price range of your potential customer? If so, your good to go! If not that should inform you about what to do.
Retail to retail pricing can give you an idea of possible price point. To get an idea of investment cost, do a reverse calculation based on the “rules of three.” This is where you need to make three times the basic cost to produce the item to cover your overhead (of one third) and leave you a profit (of one third). The store will need to sell it for three times the amount of cost to cover their overhead and make a profit.
So if your price point is around twenty dollars, you can guesstimate it will cost you around five dollars of investment per unit to get it to the store ($2.25 for production and $2.50 for overhead). Multiply that by the minimum order, do you have or can you generate that type of investment? Is $2.50 per unit a good enough profit for the effort?
No business analysis can be complete without getting an understanding of the industry and how it works. Who are the players? Can you penetrate the market or is licensing the only option with little or no opportunity due to the “Not Invented Here Syndrome”? This information you can get from trade/industry magazines and websites as well as the first page of related patents. You can also get information like this, in some cases, from inventors at your local inventors group who may have experiences to share.
When researching here you will need to do a preliminary Patent, Product and Industry Search to determine how much you could conceivably own and how important it will be to your products success. IPWatchdog has some fantastic articles on searching regarding patents and PAIR. See Patent Searching 101 and Patent Searching 102: Using Public PAIR. However, you will also need to look in the stores, catalogs and on the web for non-patented competitive products. Don’t forget to look at company/manufacturers catalogs and websites to find products that may not have a patent and may have failed miserably in the market and therefore will not be found for sale. They still count!
I, personally, came up with a fantastic idea for a product that I planned to enter in the Staples Product Hunt one year. I realize a significant problem before I even completed the first prototype. As I was playing with the idea trying to overcome the issue. I decided to do a product search. I was dumbfounded when I was holding my prototype in one hand and looking at it on the Avery Online Catalog. It was exact!!! Obviously, a good idea because Avery already considered it. Now if only I can overcome the reason it is not on Staples shelves, I could have a winner! Another one for my shelf.
In researching your strategy should also consider the cost of litigation as required by your industry. If you are planning to enter a very litigious industry and you don’t have the resources to compete, you will be giving your invention away to the first challenger.
“Product Is King.” This phase is credited to Ron “Ronco” Popeal, who was made famous by the Veg-O-Matic (it slices, it dices…), the Pocket Fisherman and was one of the founding fathers of direct response TV. He feels the reason for his success over his competition is his use of a system similar to what I am describing here while others just “…throw a lot of stuff against the wall and hope it sticks.”
I don’t care what some of the books say, you NEED a working prototype! At first a Frankenstein model made from parts you find lying around or easily purchased just to prove it works will do. Followed by something fairly close so you can live with it. Work with the prototype and find the flaws. That is how you will discover all kinds of useful information.
One of my first inventions, that I DIDN’T make, started with a product I had thought about for years. I knew exactly how it would work. As I was building the “virtual prototype” I needed some measurements to make it perfect but in retrieving those measurements some of the parts I thought would work were looking kind of iffy. So I decided to build a prototype just for the heck of it. I didn’t even finish cutting the first piece of wood when I realized a major flaw. In less then a minute the entire design changed and I was on the road to riches again.
I started to use my invention on the job whenever I could without making a public disclosure and began to see certain flaws, which I would overcome, one by one. This IS why they call it “Product Development.”
One day, I was up on the third floor of a building and there arose the perfect opportunity to test my product for the work it was intended. However, remember it was the THIRD floor and my truck was way on the other end of the parking lot so I thought, “The heck with it.” No sooner did that thought cross my mind that I realized, if I am not willing to go that extra step to use my own product nobody else will either. And so another dust collector was born and is still sitting on my shelf.
But what if I submitted the product anyway? If I submitted the item prematurely to an industry giant, it may have sparked a “Wonderful Moment of Discovery” for the Company. With their vast resources of experience, talent and wealth, I am sure the New and Improved Model would be on the market without me. At least, this way, I can still toy with new embodiments as I am so inspired. Who knows, maybe someday I’ll come up with something that will make it more appealing.
You may have guessed by now, I have a pretty big shelf full of dust collectors but I still have my money in my wallet. Every one of them seemed like a winner, at least at one point. Every one of them may still have that potential, who knows? However, every one of them has some significant flaw that was discovered in the Proof of Concept Analysis.
As Kenny Rodgers once sang, “You got to know when to hold ‘um…Know when to fold ‘um…” Using this method, as long as you are honest in your analysis, you can better allocate your hard earned resources to a winner or run away to come back with a better product another day.
Join the Discussion
30 comments so far.
patent litigationSeptember 6, 2010 04:35 pm
As stated by GQ, it is the inventor who must make a determination as to whether and when to file a patent application. However, in making that decision, it is always preferable for a fledgling innovator to consult a qualified patent law professional, preferably early in the process, rather than attempting to go it alone.
Blind DogmaSeptember 5, 2010 10:07 pm
“Clear your mind must be, if you are to discover the real villains behind this plot.”
Gene QuinnSeptember 5, 2010 11:06 am
You say: “Anakin, you have changed.”
Can’t you hear the ominous Darth Vader music in the background? I feel a disturbance that I have not felt since…
Blind DogmaSeptember 5, 2010 10:42 am
“You are condescending, arrogant and always incorrect.”
Anakin, you have changed.
David KoepsellSeptember 4, 2010 03:43 pm
Wow, Gene. I realy feel sorry for you. I honestly wish the best for you, and hope you’ll overcome this bitterness.
The Mad HatterSeptember 4, 2010 12:58 pm
We all are. We are alive [GRIN].
The question is whether we are willing to listen and learn, or just to fight. One enriches our life experience, the other damages our life experience.
There is nothing wrong with having an agenda. It’s what you do with it that matters.
Gene QuinnSeptember 4, 2010 12:38 pm
You are condescending, arrogant and always incorrect. I once thought you were just someone with a different perspective. You are agenda driven, defend charlatans and are not at all respectable in my opinion I won’t waste any more time on you or your nonsense.
Blind DogmaSeptember 4, 2010 10:03 am
“Insults fly from your mouth like froth.”
– “Nick’s give-and-take with Gene illustrate part of the problem with the US legal system in general. There are simply too many hungry lawyers ” – direct inference that Gene epitomizes the hungry lawyer and all that is wrong.
– “You are surmising that he lied, and possibly slandering him” and
– “then your slurs” – you have jumped from possible slander to downright conviction of slurs in back to back posts. – Gene’s reply defeats this – but he had to reply since you brought up the subject
David, “the ill will” flows easily when you are lazy in your posts and act all high and mighty when Gene throws back at you. It is not surprising to see your sloppy writing as most all of your contributions to these threads have been sloppy and driven by your agenda. By the way, that first glass of Kool AId was gratis, but I have a tab for the pitchers you ordered.
David KoepsellSeptember 4, 2010 04:49 am
wow, Gene. You’re in an ill mood these days.
Insults fly from your mouth like froth.
show me one instance where I have acted toward you as you act toward me. Just one. I’ve always been civil with you, and the above was just by way of warning given the UK’s libel/slander laws.
step backSeptember 3, 2010 03:29 pm
I’m with you.
One size fits all advice is plain wrong.
There are some inventions where it is wisest to file first and ask questions later.
And yes there are some inventions where it may be wiser to do some proof of concept work before blowing all your money on an ill advised patent application.
Also, righteousness by title (e.g. I’m a glorified patent attorney and that’s why what I say is unassailable) is an illogical rhetorical trick. Appeal to Authority never converts a wrong into a right. In this case, no matter what Mr. White’s title and intents are, his absolutist’s advice was not sound or logical.
(Sith Lords always speak in absolutes 😉 )
Gene QuinnSeptember 3, 2010 02:29 pm
My slurs ill advised? I really don’t care who he is, the advise he gave was wrong. He complained about the charlatans in the business and then proceeded to give erroneous one-size-fits-all advice. That doesn’t seem like someone who is at all a serious professional.
I have gone through what he has said and explained why why he said was incorrect and unbelievable. If he is indeed a patent attorney he ought to know the importance of being clear, particularly in written communication, and the way he started this was sloppy and didn’t convey meaning because it could have been interpreted multiple ways.
As for slurs, it is interesting that you always seem to think that my statement of fair and accurate representations constitute slurs. He said he was a patent attorney and advises all clients in every situation to do the patent last, then he wasn’t a US patent attorney, then he said it was naive to believe clients present on the eve of a statutory bar, then he was a patent attorney but not in the US, then he said he has lots of experience with statutory bars, which are only a US phenomenon and he is not a US patent attorney so that statement seems suspiciously self serving and potentially false.
The truth is this. If he is a patent attorney and he operates outside the US and he advised clients to file a patent application last then he cannot be considered to be a reputable professional. First, you cannot offer one-size-fits-all advise and pretend it is appropriate for all clients in all situations. Second, everywhere other than in the US the patent system is a race to the Patent Office. You must file first to obtain a patent. Even if you file first but have publicly use, disclose or sold the invention you have no right to obtain a patent. So a patent attorney that would advise clients to wait in an absolute novelty + race jurisdiction is giving bad advice. It really is that simple.
It is amazing to me how you always seem to fall in line with those who are spewing nonsense. It is like you are drawn to nonsense as if it is a light and you are a moth.
The Mad HatterSeptember 2, 2010 05:16 pm
Very nice article, which brought back some memories.
About 25 years ago I was involved in a development project, to conceptualize, design, and build a piece of machinery. I was the go to guy, who took all of the information, looked for component suppliers, and added all of the numbers up.
The idea looked great on paper. There was a definite market. The problem was the numbers. No matter how I worked it out, it was just too expensive. We spent hours and hours fighting with numbers for the major components (engine, transmission, etc.), the things we had no choice but to purchase.
In the end, we decided that no matter how much we’d like to build the machine, it wasn’t feasible, and a lot of work went down the drain. But, the company survived. If we have actually committed to building it, we probably would have been bankrupt within a year.
We never did build the first prototype. Never got that far. But we kept the company going, and all of us employed.
David KoepsellSeptember 2, 2010 11:09 am
by the way, Nick White could well be this guy: http://uk.linkedin.com/in/nickwhitetangibleip
If he is, Gene, then your slurs might be ill-advised
David KoepsellSeptember 2, 2010 11:07 am
@EG I know there are good patent attorneys out there who won’t file just anything their clients ask, and who know that as with other fields of law, turning down a client who wishes to hire you to do something is often the most ethical thing to do. But the accepted lack of quality in recent years, confirmed by recent surveys both within and outside of the PTO, indicates that too many patents are being filed. Good patent attorneys should feel justified in turning down the desires of clients to pursue low-quality patents, just as good personal injury attorneys ought to turn down clients wishing to file bad tort cases.
@Gene: Nick is apparently a patent attorney in the UK. You are surmising that he lied, and possibly slandering him in suggesting he did, given the strict slander and libel laws in the UK, I’d tread carefully.
Gene QuinnSeptember 2, 2010 10:21 am
Glad to see you go really, although I doubt you really will leave.
Allow me to point out another thing for those who might still be reading and in search of truthful information in a sea of uncertainty that is the Internet. Nick said that he has “done plenty of statutory bar work.” A statutory bar relates to 35 USC 102(b) and 35 USC 102(d). In the United States one can actually engage in public activities and sales without losing the right to apply for a patent. Hence the term “statutory bar” relates to when one has waited too long to apply for a patent in the US. In all other countries you must apply for a patent prior to engaging in public activities and sales otherwise you lose the right to obtain a patent. But now Nick tells us that he is a patent attorney in the UK. That means he does not do legal work in the United States and since statutory bars are a US phenomena it seems that once again Nick is spewing erroneous information, but to what end? What is his agenda? Who knows. I really don’t care one way or another. It is, however, critically important to understand the risks faced when one does not immediately pursue a patent application. I have written about this at:
I agree with what Leo wrote above, and Leo and I have discussed this topic many times. Inventors need to engage in business responsible behavior and that means figuring out whether the invention can work, whether there is a market for it and whether there are realistic protection possibilities. These and so many other things are critical to the decision of whether to move forward. They actually need to be continually asked and re-asked. My philosophy is to spend a little money at varies early steps and at each step continually assess and re-assess whether moving forward makes sense. It makes no sense to rush in without making appropriate inquiries. It likewise makes no sense for anyone to pretend that one-size fits all advice is appropriate or that a patent application can always wait to the end, if ever. As Leo points out, each invention is different and that is why his method for pursuing proof of concept varies and tends to focus on the weakest link in the chain first. If you do that you will save time, money and energy and be able to apply those precious resources to your next invention; and there ALWAYS will be a next invention.
Gene QuinnSeptember 2, 2010 10:10 am
You are congratulating Nick who lied about being a patent attorney, or at the very least engaged in a misleading agenda to forward his anti-patent agenda on a post intended to be read primarily by newbie inventors in the United States? Amazing how someone of your education could condone such misleading conduct to forward an agenda. Unfortunately, while amazing it is not all that surprising coming from you.
EGSeptember 2, 2010 09:07 am
“There are simply too many hungry lawyers in the US, and as in all other areas of law practiced in the US, patent lawyers too often view clients as a source of income, rather than someone with needs, rights, and other bills to pay. This is partly why there are too many lawsuits, overburdened bureaucracies, and too many patents being filed.”
I’ll grant that there are plenty of “hungry lawyers in the US” (many of which are engaged in personal injury litigation as any yellow pages will tell you) and that there are some patent lawyers (usually large firm litigators) who view “clients as a source of income, rather than someone with needs, rights, and other bills to pay” (I try not to be one of those although I do have family I need support with some source of revenue).
But your statement/suggestion that “too many patents [are] being filed” because of “hungry” patent attorneys is a huge and inaccurate overgeneralization. What is your factual basis for this statement/statement? From my experience of over 33 years, the push to file the patent comes from the inventor, not from me. In fact, patent attorneys/patent agents (at least the ones I know of) are often the ones who finally inject some “reality” into the inventor’s mind about how potentially expensive and daunting the patent process is.
Also, patent attorneys/patent agents are regulated by the USPTO. As a whole they tend to be far more reputable in their dealings with inventors than the invention promotion organizations I’m aware of who will “scam” inventors for thousands of dollars with worthless marketing reports. (I know because I’ve seen those reports from clients or prospective clients who have come to me to try to fix the “damage”). If anyone views “clients as a source of income, rather than someone with needs, rights, and other bills to pay,” it’s invention promotion organizations, not patent attorneys/patent agents (that’s been true as long as I’ve been in practice).
Blind DogmaSeptember 2, 2010 07:52 am
“and too many patents being filed”
And here I thought that patent filing was to be considered a good thing.
David KoepsellSeptember 2, 2010 06:55 am
Leo’s fine post, and Nick’s give-and-take with Gene illustrate part of the problem with the US legal system in general. There are simply too many hungry lawyers in the US, and as in all other areas of law practiced in the US, patent lawyers too often view clients as a source of income, rather than someone with needs, rights, and other bills to pay. This is partly why there are too many lawsuits, overburdened bureaucracies, and too many patents being filed. Congratulations to those attorneys who know when it is in the client’s best interests to not pay a lawyer for unnecessary work, and who turn them away because their first duty is always to the client, not their own wallets. The legal system is not there to ensure full employment for lawyers, it’s there to ensure justice. Thanks Gene for Leo’s initial post, and thanks to Nick who shows why lawyers in countries other than the US are not despised, but revered.
AnonSeptember 2, 2010 05:57 am
This is Gene’s blog, and if you did not realize how he would take your initial statement, you only compounded your error by not graciously accepting his correction.
To analogize, you have chosen to jump into Gene’s pen and wrestle in Gene’s mud. Do you think that you are going to out wrestle him?
I have noticed other UK patent attorneys who seem to think that US blogs should cater to them. Is it something in the water?
Nick WhiteSeptember 1, 2010 08:35 pm
I’m wasting your time?
I said I am not a US patent attorney. Read it. I’m a UK Chartered Patent Attorney and a European Patent Attorney but have worked with inventors all over the world. However, as an attorney I am not arrogant enough to presume that only attorneys have a valid view on IP issues.
Judge and jury? Look at your site information and terms and conditions. Who are you to be the arbiter of what is bad advice? You are no better placed than any other attorney. Try using some logical reasoned arguments in your responses. Try being constructive instead of just being abusive and patronising.
I will agree one thing the inventors are smart enough to work this one out.
You have some very good stuff on your blog Gene, but I can live without it. Au revoir.
Gene QuinnSeptember 1, 2010 06:16 pm
You are wasting our time. You first say you are a patent attorney and now you say you are not a patent attorney. Everyone reading would do well to ignore you and your thoughts on the issue, which seem uninformed.
Just for the record, I have never said those reading are not intelligent. Inventors are highly intelligent people, but not knowledgeable about patents and many times the business of inventing. That is why I don’t let anyone give bad advice on an article aimed at inventors, which is why I took you to task. Inventors are looking for information and I provide quality information here on IPWatchdog.com. Those who give bad advice are called on it, and if it continues they are banned.
Nick WhiteSeptember 1, 2010 05:06 pm
I’m not offended, but you are patronising.
I’m not a US patent attorney but I have done plenty of statutory bar work. I think you missed the point I was being ironic in part. Your response is just surreal.
This is a little bemusing. I’m not sure you and I are reading the same post or you are having a red mist day. Where have I said I am the sole decision maker…literally? I decide what I do that’s it. I also express honest opinions, which clients seek. That’s it. No fence sitting. It’s not total control. It’s not Big Brother. No Stalinist regime. Do you get the picture?
For every disposable diaper inventor there are many more who have lost a fortune on patents filed first. Do you not agree? The one successful punt does not make up for the shattered dreams of many. It’s one of the main reasons that so many inventors have such a low opinion of attorneys. Your not helping here. I presume the bird diaper inventor followed Leo’s proof of concept approach? If not what a fantastic punt! It’s like winning the lottery but way way more risky!
Look I give the vast majority of those reading these posts more credit than you in having a modicum of intelligence. They don’t need an over lawyered blog. They know where I am coming from I’m not sure where you are. My advice to you is stop digging.
Gene QuinnSeptember 1, 2010 04:23 pm
You seem offended that I pointed out that your concrete and blanket statement was incorrect. In response you talk about this being an imperfect means of communication, but it was you who went over broad and offered bad advice. All I did was point that out.
I will just point out that if you have never dealt with an inventor who is up against a statutory bar then it is impossible to believe that you have been a patent attorney for 20 years, or for even a fraction of that time. If you cannot think of circumstances in which you would advice a client to proceed immediately to patenting to preserve rights then you likely haven’t been practicing all that long or have not been working with inventors who do cutting edge research. You want to pretend that your vast experience allows you to make ridiculous generalizations, and I am calling you on it.
You complain about the patent attorneys and agents who take their clients for a ride, and that is 100% justified. What is NOT justified is providing objectively bad advice in a casual manner on a article that is intended to be read primarily by inventors. You started this by saying a patent application is the last thing to do, which is sloppy at best and the sort of one-size-fits-all legal advice that those charlatans you complain about traffic in. You prop yourself up by saying “and I’m a patent attorney” as if that means you can’t be wrong, and now you are claiming 20 years experience.
My advice to you is to choose your words carefully. If you are a patent attorney you know that means a lot. You should also stop and think about how what your saying will be interpreted by the uninitiated. Finally, you might want to also ask yourself how many inventions that could have been patented you killed by discouraging the inventor. Sure you have no complaints that way, but if you really are a patent attorney you know as well as I do that you don’t know for certain which inventions will make money. How about disposable diapers for birds? Would that make money? Well it has made well over $1 million for the inventor. So fool yourself if you want, but I am not buying what you are selling, and I suspect neither are others. The single most important part of success for an inventor is being familiar with the market and whether they have something that works and that people will pay for. If you think that you are a perfect judge of that I have news for you. Perhaps you should view representing as a team effort rather than as you playing the role of sole decision maker.
Nick WhiteSeptember 1, 2010 04:02 pm
It’s to your credit that you have Leo’s advice on your blog. But you read a lot into a few short sentences in an imperfect communication medium.
First paragraph. In the context of the article I don’t agree. Anyway I’m not advising anyone just indicating what I do or should I say the last thing I do.
Second Paragraph. Bit mixed up here. First sentence. ONE job not THE job in my opinion although many attorneys stop at this point. Second sentence. Might conclude? Only a lawyer could float that one.
Third paragraph. Give me a break. You calling me naive is a bit like the kettle and the pot scenario. Eve of statutory bar, malpractice? Don’t make me laugh.
Fourth paragraph. Sure the client ultimately decides. The question is whether or not that is with the appropriate facts and inputs. In their interests I advise not to file until they have these worked out and yes they have to convince me before I take their money. I need these inputs anyway to do the best job I can. Many attorneys don’t go there. I wonder why? When a client insists that they want an application, in the face of my advice not to proceed, I have a list of low cost patent attorneys that are only too happy to take their money for anything they want to file. I’m not. See the volumes of junk in the patent office, much of which has been drafted and filed by patent attorneys so not a “complete waste of money”….. for them.
Fifth paragraph. Another credible scenario in the context of Leo’s post? I have a list of low cost patent attorneys that are very happy to do validation work. I don’t do that sort of work; not exactly what the patent system is for. How about another credible tricky scenario in the context of this post? The perpetual machine inventor! Well if I ever had one I would file complete junk, not charge them a penny, and call for the men in the white coats.
Disservice? Honest opinions? Who is being naive now? I have worked as a patent attorney for a long time in lots of roles. The biggest disservice that I ever see is when patent attorneys sit back and say “Client. It’s not for me to decide (even with you!) it’s your decision”. Often patent attorneys are the first to be contacted by an inventor and there are sadly many patent attorneys who think that filing a patent application “first” is the best way forward. It’s an insurance against a claim for malpractice so why not! They are not motivated to say no don’t file yet. Who pays for no? Leo is wisely advising inventors to focus their efforts on other things first and keep their money in their pocket. That’s also advice that I would suggest is often not given.
I have dealt with enough inventors to know that sadly “honest opinions” are not always forthcoming. Some truly shocking and sickening examples of “sitting on the fence”, almost praying for a go decision to make money with impunity.
The only thing I would seek to supplant is the practice of “fence sitting” in client advisory relationships when there is a conflict of interest in doing so. And before you get all indignant it happens more often than you may think. Patent filings last not first, in the majority of scenarios, is a possibility and 100% the best advice for the client. If I think their invention sucks or is not likely to be commercial I tell them; I give them an honest opinion, which is often what they seek. I advise clients to spend their money on the activities that Leo suggests before spending money on me. Many do and don’t come back (except to thank me for my “disservice”). Those that do come back for work are clients for life despite my “disservice” to them, which all have been very happy to receive. In over 20 years I have had no complaints about how I operate but have heard many complaints about others.
Gene QuinnSeptember 1, 2010 11:58 am
I think your advice is quite reckless. You say: “The last thing an inventor should do is file a patent application and I’m a patent attorney!”
The job of a patent attorney is to write clearly so complicated things can be understood. An inventor reading what you wrote might conclude you are saying that a patent application is unnecessary and inventors simply should not file them. That is objectively bad advice.
If you are trying to say that it is always the best case to file a patent application last, then you are either naive or oversimplifying matters. You claim to be a patent attorney yet your advice here is presented as absolute and the right thing to do in all cases. Any attorney knows that you cannot give blanket advice that applies across the spectrum of situations without proper consideration of the facts. For example, would you require full analysis and answering your questions before you file a patent application if someone walks into your office on the eve of a statutory bar? Of course not because if you did that would be malpractice.
You are correct to say that questions should be asked and inventors deserve to be walked through the process and the many issues brought to light. At the end of the day, however, is it not for YOU to decide whether the answers provided are “convincing.” Clients come to us to do for them what they could do for themselves but would prefer our assistance because they don’t have the requisite experience or knowledge to do the same competent job we could do. So at the end of the day it is the client, not YOU, who gets to decide.
Your answers smack of rigid ideology and an attitude that you know everything. Did you ever consider the fact that some inventors simply want a patent because they want validation? They hang the patent on the wall with great pride. Is that a “complete waste of money”? My uncle was such an inventor. We as attorneys do a tremendous disservice, in my opinion, when we supplant our own judgments for those of our clients. Complete information, adequate explanation and honest opinions are what clients deserve.
EGSeptember 1, 2010 08:28 am
Excellent “practical” advice. More inventors and entrepreneurs should read this article. They would save themselves much time and money.
Nick WhiteSeptember 1, 2010 05:45 am
Not always the right advice? It’s probably advice which is rarely given.
I think you are confusing the making of a working prototype with Leo’s more generic and broader definition of “Proof of Concept”. His has three elements only one of which is to check if you can make the widget.
It’s always good advice to do the market (including prior art) and business assessment before you file for a patent. There are a large number of patent applications on file that lack novelty or have absolutely no commercial value. They are a complete waste of money….for the inventor. The inventor was not guided by being asked the right questions before these applications were filed.
The last thing I do is file a patent application. The first thing I do is to ask why bother? I look for the research and answers suggetsed by Leo. If I don’t receive a convincing answer then no patent application.
step backAugust 31, 2010 10:02 pm
Not always the right advice.
And I’m a patent attorney.
The question of whether proof of concept should first be tested or not depends very much on the technology involved and the inventor involved.
For some technologies (e.g. software, other predictable arts), proof of concept may not be necessary because the idea and its practical implementation may be merge to be one and the same.
Of course there are other arts where the inventor can be easily fooled into thinking his idea is fool proof until he actually tries to build it, and there of course, the wiser course might be to withhold spending money on a premature patent application and instead invest your time and money in finding out why the invention will not work as first conceived and how to overcome those obstacles.
Nick WhiteAugust 31, 2010 06:42 pm
Great post! My mantra. The last thing an inventor should do is file a patent application and I’m a patent attorney!