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Top 10 Mistakes that Inventors Make

I am in my fifth decade of life and have made plenty of mistakes.  I’m sure that I’ll make plenty more.  That’s OK.  What matters is that I keep getting up and believe that what I am doing has a purpose.  What follows is my opinion and is not meant to provide legal advice.  It is my compilation of the Top Ten Mistakes that Inventors Make – a list of lessons learned for inventors.  And, if you are inventor and have a lesson that I didn’t include or if you have other comments, then I invite you to share your mistake by sending me an email to bambi@bfwpc.com.  Finally, please remember that having a sense of humor goes a long way.

  1. Inventors can be too relaxed about record keeping.  The early dates of conception and invention development stages can sometimes be critical.  Under present patent laws, inventors should have clear journal entries, and if possible, have them witnessed by someone that has agreed to a nondisclosure and non-compete agreement. Keeping good records can also help the inventor stay organized and self-directed in terms of time lines and goals.
  2. Inventors tend to avoid paying for a professional patent search.  Patent attorneys and patent agents often talk about how inventors say that they have done their own patent search and that there is nothing similar to their invention.  With over 7,000,000 US patents and even more worldwide patents it is virtually impossible to do a patent search and not find something relevant.  Patent searching is an acquired skill and if an inventor is not intimately familiar with how the United States Patent and Trademark Office classifies inventions, then rarely would an inventor find their invention even if there is a patent out there that covers exactly what is invented. Obtaining a patent is an expensive undertaking, and saving a few hundred dollars by doing your own patent search seems foolish.  However, I know what it is like for a small business to have to cut corners.  So, if an inventor has a budget and doesn’t want to pay for a search, then at least reach out to local inventor clubs and to the USPTO to identify training materials to help support you with understanding how to conduct a search.  And, remember, just because an inventor does not find anything does not mean that there is nothing to be found.  That is, there are no guarantees and if you are going to spend a few thousand dollars seeking a patent, then don’t be frustrated if the patent office comes back and makes a novelty or obviousness rejection.
  3. Inventors often do not understand the various options for profiting from their invention. There are four main strategies: (a) negotiate a license with another business, (b) sell the invention to another business, (c) litigate the patent in federal court against a suspected infringer and start (this can be extremely exhausting), or (d) expand a business that builds a product based on the invention.  It is important that the business strategy the inventor selects aligns with the inventor’s business and personal goals.  A very important part of this process is to identify your customer(s) and your customer(s) buying habits.  Does your target customer buy directly from manufacturers or through a distribution network?  What causes your customer to buy and what would motivate your customer to try your solution to his or her problem?  And, if your invention idea does not solve a problem than it may be hard to sell it.  The majority of inventions, some say over 80% do not sell well.
  4. Inventors often do not develop a invention or business plan or conduct a feasibility study.  The goals of the invention plan are to ensure that the invention process heads in the direction the inventor wants and to improve the odds for success.  The plan should include business goals and personal goals.  There is an old expression that having the creative idea is 10% of the process and that the other 90% involves a lot of hard work, blood, sweat and tears.  Does anyone remember the inventor that made the analogy?
  5. Sold the invention.  In the United States, an inventor has 12 months from the time the invention was first sold within which to file either a provisional application patent or a nonprovisional patent application.  If an inventor waits longer than 12 months then the inventor forever forfeits the right to obtain a patent in the United States. Many inventors know this rule and will start to sell the product before a patent application is filed by attempting to reason that “it was only a few sales”, that one of the parties did not perform, or that they did not make any profit.  However, the term “sale” is determined by the Uniform Commercial Code (UCC) and is quite broad covering all of the earlier cited examples.
  6. Offer to sell the invention.  Not only does selling the invention have severe negative consequences, but offering to sell the invention has the same negative consequences as actually selling the invention.  What is an “offer to sell”?  Simply speaking, it includes identifying the product or service (e.g., subject matter of the contract) with an ability to deliver the identified product or service.
  7. Publicly used or disclosed the invention.  Public use creates the same problems as a sale or offer for sale.  In the US, if an inventor uses or discloses an invention, the inventor has 12 months from the first public use or public disclosure to apply for a patent.
  8. Inventors prepare or draft a provisional patent application (PAP) that may or may not disclose or teach patentable subject matter.  A provisional patent application can be an empowering, cost-effective tool when it is used properly.  However, when a PAP is not used properly, it can be devastating.  PAPs are easy to file because the requirements are significantly less than a nonprovisional application patent.  For example, there are no requirements that the description be in a particular format, it can be filed in any language, and it does not have to include claims or formal figures.  As a matter of fact, the USPTO does not even look at the provisional application – it is never examined.  However, the law requires that a provisional patent application describe the invention with the same level of detail as is required of a nonprovisional patent application.  If the inventor does not describe the invention with the level of detail and sophistication required by the patent laws, then the provisional application patent is worthless.  Even worse, because the inventor may have felt that there was a patent application pending, the inventor may have done things, such as using or selling the invention.  If an inventor files a provisional application that is not specific enough and then uses or sells the invention, then the inventor forever forfeits foreign rights, and the application the inventor filed may not be able to be used later to support a filing date.  Worse of all, a poorly drafted provisional application patent could prove that as of the time that the inventor filed the application, the inventor did not have a “completed” invention. If so, then only some features of your invention are protected, while other features may not be protected.
  9. Inventors view their single patent application as their sole source of intellectual property protection.  In today’s information technology age and with the popularity of social networking, it is silly to think that the other corners of intellectual property protection are not needed.  Other sources of protection can come from strategic partnerships, trade secrets, copyrights, trademarks, owning the URL, signing up for the Twitter, Facebook and other social networking accounts, exclusive distribution channels, customer relationships, investment partners, or having certain people on the management team.
  10. Inventors do not understand the mindset of investors and other third parties.  Successful inventors and successful business people have inherently different personalities and views of the world. The obvious challenge for the inventor is to find a way to present the invention to the business person in a way that hits his or her hot buttons, rather than the hot buttons of the inventor.

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