Posts in Invention Basics

Recently, I met with a potential client to discuss key points that developers and management should keep in mind in taking the first steps to begin developing a patent portfolio. One aspect of the presentation was public disclosures that began the one-year grace period for filing for patent protection. As I was preparing examples, a practical concern emerged; specifically, whether storing source code in a third-party code repository amounted to a public disclosure or a printed publication. My research revealed that there are certain instances where uploading source code to a third-party repository amounted to a public disclosure or a printed publication, but there were precautions that developers and companies could take to prevent the inadvertent public disclosure of their code.

There really is no one-size-fits-all approach entrepreneurs and business executives can follow, and there is no roadmap to success that will work in all cases. That doesn’t mean there aren’t a number of things that can and should be understood, appreciated, and truly internalized if you are going to pursue any kind of economic engagement as more than a hobby, or to do more than merely punch a clock for a paycheck every other week. This is not to say that there isn’t anything wrong with making a few extra dollars as the result of a hobby, or being happy where you are, doing your job and then punching out at 5 o’clock. But if you want more, if you have hopes and dreams of building something from the ground up that is your own and will become your business, or climbing the corporate ladder to become a C-suite executive, you need to treat each business endeavor with an entrepreneurial mindset from the earliest stages. If you don’t, it will create all the wrong habits, and worse, it will create the wrong mindset. A mindset is a very difficult thing to change, and patterns become easy, comfortable and difficult to break.

As mentioned in Part I of this series, many inventors will seek to obtain some kind of patent protection so they can stake claim to their invention. Filing at least a provisional patent application is a necessary strategy, because when you file a patent application you are articulating your invention and getting on record with a filing date that cannot be taken away from you with respect to whatever is in your patent application. A provisional patent application can be a great first step, particularly if you are going to need some assistance later to develop your invention. It is also a good first step because you do not need a confidentiality agreement when dealing with a patent agent or patent attorney because the law already requires that information learned from clients or even prospective clients must remain confidential. So, even if you just seek the advice of a patent attorney or patent agent and never wind up hiring them, they are legally required to keep what you tell them confidential. This legal requirement is much stronger than any confidentiality agreement you could ever have them sign. This is true because any confidentiality agreement will say that if the information becomes public the signer is no longer obligated to keep the information secret. There is no such “out clause” in the attorney-client privilege. What you tell a patent attorney or patent agent about your invention is confidential and will remain confidential even if no representation relationship ever is undertaken.

Most inventors understand that a certain amount of paranoia goes a long way when dealing with an idea or invention. Ideas cannot be patented, but every invention starts with an idea. When you have an idea that has been sufficiently formulated and described in a provisional patent application, you may even be able to license that invention idea without yet having received a patent. This all falls apart if you tell others about your invention or otherwise disclose your invention before a patent application is filed. Worse, if you tell someone your idea without a confidentiality agreement, they are free to use the idea without paying you anything. It can feel like the wild west sometimes for inventors seeking to become entrepreneurs—whether their dreams are to license inventions, to build a company to sell a product, or to offer a service representing the invention. Once your idea crosses the idea-invention boundary (discussed here), you can receive a patent, provided of course that it is new and nonobvious. But if you start telling others about your invention, they could make and use your invention without paying you—which is bad enough, but the mere act of someone else moving forward with your idea could forever prevent you from obtaining a patent.

From a conceptual standpoint, it would seem logical to assume that writing text to describe a particular invention ought to be easy for the inventor of that invention. Unfortunately, it isn’t that simple. While inventors are very good at inventing, they tend to be less good at many of the adjacent and necessary tasks along the road from invention to market success. Indeed, while an inventor undoubtedly knows the invention better than anyone else, it can be enormously difficult for inventors to describe their own inventions. The inventor of a new and useful invention is always in the best position to describe the invention. The problem lies with the reality that most inventors simply don’t understand what needs to be described in order to satisfy the U.S. patentability requirements. And, sadly, when inventors forgo professional assistance, they all too often wind up focusing their entire description of their inventions on how their new device or gadget will be used at the expense of describing the parts and pieces that make up the invention. This is an enormous mistake, and one from which there is often no recovery.

Selling an idea and waiting for lottery-like winnings to arrive at your doorstep seems to be the American dream. It is certainly the dream of every inventor, and it is a dream fanned by late night television commercials that suggest all you need is an idea companies will be falling over themselves to pay you for the rest of your natural life for the right to use it.

It all sounds too good to be true! Well, that’s because—in its most simple terms—it is. That doesn’t mean there isn’t a kernel of truth to the story. There’s just a little more to it than suggested by those late night commercials.

Let’s begin with a simple question: Can you sell your idea for profit? The short answer is yes, absolutely. And, if you come up with the right idea, you can make a very handsome profit. But there is a bit of a catch (or problem really). The problem (or catch) has to do with the definition of what qualifies as an idea worth paying for and what qualifies as something too vague to be worth anything.

It is worth remembering, however, that an invention notebook is not just for proving when you invented aspects of your invention, which will rarely if ever be necessary for the overwhelming majority of inventors now that the U.S. follows first inventor to file laws. An invention notebook or invention record is comprised of a collection of notes that will be critical for you as you progress down the invention path. While we might all like to flatter ourselves with how capable our memories are, you are likely to try so many different things that either fail or succeed to varying levels that days, weeks or months later you will not be able to remember every aspect of your efforts. This can and will lead to a need to recreate the wheel. So, keeping a good invention notebook is far more useful as a personal reference than it is for evidentiary reasons.

Frequently one of the most challenging aspects of inventing is determining what need a particular invention fills. This is not to suggest that inventors do not know what their invention does, why they created the invention in the first place, or how it might be used by a potential consumer. Instead, one of the biggest issues I see is inventors not having a good grasp of why an invention might be desirable from the viewpoint of consumers who might be perfectly willing to use various substitutes.

Inventing success for young inventors comes when they are passionate, inspired and dedicated, which is not unlike success in all areas of life… While passion is required, knowledge is also absolutely necessary. A true inventor will learn everything they can about each aspect of the field, from the technology, to the business, to the competition. You must become an expert on your invention and on the field you’ve chosen to pursue.

Brainstorming, whiteboards and a 3D printer constantly humming. The Invention Lab of Enhance Innovations is always a flurry of innovative activity. If you are an invention nerd a trip to Enhance Innovations is an opportunity to really geek-out… For me, the real interesting piece of what Enhance does is their work with concepts. Many times inventors will come to me with more than an idea but less than an invention, which can be a real valley of death for inventors to navigate. So many good ideas get trapped in the uncomfortable space between something more than an idea and something less than a full-blown tangible invention.

At the request of the Federal Trade Commission, the United States District Court for the Southern District of Florida has issued a preliminary injunction against World Patent Marketing, an invention promotion company the FTC has charged with being nothing more than a scam. “The record supports a preliminary finding that Defendants devised a fraudulent scheme to use consumer funds to enrich themselves,” concluded United States District Judge Darrin P. Gayles. “Accordingly, the Court finds a preliminary injunction is necessary to maintain the status quo pending a trial on the merits.”

I am frequently asked by inventors whether they should file a patent application before seeking to license their invention. Some even ask whether they should first obtain a patent before they submit the invention to a licensing company… I always tell inventors and entrepreneurs that the best invention to patent is one you will make money with regardless of whether you ultimately obtain a patent. After all, if there is not a market for the invention why would you ever consider spending the time and money to obtain a patent? The goal is to make money and investing in a business or to obtain a patent makes sense only if there is a reason to believe more money will be made than spent.

Like anything in life that is new, whether it be returning to exercise after a lengthy hiatus or learning a new language, you have to walk before you can run. Put one foot in front of the other. Too often I see inventors who come up with the idea and want to cut through the middle steps and file a patent application. If they skip the middle steps then they likely don’t have an invention, they can get frustrated and give up… The moral of the story is that inventing is not rocket science; inventors are those with persistence and a plan. Spend time little by little working the idea, describing what you have in text, thinking about the various alternatives and then get some drawings. This step by step approach to inventing will get you from idea to invention, putting you in possession of all the information you will need to file a patent application and attract customers and potential licensees.

Inventors know very well what they have invented and what they plan to do with their invention. But the typical inventor has a terrible sense of what their invention could be… All too often inventors and entrepreneurs spend too much time with their heads down, plow forward, and focusing only on the day to day operations associated with inventing. This is, after all, what inventors do and the inventor’s mindset. There is a problem to be solved and solved it must be! The problem this creates, however, is that is prevents inventors from looking at the bigger picture as they are inventing, which can lead to a catastrophe if the tunnel vision gets too severe… It is also critical for inventors and entrepreneurs to have a strategy to succeed, which seems simple enough, but is typically anything but simple for the creative types that are so good at inventing. The goal is not to create an invention that is cool, the goal is not to get a patent, the goal is almost universally to make money. The cool invention and patent are a means to the end, not the end in and of themselves.

Once you get that first provisional patent application filed you are ready to approach others for assistance with your invention. You have a measure of protection, but never forget you have no exclusive rights until the patent ultimately issues. You should also still get a confidentiality agreement signed by anyone who provides assistance to you. While the clock in the US is ticking to file the nonprovisional, the real important significance of confidentiality agreements after a provisional filing is so that those who assist you will not run off with your invention on their own. With this in mind, it is ABSOLUTELY CRITICAL that you get an assignment of rights with respect to any protectable aspects provided by those giving you assistance.