Saturday, June 30, 2007

Scams in the Invention Promotion Industry

An aspiring inventor often hears ads on TV and on the radio offering help for patenting and/or marketing inventions. Be extremely careful who you hire to help commercialize an idea. There are a lot of scams out there. This blog is the story of what has befallen a large number of uninformed inventors that hired American Inventors Corporation (AIC) to help them obtain patents. This story is from the 1990's, but just recently one of the patent attorneys complicit in the AIC scam was barred from prosecuting patents.

AIC solicited individuals to submit their ideas and offered a free patent search. They would tell each potential client that their idea had great commercial potential, and in a sales presentation offer to help the customer obtain a patent and then to promote the patent to manufacturers. In a contract signed by the customer AIC claimed they would obtain a "patent" for the customer for a fixed fee or a fee plus a percentage of royalties. The fee was refundable if a patent did not issue. No mention was made of the type of patent to be obtained. AIC was to hire a patent attorney or patent agent, and to supervise the application process. Direct communication between the customer and patent attorney was discouraged. When a patent application had been drafted, the company presented it to the customer for signature. Sound good?

AIC would forward the inventors disclosure to a patent attorney , Leon Gilden, requesting a design patent. A design patent protects only the decorative features of a product and does not protect the structural or utilitarian features. The patent attorney added decorative features to drawings on the customer's application (drawings the inventor did not submit) and filed design patents. Thus the customer did not get the patent protection of his idea that he sought and thought was getting. The design patents, which inevitably issued, were worthless.

The patent attorney, Leon Gilden, was punished for taking part in this scam with a 5 month suspension of his licence to represent clients before the patent office. AIC then hired another patent attorney, S. Michael Bender, to prepare and prosecute over 1000 design patents, many left over from the Gilden fiasco. Bender has been excluded from prosecuting patents before the patent office in an appeal of such sentence by a lower court. To read the whole proceedings see:
http://www.uspto.gov/web/offices/dcom/gcounsel/docs/06-1243.pdf

As far as I know, the company has not been punished for this scam. If you have questions about the legitimacy of an invention promoter or need guidance in how to proceed with the invention process, I suggest you become a member at http://www.inventored.org/ which is an email forum. You can post a question that is sent to all members and you will get answers by email.

Until the next post,

Vernon Sandel

Monday, June 18, 2007

Ideas and Invention

When asked what I do for a living (in spite of my age I do get asked that) one of the things I always mention is that I have a patented product that I am selling on the internet. (http://www.bowstabilizer.net/) This usually brings an expression of awe or admiration that is undeserved. True, most people have not patented an idea, but basically everyone has the capacity to come up with ideas that could be patented and marketable. You don't need an advanced education or a lot of creativity. If you have ever been frustrated in the use of a product, find a better way and you have a potentially marketable idea.

Just recently as I was trimming my lawn with a string trimmer, I tapped the hub on the ground to draw out new string but nothing happened. A quick examination of the hub showed that dirt had clogged the mechanism. I had to stop the trimming, take the hub/spool system apart and clean it so it would work again--frustration! There must be a better way to extend the string. After thinking about it a few days an idea occurred to me how the problem of dirt clogging the mechanism could be totally eliminated. A prototype is presently under construction. If it works, the next step is to do a patent search to see if there is anything like it in the patent literature. If there isn't, I will write up a provisional patent application and submit it. The cost is only $100.00 and a lot of my time. But the provisional patent application gives me a year to try to sell the idea to a manufacturer. This is the poor man's way to market an idea. If my prototype convinces a manufacturer that he wants the patent he can pay for the filing of a utility patent.

You can see how easy it is to come up with a potentially marketable idea. Why is it then that more people do not try to capitalize on their ideas? First of all is lack of confidence. Is it really a good idea? We tend to elevate OUR ideas in our minds, sometimes to the extreme. If you have an idea that you think might be worth while pursuing, talk to someone, preferably a professional such as an engineer in the field of your idea, to get a second opinion. You should have a privacy statement for him to sign. If you still feel your idea has merit, do a patent search at http://www.uspto.gov/patft/index.html. This is very much like doing a keyword search on Google. If this turns up nothing that is similar to your idea, it may be patentable. This search should not be considered a true patent search, only an indication that the idea is worth pursuing.

It is at this point that you really need to consider whether you are willing and able to carry through with the idea as the process can get very expensive from here. Up to this point you have not occurred any significant costs. Next, you will need to try out your idea. If you have the skills, making a prototype yourself may not be very costly. Otherwise, hiring a company or person to construct a prototype can be expensive. One resource which may help keep costs down is your local college. If you can talk a professor into letting a student take on making the prototype as a senior project, you may be able to save labor costs, but you must follow closely the person doing the work to make sure there are no misconceptions in what is to be built. I have found that what I picture in my mind in the construction of a prototype is often not possible or practical. Even scale drawings, while very useful, are often not sufficient to anticipate many problems.

If you have a prototype that works and truly does solve a problem or provide a useful function, the battle is half won. At this point it is time to consult a patent professional. Do not fall for the advertisements on TV offering help in patenting your idea! Many of them are scams that will promise much and deliver little. Check with your local college or a local company that is producing a new product, or the patent office at http://des.uspto.gov/OEDCI/ for suggested patent attorneys or agents.

The services of a patent professional can run as much as $15,000 to procure a utility patent. If you cannot afford the cost, you have two options. The first is to find someone who will finance the patent work for a fraction of the profits that ensue. The second is to do it yourself. The Patent Office has manuals describing the overall process of writing and applying for a patent, but they are written in legalese that I found very hard to follow. I found that examining a number of patents (downloaded from the patent search) to be more instructive.

Anyone who is capable of writing a description of their invention and describing how it works should be capable of producing a provisional patent application. Just follow the format of the specification section of other patents in your search. You do not need formal drawings, only sketches. Be sure to label each part with a number and describe it in the specification. The description MUST be clear enough for a person knowledgable in the field to understand what the invention is and how it works, and the advantages you claim over previously disclosed inventions. There is no need to draft claims or have approved mechanical drawings.

The provisional patent application allows you to claim "patent pending" status while you try to sell your idea, but you must file a utility patent application within one year. If you need to find a company or an investor to finance the patent application, work fast because the year passes quickly and it will take time to draft a proper utility patent.

Let me give you another example of a simple idea that has led to a successful business. I met Martin Tervo at our local hardware store a couple weeks ago. He recognized that it was difficult to put up hangers on a concrete or block wall. Truditional hangers, like coat hooks, utility hangers for shovels, brooms, garden tools, ladders, etc. are made for installation in wood. Some may be adaptable for concrete, but it involves drilling multiple holes. Mr. tervo invented simple system for installation of such hooks using a single hole and glue. A 1/2" hole is drilled in the concrete. A hook that is formed on a plastic base with a 1/2" tube is inserted into the hole in the concrete. Inside the tube is a packet of glue and a plastic plug. The hook is set perminantly in the hole by tapping the plug into the tube which ruptures the glue packet. Glue flows around the outside of the tube and upon setting firmly holds the tube and the attached hook to the concrete, a simple and elegant solution to the problem of setting a hook in concrete. Check out his web site at http://www.tapset.com/ to see the idea in action.