Invent It, Sell It, Bank It!: Make Your Million-Dollar Idea Into a Reality (21 page)

After your attorney conducts a patentability search and believes
that your idea is eligible for a patent, you will begin the filing process. Remember, a search is not necessary, but I recommend it because it helps your attorney draft a better patent.

2. Choose Your Patent

Individual inventors generally pursue three types of patents. The most common are utility and design, though there is a third, plant patents, for the agricultural arena. A
utility
patent protects the function of a product or idea, the actual mechanics of how it works. A
design
patent, on the other hand, protects the aesthetic of the product. The only thing a patent examiner will look at upon receiving a request for a design patent is its similarity to existing designs. A design patent is easy to get, but also harder to defend because sometimes it is easy for a competitor to work around it by making a few small changes.

Your money will be better spent filing for a utility patent, because even though it is harder to get, it is easier to defend. If at all possible, file for the stronger protection of a utility patent. Often, however, you can get both kinds of patents.

Some people first file a provisional patent application. Inventors often do this when they haven’t quite cemented the details of their invention. It’s a stopgap, an inexpensive way to get your filing date on the books, so you can protect your idea per the rules of the first-to-file system, while giving you a chance to make sure the product is good and that there is a market for it before bothering with the additional expense of a utility patent. Your provisional patent application will outline all the important details about your invention. If you filed a provisional patent application, you have
one year in which to file for your utility patent; otherwise the provisional expires and you lose the benefit of an earlier date.

3. Write Your Claims

Once you’ve decided which type of patent you are going to file, your patent attorney will file a number of claims. The first is your
independent claim
, which includes all the main, minimum elements you want to cover. You will want your main claim to be as broad in scope as possible. You will then have
dependent claims
in addition to the main claim that further narrow the scope of protection.

In my first patent on my earring organizer, my broad, independent claim called for a “base having a plurality of grooves and a plurality of separate stands, each being received in a groove.” One of my dependent claims added the fact that “each stand had a crosspiece extending between respective supports of the stands.” (Now you understand, from reading that language, why people shouldn’t attempt this without an attorney.) Notice that I wasn’t specific about the height, length, or the material used. You always want to draft your claims as broadly as possible so as not to limit the scope for things like size or materials, which would narrow your protection. It is important to have claims of varying scope to well protect your invention from challenges of invalidity, which a defendant in a patent infringement lawsuit will often claim.

Once your patent is filed with the USPTO, it gets stamped and dated. And then you wait, because at any given time,
there is usually a backlog of about 600,000 patent applications ahead of you at the USTPO, waiting to be processed. At this stage, your product is
patent pending
. Some people choose to wait before moving forward, but most people continue to pitch their idea to buyers and make, market, and sell it while they wait for their
patent to be approved. I understand the instinct to be cautious, but it’s better to get out there and sell because, for all you know, you may never get your patent. It would be a shame to lose time that you could have been selling, waiting for something that may never come. Sell now with the anticipation that all will go well and you’ll get your patent. If you don’t, you can decide what to do then. You don’t have to stop selling if you don’t get one. A patent is like insurance—you may need it, but you hope you won’t. Nevertheless, it’s good to have if you can get it.

Being able to say that your product is patent pending is like sending a warning signal to knock-off artists. You’re still vulnerable to predators, like a lamb in a field. But with a patent, or at least with the application of a patent on file, you’re a lamb in a comfortable, safe enclosure. Without anything on record stating that you intend to defend yourself, you’re a lamb who the wolves are watching. If an unscrupulous competitor or company spots your product and thinks they could make money with it, they’ll look up your patent application and see if they can design around it. That’s why it’s important that you file good claims that are difficult to write around. Of course, if knock-off artists see that you haven’t filed a patent at all, your invention is easy pickings, a tasty tidbit for a money-hungry wolf.

After you file, an examiner will start reviewing the USPTO database for “prior art.” Prior art consists of any other patent (domestic or foreign), articles, books, catalogs, and even events that might tangentially have to do with your product. Keep in mind that you also have to tell the USPTO about any prior art you are aware of. The examiner digs for anything that could throw into question the originality of your idea and therefore make it undeserving of a patent. Most of the time, after this exhaustive search, the examiner will not send you a definitive yes or no; rather, you get something called an
office action
, a document that outlines
which of your claims have been approved and elaborates on why others have been rejected. This is another reason why there’s no point in waiting around biting your nails, praying for your patent to go through. It is rare for any patent application to sail through to approval intact on the first try.

4. Review Your Office Action

There are many reasons why you might not get a patent. One reason is that something too similar to your product already exists. There might not be much you can do about that. But another reason may be that your idea was judged to be too obvious. For example, though you may fervently believe that inserting an LED light into the brim of a baseball cap is wholly original, the examiner might determine that, in fact, adding a light to a cap is obvious—anyone could do it. Therefore, the invention does not warrant a patent. If this scenario were to happen—and it happens frequently—you would be glad you hired a patent prosecutor. On your own, it would be extremely hard to convince the examiner to reconsider. An experienced patent attorney, however, will be familiar with a host of previous legal decisions on which to base an argument that, in fact, your product is not obvious.

5. Decide Whether to Pursue Your Claims or Abandon the Application

As you review your office action, you and your attorney will discuss the results and decide whether to proceed in pursuing the patent. What’s important to consider at this stage is not necessarily how many claims you think you can fight for, but
which
claims are worth fighting for. If the examiner’s reply indicates that there is little prior art and your attorney is confident he or she can come up with a strong enough argument to turn around the rejection of an important claim, it’s probably worth following
through to get those claims, especially since you’ve already invested the money. If the only claims your attorney thinks he or she can get approved is a claim that doesn’t offer you much protection because it’s too narrow to be helpful, it’s probably not worth the time and money to fight for it. And if your lawyer tells you that odds are you’re never going to get your patent, why fight a losing battle? Stop, cut your losses, and continue to sell.

If you decide to pursue the patent, there can be a lot of back and forth as your attorney pushes back against disputed claims. There are usually several rounds during which the examiner denies some claims and grants others, and then your attorney responds with arguments as to why the claims should be granted. It’s a process that can take a long time, depending on the arguments surrounding the patent.

A design patent can take as little as a year to obtain, but a utility patent can take longer. I had to wait almost seven years to get one of mine. Recently, however, the USPTO passed initiatives to help cut the time it takes to get a patent. You may have to pay a significant amount more to take advantage of the new programs, but it allows you to put your application on an accelerated track.

CONSIDER TRADEMARK PROTECTION, TOO

In addition to protecting your particular invention via patents, entrepreneurs should likewise consider securing trademark protection for their brands, logos, designs, and slogans. A trademark is any word or words, logos, slogans, or any combination thereof used as a source identifier for a product or service. In some circumstances, even the unique shape of a product can be protected as a trademark. It is important to understand that trademarks are not owned across all product and service categories and are limited
only to the product category or categories for which a particular trademark is used. As such, the trademark CRC might be owned by one company in connection with lawnmowers, whereas the trademark CRC might also be owned by another company in connection with breakfast cereals. Since most lawnmower companies are not also in the business of breakfast cereals, consumers are unlikely to think that the parties’ respective CRC products originate from the same source or company.

Generally speaking, trademarks can be earned in one of two ways in the United States. The first, common law or unregistered trademark rights, can be achieved merely by using a particular trademark in the marketplace in connection with a particular product or service. Common law trademarks are territorial and give one rights to the trademark in connection with a particular product or service only in the geographic region in which that person or business is using the mark. Conceivably, it is thus possible to have CRC branded lawnmowers for sale only in California. That will not cause any consumer confusion with another CRC branded lawnmower for sale by a different company only in New York since the geographic reach of these businesses does not overlap.

Second, trademark rights can be achieved by filing for federal trademark protection with the United States Patent and Trademark Office. Federal trademark rights are much broader than common law trademarks in that they are presumed to grant in the owner nationwide trademark rights and additional rights and remedies not available to common law trademark rights holders.

Obviously, it is critically important to protect one’s brands as trademarks since some consumers rely on the brand for clues as to quality and reliability when making their purchasing decisions. Trademarks give the entrepreneur a monopoly power to be the sole user of a particular brand in connection with a particular
product and service and the power to prevent a third-party copycat from using a confusingly similar name on a related product in the marketplace.

Much like preparing to patent your invention, it is critical to conduct your due diligence prior to using a trademark or logo in order to ensure it is available for use and protection. The first step is often to visit the United States Patent & Trademark Office (USPTO) website to make certain no third party owns a particular trademark in connection with a specific product or service. While you can certainly visit the USPTO website for some initial due diligence, you are likely best served by retaining a trademark attorney to conduct a complex full availability search so that you can appropriately assess availability of your new trademark and the likely risk associated, if any, with launching your new product or service under your new trademark. Once it is determined that your new trademark is a good candidate for your use and registration, your attorney will be able to prepare for you an application for registration of the trademark, in most cases for approximately $1,000 for a single class application.

HOW TO BRING YOUR PRODUCT TO MARKET WITHOUT A PATENT

Should you decide to abandon your patent application, or that you can’t justify or shoulder the expense of applying for a patent in the first place, what then? Is it game over? No, because most products don’t have patents or aren’t patentable anyway. Just get it out there and try to blitz the market.

You will need to get your product onto the market first, and spread it to as many retailers as you can—the bigger the better—so that by the time a competitor gets its version out there, your product and brand have captured consumers’ hearts and minds. Actually, you should plan to take this course of action
even if you decide to file for a patent. It’s always been my strategy to do both. Admittedly, for a new entrepreneur it’s an uphill battle. It’s not easy to get buyers to pay attention to you when you’re unproven and unfamiliar. Like everyone else, they prefer to do business with known entities, and the major players have no incentive to take a chance on you. There are steps you can take to improve your chances, however.