What to do with your inventions

Howard L. Rose More difficult than developing an idea is deciding what to do with it. You not only have to prove

your invention is patentable, you have to sell it too

jamk dilemma with which MKtKk all technical people

^•PaBi are faced, at one time JaSJ^M or another during

j ^ B H i H n their careers, is what J H r Wsk t o do with an idea or invent ion they have deve loped. Should they write about it? Obtain a patent? Sell it to a company? Or let it sit on the shelf? If you are a budding inventor, there are a few pointers you should know, even before you decide what to do with your idea.

In any type of research, it is impor­tant for you to keep a bound diary— an explicit, well-documented record —describing every step from idea conception to final development. Your diary should also be witnessed at different points. This documenta­tion will be valuable later.

Let's assume that you have devel­oped a viable, working device, have documented all your work, and are now ready to go public. What then? Well, if your idea is related to your job, the answer is simple. In most cases, you will probably have signed an agreement when you were hired that gives your employer title to all employment-related ideas you may develop. In this case, you would sub­mit all the information to the ap­propriate person who will have your idea reviewed, and if worthwhile, will seek to obtain a patent.

The real dilemma of what to do with your invention arises when it does not relate to your employment. The answers are many, and none are easy. The most obvious solution is to try and obtain a patent. But before you decide to do this, there are two main points you should consider: (1) Is your invention commercially via­ble? (2) Is it patentable?

Is it marketable? You will want to know if your in­

vention will be a source of revenue

for you. This requires that you evalu­ate your idea from a marketing per­spective and that you ask yourself the following questions: What are the ad­vantages and disadvantages of your invention in terms of weight, size, durability, ease and cost of manufac­turing, appearance, ecological im­pact, and even product liability. Talk to people in manufacturing, sales, and marketing, asking them to sign an invention-disclosure form, if you fear invention theft. Try to determine the type and size of market where your idea would fit in, as well as market trends. If your idea is deemed patentable, this information will be useful in selling it later.

Is it patentable? If you decide your idea is commer­

cially viable, your next step is to de­termine whether it is patentable. In general terms, this means that your invention must fall within one of cer­tain types of permissible subject mat­ter, i.e., machines, articles of com­merce, compositions, and processes. Or, it should present new and sub­stantially different uses for one of these four categories. Ideas, as such, and other intangible concepts, are un­patentable or nonstatutory. This category includes methods of doing business, printed material, ideas for games, techniques performed by hand, and math formulas—unless these methods are embodied in a machine, apparatus, or method of manufacturing. Computer programs, for example, which may appear to be a process, are seen by the courts to be algorithms or series of mental steps, and therefore are unpatentable. (They can, however, be granted a copyright.)

If by this point you are still in the running for a patent, your best bet— and costliest option—is to hire a pa­tent attorney. If the attorney cannot

tell you right off whether your inven­tion is unpatentable, he or she will recommend a patentability, or prior art, search.

The costs involved in obtaining a patent can be substantial (filing alone costs about $1500), so careful scru­tiny of the patent protection you can obtain should be done before you make a large investment. Ask the pa­tent attorney what alternative meth­ods you can use and whether they are cost-effective. For example, a patent­ability search can be conducted by a patent lawyer, a lay searcher, or yourself. However, a patent attorney is licensed to search, prepare applica­tions, and represent clients. A lay searcher, on the other hand, is limited to just that—searching.

Prior art search Regardless of who conducts the

search, the object is the same: to de­termine whether there has been (1) prior publication about the idea, either by you or by others; (2) public knowledge before the date when you first conceived of the idea (This is where your documentation starts to come in handy.); (3) a previous pa­tent issued for the idea; and (4) prior public use of the idea.

If prior art patents are discovered, you will have saved time and money. On the other hand, a search may in­dicate changes you need to make in your design to make it patentable.

If the patent search shows that you have a viable idea, you have just begun to fight. It may take anywhere from 11/2-3 years from time of appli­cation to patent issue. During that time, you may have to substantiate your work. For example, you may have to prove that even though you filed for a patent after someone with a similar idea, you conceived, built, and tested yours first.

Your idea will also be evaluated for

30 0278-6648/83/0200-0030$1.00 © 1983 IEEE POTENTIALS · SPRING 1983

utility, as well as whether it has features that*are unexpected, val­uable, or that will yield new results. These steps should not be seen as deterrents, but as added time to de­velop your idea more fully or to prepare your marketing strategy.

Let's assume that you've survived the above hurdles, and you've been issued a patent. You've still only won about 10 percent of the battle. In essence, a patent issue is a contract between you and the U.S. Govern­ment, which gives you a 17-year monopoly during which only you can make, sell, or use your idea, in ex­change for sharing it with the techni­cal community. Unless you are in the position to manufacture it yourself, you may want to assign or transfer ownership of your invention to a company. You may also want to license your right on an exclusive or nonexclusive basis. However, if you decide to assign title or grant an ex­clusive license, you lose all rights to your invention, except the right to receive royalties and to cancel the license if royalties are not received.

Choosing your targets Before you approach a company, it

is helpful to have a good, working model of your invention. "Working" is emphasized because it is not good practice to have to explain the short­comings of your device. If you can­not build a fully operating model, build something that proves the basic operating principles. Make it look nice, wipe off the grease, and remove the extra solder. Neatness counts.

The first reaction you can expect to encounter from a company is the NIH (not invented here) syndrome. To overcome this resistance, choose your targets carefully. Look for a company that needs your idea, one that is losing ground or is trying to improve its market position. Look for a company that is known for in­novation.- Business magazines, the business sections of major news­papers, and/or a stock broker can be sources of information.

Obtain a personal introduction to someone in the company if you can. If not, call to find out who is in charge of new idea submissions and address a letter to that person. If n o i one is designated, address the letter to the top person responsible for techni­cal development for the company or division where your idea would fall.

In regard to the initial letter, the tactics for patented and unpatented

ideas vary considerably. Your initial letter is a sales effort. You must get and hold the interest of the reader, and convince him or her that your in­vention can help the company. If you have obtained a patent, send a copy of it and draw attention to specific features by reference to the text and/or drawings. Be detailed.

The most likely response you will receive from a company is a form let­ter of agreement, which if signed by you, absolves the company of use of your idea except for patent infringe­ment. If you have a patent, the com­pany will quickly know what it can or cannot do. If you have a patent ap­plication, you may be able to broaden your protection to cover the direction in which the company may go. In either situation, you have a reason­able chance of protection if you sign the agreement. It's all right to let the company see the patent application. However, the claims, serial number, and filing date should be kept confi­dential until the very last moment before you sign a contract.

If you have not filed for or obtain­ed a patent, the initial letter is even more critical. You must be able to generate enough interest in the reader without disclosing technical details, so that the agreement you will be asked to sign will be waived or at least reasonably modified. This agreement would, at the least, require the com­pany not to use the submission unless it can show it had the idea before see­ing yours, or that the idea was known to the public anyway. This is critical because if the idea is not patentable, it means that it or a close facsimile of it was already known.

Recent inventions by private inven­tors include xerography; fluidics; in­stant photography; lasers; jet engines which actually go back to a Cartha­ginian named Hero; CAT scan; and X-ray imaging, just to name a few. The above discussion of the problems of obtaining a patent and selling an invention are meant to enlighten and not discourage. For every point I have made, someone probably did the opposite and made a pile of money. But, more people made money following the above.

About the author Howard L. Rose is a partner in the

law firm of Hall, Myers, and Rose. He has been actively engaged in the practice of patent law for over 30 years. Mr. Rose also holds a degree in electrical engineering. •

ROSE—WHAT T O DO WITH YOUR INVENTIONS 31