The Inventor Handbook
PatentApplication.com is proud to announce publication of an indispensable guidebook for inventors, written by inventor, physicist and patent attorney Peter D. Keefe.
"I can say without reservation that Peter Keefe's book, The Inventor Handbook, is an essential read and reread for anyone with an idea."
Harrison H. Schmitt
Apollo 17 Astronaut
Why is The Inventor Handbook an essential read and reread for anyone with an idea?
Because it will teach YOU:
- The Art of Inventing
- The Formalities of Patenting
- The Dos and Don’ts of Marketing.
There is simply no other book like it!
Part I
Inventing
explores the subtleties of the process: how ideas originate, what characterizes a good idea, and how to turn that good idea into a perfected invention. To help you along the way, topics include the searching of prior art, assertions of co-inventorship, and claims of ownership by an employer.
Ideas are bit like viruses: they’re all over the place, but you can’t see them. Indeed, catching a cold is not so different from catching an idea. You’re not sure you’ve got it until the symptoms become undeniable. In the case of catching an idea, the primary symptom is a mental grasp of something new, accompanied frequently by feelings of superiority, accomplishment, confidence, and happiness.
An idea can come at any time, you just have to catch it.
Once you’ve got an idea, the first thing you need to do is decide if it is any good. This may seem obvious, but there’s usually some emotion involved that can fog your vision. No one should throw away a good idea, but that just begs the question, “What is a good idea?” You’re probably expecting me to give you a subjective answer, but I’m going to give you a definitive answer, “It’s a good idea if it has value.”
The time-tested method to know whether or not your invention is yours, and yours alone, is a prior art search. Sometimes this is referred to as a patent search or a novelty search. While an investigation of closely related patent documents certainly is on the to-do list, that list also must include subject matter other than patents. I used the term “subject matter” on purpose, because the prior art can be all kinds of stuff, including documents, such as books, magazines and web pages, and things, such as products on the market.
It is enough to know how to make and use in order to obtain a patent. But this is the lowest bar—you want to achieve the highest bar, and that means you have an invention that will be both a hit in the marketplace and anticipate others modifying it. The former is imperative in order to make the most money, the latter is essential to prevent others from getting around you with some modification.
While most times someone will catch an idea on his/her own, the road to an invention can be paved with a lot of input from other people. Whether these contributions toward the invention constitute one or more of these inputs arising to the level of co-inventorship, also referred to as joint inventorship, is often a murky affair.
Inventors can run into some very serious troubles when their employer gets wind of their inventive endeavors. While this issue arises most commonly with scientists and engineers whose job classification renders them “hired to invent,” it can arise for any employee subject to an employment agreement, industry customs and practices, or situations where the invention was created using employer resources or know-how.
Part 2
Patenting
explains the arcane formalities necessary to obtain a patent. You’ll understand what a patent is and is not; how the U.S. Patent Office works and how it fits into the international patent system; why patent applications are written according to a time tested standard; exactly what a patent claim is and how claims define the extent of your patent protection; how to find a patent attorney, know how to work with him/her and be on the lookout for practice, procedure and billing irregularities; and finally, the tricks, strategies and maneuvers that can win you a patent.
A patent is a document issued to the inventor (or his/her assignee) by the federal government through the U.S. Patent and Trademark Office (USPTO) after performance of an examination by a Patent Examiner of a patent application formally submitted to the USPTO.
A patent provides the owner monopoly rights to exclude others from making, using and selling the claimed invention.
Article I of the U.S. Constitution provides Congress the power to grant to inventors, for a limited time, the exclusive right to their discoveries. Congressional implementing legislation created the U.S. Patent and Trademark Office (USPTO) under the patent laws codified in Title 35 of the United Sates Code (U.S.C.).
An organization within the Department of Commerce, the USPTO uses Technology Centers each comprised of specialty Art Units to ensure examinations are of high quality.
The adage, “An attorney who represents himself has a fool for a client.” applies with far greater seriousness to an inventor who represents himself/herself in the prosecution (processing) of his/her patent application at the USPTO. At least the attorney representing himself in the adage is an attorney; inventors, in particular novice inventors, are ill-equipped to assume the task of patent practitioner. As you’ll see in the following chapters, patent application preparation and patent application prosecution are fraught with technical jargon, arcane rules of practice, and specialized language in the claims, all collectively serving up a mine field just waiting for you to make a misstep.
A patent application is a formal document conforming to the patent laws and the rules of practice, which collectively require that the disclosure enable a person of ordinary skill in the relevant art to make and use the inventor’s invention, while clearly defining the scope of the subject matter of that invention for which a patent is sought. The filing of a patent application is the necessary and essential event that starts the examination process at the USPTO toward the hoped for grant of a patent.
“Patent prosecution” is patentese for the process of interaction by an Applicant with the USPTO in pursuit of his/her patent—there is no “prosecution” in the criminal sense of the term. While referring to USPTO interactions during the time of pendency of the patent application (the time between filing and issuance of a patent or abandonment), it also includes appeals, petitions and post issuance interactions.
Part 3
Marketing
reveals how to make money from your invention. Understanding the economic merits of your invention and recognizing how it fits into the marketplace is a challenge, but an achievable one. How this essential knowledge is then parlayed into a manufacturer match is key. You’ll learn how to approach a prospect and navigate the maxims of marketing.
Yes, you can do this even with limited funds and limited experience, as there are time-tested techniques that really work: all you need is to be informed how to do it—then do it.
Before you begin, there is one essential requisite: you MUST be patent pending or have a patent that describes and claims the structure and function of your best and basic embodiments. Having a prototype is a plus, but as you’ll see, it’s not essential.
Deals are business transactions involving a written contract signed between you and a buyer/licensee defining the patent rights being transferred and the terms and conditions under which those patent rights are transferred to the buyer/licensee in consideration of the payment of money to you.
There are three types of deals:
- Sale/Assignment;
- Exclusive license; and
- Non-exclusive license.
If you decide not to assign or license, but would rather commercially sell your product, then you’ll need to set-up an entity for doing business. Remember to mark your product with “Patent Pending,” or the patent number, if you have it. Ordinarily, you will also need to obtain product liability insurance.
There are a number of business entities to choose from, each with advantages and disadvantages. These are:
- Proprietorship;
- Partnership;
- Corporation; and
- Limited Liability Company.
The ten maxims of marketing may seem at first glance to be straightforward, but careful consideration will reveal their inscrutably nuanced character. If you master them, you’ll be able to navigate with sly confidence the rocky shoals and stormy seas of the unforgiving waters you must traverse to sell your invention.
There are companies that exist for the express purpose of assisting inventors to market their inventions. They have been around for a long time, and have evolved with the times.
Some offer only marketing assistance. Others offer “full service,” including the preparation and filing of patent applications. Be careful here, use a patent attorney!
I decided to dabble in the marketing side of the inventing process for the purpose of learning what inventors face at this stage in their roller coaster ride.
I settled upon a prototype that made good sense from a consumer stand point. Then I utilized that prototype in my instructions sheet to provide an easily understandable description of the Thawometer that did not rely on my patent disclosure. This was important to do because in any sales situation you want to have an easily read and immediately understandable description that avoids the use of patentese.