Dubious Inventor Resources #1, or, Dr. Phil and the Overestimation of the Power of the Provisional Patent Application

Syndicated television talk show host Phil McGraw, aka Dr. Phil, has made a career of pushing the boundaries of psychotherapy to include finances, dieting, and, now, intellectual property.

It just came to my attention that the good doctor has published an article on his website offering his unique brand of no-nonsense advice to inventors. Phil, who "worked in litigation for years and has experience with patents and intellectual property," also calls on his buddy A.J. Khubani, a big-time infomercial producer, to weigh in on the subject.

The bulk of the advice is solid, if a little obvious, truisms such as "make a business plan," " do market research," "be patient," and the like. The kind of advice that we can all agree on -- except for one little piece of advice from Mr. Khubani that strikes me as a little misleading and potentially damaging for fledgling inventors:

“Patents are the best way to protect your idea, but they take a lot of money,” A.J. explains, noting that a patent can cost $10-30,000. “The smarter way to do it is go online — USPTO.gov — and file for a provisional patent. It cost $105, and that’s it. You’ve protected your idea.”

I'm not actually interested in (read "qualified for") nitpicking all of the advice on the internet that pertains to intellectual property, but this one -- and I suspect it may have been taken out of context -- caught my eye because it reflects a potentially confusing part of the patent process that may be worth talking about a little bit here.

The problem that I see in Khubani's advice is that there is no distinction made between full patent applications and provisional patent applications, which is like making no distinction between appetizers and the main course.

Provisional patents are a relatively new addition to the inventor's arsenal, and they exist as a cheap and relatively easy way to establish the date of an invention and to tentatively protect the invention while the inventor evaluates its commercial potential. An inventor sends in a description of an invention, drawings if they're necessary to explain the invention -- and these don't have to be done to the same strict specs that full patent drawings have -- and a hundred bucks. The inventor then has a year to build a prototype, perform market research (like Dr. Phil said), try to sell the invention, and then, if all of that pans out, go to the trouble and expense of filing a full patent application.

In the old days (before provisional patent applications were given the green light in 1995) there were two ways to prove when something was invented: the inventor could either create and document the creation, with witness and all, of working prototype, or file a full patent. Neither of these options is particularly fast, nor easy to do on the cheap. Provisional patents enable inventors to take a year to evaluate their invention, and in the mean time, they can claim "patent pending" status on their invention. (Without the provisional patent application, it's illegal to do that.) If the inventor doesn't file a full patent application within a year, the provisional patent application expires, and the protection effectively ends.

And so we arrive at the point of this post -- filing a provision is not "it." For a successful invention, the provisional application is only the very beginning.

Dr. Phil seems, for the most part, to advocate a cautious approach to patenting. The provisional patent application as a first step fits nicely into this approach.

You may want to check out a couple of books that we have here at the library if you're interested in protecting an invention. Not that I think Dr. Phil is overstepping his area of expertise. Hey, if David Pressman wrote a self-help book, I'd probably buy it for the collection.

Kids' Invention Website from USPTO

The USPTO and The National Inventor's Hall of Fame worked together to develop a website to encourage kids to invent and learn about the patent process. The website has an area where kids (or patent librarians) can go through a mock patent prosecution.

Sometimes patent searching can be so complicated that it's nice to have an easy, interactive way to reinforce the concepts behind the process.

For more kid-oriented patent stuff, check out the USPTO's kids' website here.

**Update, 4/1**

I just came across fellow patent librarian/blogger Michael White's post about an invention contest for kids sponsored by Wham-O. The winner gets $2000, but I'd like to think the real motivation should be the prospect of designing the next Frisbee or Hula Hoop.

The Inventor's Notebook

It's fun to imagine the process of invention as something feverish and exciting, where inventors behave like Doc Brown from "Back to the Future." You know the routine: crazy-haired geniuses running around a cluttered lab, making calculations on the fly and stumbling upon life-changing discoveries.

The boring reality is that the best invention process is one that is controlled, systematic, and, particularly, very well-documented. As in every step of the way. As in good labels, diagrams, dates on everything, and careful technical prose describing the specifications of the invention, its usefulness, and everything else about it. As in finding two people (preferably not close relatives) who are not only willing to sign your notebook saying they witnessed the notes on that date, but who also understand the invention.

Why? Because if an invention has any value on the market, there's a pretty good chance someone will challenge the inventor to prove he or she invented it first. There are a few reasons that this may happen. A common reason is that two or more people often apply for similar patents around the same time. There may also be confusion about which member of a group working on a project invented what. Heck, somebody might even steal an idea and claim it as their own. In any event, it's always advisable to have a log of your invention development just in case.

It's also worth noting that if an inventor deducts costs associated with developing an invention for tax purposes, the inventor's notebook would be a good record in the case of an audit.

For more information about the inventor's notebook, check out Fred Grissom and David Pressman's The Inventor's Notebook: A 'Patent it Yourself Companion, available electronically through the library. (Library card required.)

Invention Marketing Scams

In a perfect world, the process of inventing would go something like this:

1. Inventor sees potential for technological improvement
2. Inventor develops useful device to achieve this potential
3. Inventor patents device
4. Inventor or company markets device

In reality there is an unfortunate step 2(b) that thousands of inventors get stuck in every year.

Invention promotion, marketing, and licensing firms are enough of a problem today that the U.S. Patent and Trademark Office has a process for publishing complaints against those that prey on inventors.

The scam is pretty simple: the company runs advertisements calling for inventors to submit their ideas to be evaluated for patentability. There may be an offer for a “Free Kit” or something along those lines. Representatives of the company give very enthusiastic evaluations and guarantee a successful patent grant. For this, they charge a nominal fee.

Then big fees begin, usually under the guise of marketing or trying to find a manufacturer for the invention. Inventors who spend thousands of dollars (or sign over a large percentage of their invention) for these services often discover that the marketing of their invention consists of nothing more than a tiny display at a trade show or a few form letters sent to manufacturers.

Federal law (35 USC 297) now requires such companies to disclose, in writing, the following information (from a USPTO brochure linked below):

"Get answers to these questions in writing from any promotion, marketing or licensing company wanting to help you. Helpful hints are given in the brackets.

1. Total number of inventions evaluated for commercial potential in the past five years by the Company. How many of those evaluations were positive, accepted by the Company. How many were negative, rejected by the Company.
2. Total number of customers, known by the Company, who have received a net financial profit as a direct result of the Company’s promotion services. What is the Company's success rate over the past five years [that is, the number of who made more money from their invention than they paid].
3. Names and addresses of all previous invention promotion companies with which the Company or its officers have collectively or individually been affiliated in the previous 10 years and what other names has the Company used in this or other states.
4. Total number of customers, known by the Company, to have received license agreements for their inventions as a direct result of the Company’s services. [lf the success rate is low, say less than 5%, then think about going elsewhere].
5. How many customers have contracted with the Company for promotional services in the past 5 years; excluding those who have purchased trade show services research, advertising or other non-marketing service: and excluding those who have defaulted on payment to the Company.
6. Is there an up-front fee and, if so, how much is it and what are you getting for it? How much will the complete process cost from submission of my invention to obtaining a patent and a licensing agreement? [Reputable firms have relatively small, upfront or other fees because they make their real money from successful royalty arrangements for the inventions they accept].
7. Has the Company ever been investigated by or been in trouble with the Federal Trade Commission, Better Business Bureau, any consumer protection agency or Attorney General's Office and if so, when and where?
8. Who selects and pays for the patent attorney or agent to do the patent search, patentability opinion and patent application preparation? [You should be able to select your own, because the attorney or agent represents you, not the Company].
9. Provide you with the names, addresses and phone numbers of five clients of the Company in your geographical area and copies of all contracts and forms to review [Do this before signing or paying any money].
10. Does the Company provide a written opinion of the "marketability" (that is, potential success) of your invention?"

Here's a copy of that brochure, also available in paper at the Patent and Trademark Center. (PDF)

Beware companies that make money off of inventors rather than inventions.

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For more information:

Pressman, David. "Patent it Yourself." Berkeley: Nolo Press, 2006. Click here for electronic version. (Library card required)