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Access Patent
Search Now, File Later
By Matthew Yubas
The patent search accomplishes two things. First,
it helps ensure that your product won't infringe on an active patent,
and second, reveals if you can protect your invention with a patent. Before
you request a patent search for your invention, ask some questions. Are
you getting just a patentability search, an infringement search, or both?
Typically, an invention company or patent attorney who does a patent search,
is checking only to see if your invention is patentable. Search
Yourself and Save
People have successfully searched and filed patents
themselves. You can do this, but it'll take a lot of time and effort.
I recommend performing a patent search yourself and then follow-up with
a patent attorney. Find a patent attorney who has experience with your
product type to help you search and then file an application. You can
save some money by providing a list of patents similar to your invention.
And, while most patent attorneys are thorough, you know your invention
better than anyone else does. Providing a list of similar patents will
increase the possibility of uncovering relevant patents they might not
have considered. Costly
Patent Infringement
What the patent attorney will not always do on
an initial investigation unless asked, is perform a patent search for
infringement. Why? Because this type of search is more time consuming
and costly. You could easily pay $2,000 for an infringement search. When
you ask a patent attorney for a patent search, ask what you're getting
- patentability, infringement, or both? If you request an infringement
search, make sure you ask for and receive a written opinion. If you are
later sued for infringement, you can show that you believed, on the advice
of your attorney, that your product would not infringe on any existing
patent. If you knowingly sell a product that you were informed infringes,
you could be sued for triple damages. But if you have a written opinion
from a patent attorney that infringement is not likely, triple damages
can be avoided. Can
You Get a Patent?
In general, if your idea is unique, non-obvious,
a new machine, or an improvement on an existing patent, you stand a good
chance of obtaining a patent. For example, in 2001, the US Patent Office
granted a total of about 184,000 patents. And if you assume it takes three
years from file date to grant date, then looking back to 1998, there were
about 261,000 patent applications filed. That translates to a grant rate
of 70%. The other aspect in favor of getting a patent granted, is that
many patent attorneys are trained in "designing around" exiting
patents in order to get yours allowed. Keep in mind, the more patents
granted is good business for attorneys, and good for the patent office
who collects filing and maintenance fees. Patent
Rights
Understand that a patent does not give you the
right to sell your product. A patent only gives you the right to prevent
others from making a product based on your patent. Also keep in mind that
when the patent office approves your patent, that approval still does
not ultimately protect you against infringement. The patent examiner is
often under time pressure to scrutinize a patent application and may not
catch all infringement possibilities. The ultimate authority to decide
who has the right to an invention is the courts. Patentability
versus Marketability
Many think of inventing as "The Three Ps
- patent, prototype, and production." The larger issue is really
marketability. There are tons of patents that never turn into successful
products. Some people say, "OK, my product is completed, I'm ready
to start marketing." I suggest that marketing starts at the beginning
of the inventing process. In the early stages you need to determine the
true needs and wants of the customer, determine appropriate product benefits,
competitive advantages, pricing, and market trends. The more marketing
research you do in the beginning, the greater chance of making a product
that people want.
Michael Boehm, successful inventor of the George
Foreman Grill, says that most inventors are off to the patent office before
they understand the market for their product. Before Boehm applies for
a patent, he prefers to write a story. The story is about how to appeal
to the mass market. If he can't write the story, then a mass market probably
doesn't exist. Conclusion
Patent searches for patentability are one thing,
but searches for infringement are another matter. Before you spend a lot
of time and typically $10,000 on patent and attorney fees, look into the
marketability of your product. Learn the development pitfalls and how
to avoid them. Keep in mind that you don't always need a patent to market
your product. WD-40 and Coca-Cola are prime examples of products that
succeeded without patents.
See also: Free Guide to the Invention Process | Invention Success Kit
About
the Author
Matthew Yubas is a Certified Professional Marketing
Consultant for the Small Business Development and International Trade
Center. He has developed products for 20 years as an engineer, product
manager, and independent consultant for startups, small business, and
Fortune 500 companies. He has launched new products such as software applications,
wireless devices, and websites. In addition, he has helped clients in
a diverse number of industries that include photography equipment, auto
accessories, soy candles, children's clothing, sporting goods, digital
art, and home décor. He has earned a B.S. in Engineering and an
M.B.A. in Management. Information about his Invention Success Kit
is available at www.ProductCoach.com.
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