FINDER'S FEE

  • The path all too often is: Idea, prototype, pay lots of money to lawyers to write & file your patent application. Years later the examiner rejects your application for lack of novelty because the lawyer's interns didn't do their search well enough. Or you do your own incomplete search (or none at all) and later get sued by the actual patent holder for infringement because you tried to sell a protected product. Either way, the inventor eventually runs out of money, and fewer good new ideas ever get to market.

    The path should be: Idea, prototype, lock down a version that works, pay for a thorough patent search; if idea not new, move on to next good idea. Then do another search; if idea is new, get someone to write & file a properly written provisional application. Make & sell your product; if you're making money at end of year, file the completed patent (using the provisional as a solid foundation); if not, move on to next good idea. Repeat until successful.

    The latter path is much less risky & much more affordable. And you will be taken much more seriously by potential buyers/investors/partners while disclosing your idea if you have actual patent pending status, instead of just a prototype and/or a profound & abiding belief in the value of your ideas.

    Inventive Solutions was created over 20 years ago to help inventors follow this more optimal path. Our goal is to reduce uncertainty, improve application quality, lower costs and ultimately help inventors get useful new products to the marketplace.

    > The Way to Affordable Patents (two flowcharts)

  • Without some form of intellectual property, pending or registered, you risk that someone, some company, or some country will appropriate your invention, and claim it as their own.

    You could end up in court for years, fighting for what was yours to begin with, only because you neglected to take the necessary steps to stake your claim properly and as early as possible. This only happens when you invent something valuable.

    It is up to you to prevent unwanted disclosures & to make sure that you have at least some legal & documented claim to your invention filed, as soon as you have the best working version of your idea ready for production.

    View the slideshow for a more detailed explanation of the issues involved:

    > Protecting Your Invention 101 slideshow

    > Slideshow Notes

  • A utility patent certifies the inventor's exclusive right to make, use, or sell a specific product or process. Patentable items include machines, mechanical devices, methods of manufacture, matter, software, etc. Patents usually last for a term of 20 years as long as maintenance fees are paid.

    > Download USPTO booklet on Utility Patents

    A design patent or industrial design certifies the inventor's exclusive right to make, rent, or sell the aesthetic qualities of a functional article. Examples of designs include the shape of a bottle, the configuration of an office chair, the architecture of a building, or the ornamentation of a car. Designs are usually protected for 10 years, and are less expensive to obtain than utility patents.

    > Download USPTO booklet on Design Patents

    Preliminary patent pending status can be obtained by filing a US provisional application for a utility (not design) patent, or by filing an incomplete Canadian patent, both which give the inventor up to a year before they must complete their basic filing. There are no preliminary forms of patent pending status for design patents or industrial designs.

    > Download USPTO Brochure on Provisional Applications

    > Download USPTO Slideshow on the Basics of a Provisional Application

    > Download USPTO Article on the Provisional Application for Patent

    In the US, one may file for a utility patent on products or processes & a design patent to protect ornamental features of products. In Canada, an inventor can file a patent application to protect any functional mechanism or process, and an industrial design to protect any ornamental feature of an item.

    > Link to CIPO Guide to Canadian Patents

    > Link to CIPO Guide to Canadian Industrial Designs

    Trademarks protect words/symbols branding a product/service & last 10 years. Copyrights protect written, broadcast & digital works, music, games, artwork, software, photos, sculpture, performances & architectural designs & can last over a century. Trademarks can help protect an invention that is not patentable.

    Plant patents (& provisionals) are also available for new species. However, there are only a few areas where Inventive Solutions must respect the need for specialized & current knowledge of a field. For this reason, we are not able to write or file applications for plants, software or biotech.

    The Patent Cooperation Treaty (PCT) standardizes applications & allows the same document to be reviewed & submitted to multiple countries for examination. Successful preliminary examination & search results usually expedites national filings. PCT filings can be based on provisional applications.

    For more detailed information about international filings, go to:

    > Filings on the Services Page

    NOTE: Inventive Solutions specializes in providing comprehensive provisional applications for patents so that an inventor still has money left to spend on producing products for the market, instead of sinking everything into up front legal costs. We are neither patent agents nor lawyers, and therefore cannot represent clients during the examination phase of a utility application. However, after 20 years writing applications, we are exceptionally good at what we do, so everyone benefits.

  • Your invention must be new, theoretically new in the entire world, but practically, new in the jurisdiction in which the patent is filed. If it's in the public domain, it's not new, so anyone can produce it. If the owner's patent is granted and you sell their invention without licensing, you can be sued for infringement.

    Your invention must have utility, or be useful, which means it must improve the state of a particular field, and you must be capable of demonstrating that it functions as claimed. A patent application refers to prior art (older inventions) to make the case for an invention having utility.

    Your invention must be non-obvious, which means that someone skilled in the same field would not declare it too obvious. This barrier is the most subjective, contested, and is the core purpose of an application: to prove a sufficient inventive leap forward.

  • The goals of public disclosure are to enable the inventor to attract investors and make sales. But investors will not invest if you haven't applied for intellectual property rights to your invention, and sales could be seized if your are sued for infringement by other patent holders. The more valuable your invention, the more you risk without protection.

    In some countries, patent rights may be immediately and permanently denied if anyone makes any public disclosures or publications about the invention without prior patent application on file with the patent office.

    Public Disclosure is any provable (enabling) public use, sale, or publication about the invention by anyone prior to filing a patent application. A year grace period may apply in some countries, see below. The more valuable your invention, the more you risk without protection.

    A disclosure may not be considered 'public' if the inventor/owner takes appropriate steps to: ensure that confidentiality is explicitly understood when revealing details about their invention to other parties (labels, NDAs), and by preventing disclosures to anyone else. (safes, encryption...)

    Once the core invention has been established, it is imperative that inventors file for some form of patent protection before publicly disclosing anything critical about their invention, or face the risk of another inventor filing a patent for the same idea, and thereby gaining priority claim over their invention.

  • In Canada, there is a grace period of up to one year, which allows an inventor to disclose their product to the public. Before it expires they must file for a patent or forever lose the right to their invention because it will have entered into the public domain.

    Every effort should be made by the inventor to file some form of disclosure with a patent office as soon as possible. If sufficient information is filed, via a provisional (US) or incomplete application (CA), then there is a record of who got there first. (priority)

    The America Invents Act (AIA) now requires an 'affirmative act' (pre-filing) to obtain the 'inventive publication grace period.' Diminished US grace periods have become fraught with traps & loopholes, and may be amended or overturned by the courts in the future.

    Until a more predictable use of grace periods is achieved by the US, it is foolish to risk losing patent rights by relying on grace periods to postpone filing an application if public disclosures are planned. One of the reasons why provisional applications exist is that they ensure priority if thorough & relevant.

    Well written comprehensive provisional applications are the optimal method to initiate the application process. They avoid the higher initial costs & amendment limitations of a utility application, including the unpredictable risks of grace periods, & allow one to focus on product marketing & sales, while securing patent pending status.

    For more details about provisionals:

    > View the Documents page

  • Canada is a "First to File" (FTF) country, as are most countries, and only grants patent rights to those who file the patent first. This may not necessarily be the earliest inventor. Parallel invention is also possible, so it is best to file as soon as ready.

    A Canadian inventor who discloses their idea to the wrong person (or it's stolen), might end up being sued by that person for infringement, because that person filed a patent they had no right to, but they now legally own the original inventor's idea.

    The US is a "First Inventor to File" (FITF) country, which only accepts for examination the patent disclosures of the first declared inventor to file an application. The actual inventor may contest this via interference, an expensive & time consuming, but sometimes necessary process.

    If a Canadian files a US provisional, or an incomplete Canadian patent, yet discloses their idea to a third party who tries to file for their patent, eventually the thief will be denied the patent because it will have been derived from a previously filed preliminary application.

    US citizens can sue patent infringers for triple damages, and the crime is a felony. While infringement is a tort in Canada, damages can include complementary sales, price erosion, lost profits, legal fees and start from publication without notification.

    Because filing in Canada may require more initial commitment & expense, one option is to file a US Provisional as soon as possible after the invention has been reduced to practice. A CA patent application can refer to an unexpired US provisional. (<1 yr)

    US Provisional applications may be filed serially & combined to include newer ideas or better solutions as a product is developed. Comprehensive provisionals provide a more affordable way for the inventor to initiate the patent process as early as possible.

  • If an inventor actually needs to disclose their invention to another person, and there is no implied expectation of confidentiality, such as when they hire a designer or draftsman, then it is critical that a non-disclosure agreement be signed by the person prior to viewing the invention.

    All enabling disclosures about unpatented inventions need to be clearly & consistently identified as CONFIDENTIAL & PROPRIETARY. Anyone can rightly claim that they didn't know something was proprietary, or a trade secret, if it was never identified as such.

    Require that everyone who has access to an invention or valuable trade secrets understand that they are confidential and proprietary, and that they should not be disclosed to anyone without written authorization from the invention owners.

    In Canada, a non-disclosure agreement is governed by commercial contract law, where penalties are assessed by the value lost by the breach.

    In the US, a non-disclosure agreement is governed by Trade Secret legislation, and violations are charged as a felony crime, as well as rewarding damages for losses.

  • Basic information about the patenting process is seldom taught in high school and is often glossed over in technical or business courses. Because budding inventors have had little access to accurate information about the patent process, they tend to believe the spurious claims of invention marketers.

    Invention marketers offer to evaluate, protect & market your idea for fees at least as high as legitimate patent practitioners. However, they don't do patent searches, file applications, do any marketing & often do not even care to understand the disclosed ideas correctly.

    The US Federal Trade Commission has many pending lawsuits against invention marketing promoters, but these cases take so long that the companies being sued just change their names or companies and continue to defraud inventors. Avoid the scam.

    > Link to List of current USPTO Invention Promoter complaints.

    > Download USPTO Scam Prevention brochure.

  • PATENT COSTS VS. SALES INCOME

    Two questions inventors seldom ask themselves are:
    Why do I want a patent? Is this the right invention to patent?

    Do you just want to be able to brag that you're an inventor because the patent certificate says so? Or do you actually want to put a product on the market that both generates sales income above the costs of patenting and maintenance fees, and improves the state of the art in some significant way? In other words, do you want to sell useful products that make money?

    If your invention might end up in a dollar store in 6 months, then you can't justify patent costs, even when substantially lowered by employing Inventive Solutions.

    If, however, your invention solves a problem that is normally expensive to work around, and other solutions are more costly or difficult to implement, then you will likely have a market where you can generate sufficient revenue to justify the difficulties and challenges.

    > Download "Can You Make Money...?" Discussion Paper

    Inventors should consider these long-term issues before they commit to a particular invention. They may discover that a different invention more realistically justifies all the effort and expense they will need to protect, manufacture, market, and sell it.

  • Once an inventor has developed an idea far enough that it can be described clearly and concisely, it is time to decide whether it is valuable enough to take to market. Market research is the responsibility of the inventor, and they are usually best suited to decide if their product is the best solution for a particular field.

    To know what your competitors are doing in the market, look at their patents. A lot of market research can be generated from Inventive Solution's Patent Search Report (PSR), but the inventor/owner/investors should still do their own preliminary market evaluation.

    Market research is looking at competing products & evaluating your solution against their existing market share. Can the advantages of your unproven product overcome a customer's natural resistance to novelty & capture enough market share from similar products?

    If you have researched your market thoroughly, and have done the honest evaluation necessary to predict that your product might be successful, then it is time to see if it is original & patentable. At this stage, you should ask Inventive Solutions to begin a Patent Search for you.

    Another timing issue is how quickly you intend to file the application after successful search results. If you delay too long after the search, other new applications might be filed that might eventually invalidate your application. It is best to have the most current search results when filing an application.

  • So you've had a thorough patent search done for the jurisdictions where you intend to sell, and the report shows nothing close to your idea. How quickly do you need to file an application?

    Deciding when to file depends on: (1) public disclosures, past or planned (2) whether your product is fully developed yet? (3) can you afford patent services/filing fees? (4) are any competitors planning similar filings?

    It is usually best to file for some form of patent protection ASAP, but it can be a good strategy to wait until your product is more fully developed. Applications are usually publicly posted 18 months past filing. (6 months after a provisional expires)

    Timing decisions need to be made by inventors & trusted advisors, or a company board of directors & their technology developers. Knowledge of the prior art of competitors is often only one part of the information available to decision-makers.

    The advantage of filing provisional applications is that you can continue to refine your product. If you discover additional or better solutions, you can still file this information without losing your place in line for the original filing. The new matter gets the later filing date, and all provisionals are included in the final application, and at a much lower cost than later in the process.

    > View related details on the Documents page

  • Prototypes are no longer necessary because applications should be detailed enough that anyone skilled in the same field could recreate the invention based solely on the disclosure document. However, prototypes can help the inventor refine & demonstrate their product & maybe help to convince investors to part with money.

    The scale, complexity & implementation of an invention help determine the need of a prototype. A wrench is easier to build than an automobile. The key novel features of a product may be instructive to build and you might discover errors not evident on paper.

    The scale, complexity & implementation of an invention help determine the need of a prototype. A wrench is easier to build than an automobile. The key novel features of a product may be instructive to build, and along the way you might discover errors or improvements not evident on paper.

  • You can only license intellectual property that you actually own. In order to establish an idea as property, you must register a patent for an invention/design, or a copyright/trademark for creative works. A patent/design/provisional "application" cannot be licensed.

    Negotiating licensing agreements with a manufacturer & only a pending (unexamined) application in hand, will likely not get you in the door & may get your idea stolen. NDAs may not protect you, nor will a company be likely to sign one. Negotiating without a lawyer is also very risky.

    While a provisional application is an inexpensive way to start the patent process while trying to sell product and/or get investors, it is not examined & is not a registered patent or IP that can be licensed. Finding out if an idea actually qualifies for a patent will take years.

    Lawyers negotiate licensing agreements that can cover IP costs, exclusivity, jurisdictions, duration, designs, services & royalty terms, including payment schedules. If you attempt to negotiate a licensing agreement without a lawyer, a licensee will likely take advantage of you. Lawyers are expensive, but they often save you from making even more expensive mistakes on your own.

    Only if your idea is extremely valuable, with at least an application on file & no public disclosures, will a company want to talk with you. For the rest, you will need a patent & probably proof of its value in the market before you can license/sell it to a company.

  • The recent downturn in the economy has led to layoffs and reduced productivity, but not all is lost.

    When companies have little to do, but some in house resources, they can invest in research & development with the aim to inventing new products so that when the economy recovers, they will have a head start on their less foresighted competitors.

    When individuals inventors are learning that people are having to make do with less, the ones that find cheaper solutions to age old problems, can still turn a profit. Necessity is still the mother of invention.

    > Download "Now Is A Good Time To Invent" press release

    Focus on the solutions, not the problems.

  • FREE CONFIDENTIAL CONSULTATION

    For any detailed discussions or email disclosures of an invention, a mandatory Non-Disclosure Agreement (NDA) must be signed first. We will need basic contact info about the inventor, and a general description of the field of the invention to put on the NDA. Copies available to both parties.

    Free confidential consultations can take place by phone, email, in person, or at one's place of business if local. If travel is necessary, it will usually depend on availability, reimbursement and other commitments. Onsite interviews are necessary if that is the only way to assess the scope of the invention, and when email disclosures are shown to be inadequate to tell the entire story.

    Minimum information for a productive consultation should include enough detail about the invention for a preliminary obviousness evaluation, and to prepare an estimate of the search.

  • During, or soon after the consultation, Inventive Solutions will give the prospective client an estimate of the duration of the project, based on the information provided. For a patent search, estimates commonly range from 6 to 10 hours, while a provisional with drawings commonly take from between 15 to 30 hours, depending on how much information the inventor supplies, and its quality. Duration of patent searches for multiple jurisdictions does not multiply by their number, but is usually a matter of a few additional hours, depending on complexity of the invention.

    Once a verbal agreement is made, a project agreement is drawn up which includes the estimate, the work required, jurisdictions searched, filing fees included, etc. and must be signed & dated by both parties to be valid.

    With new clients, a deposit is mandatory, and the work does not begin until it is received in full. Also with new clients, final search reports and documentation will only be released upon full payment of outstanding invoice. With repeat clients in good standing, a deposit is waived, and invoices are sent upon project completion, and are due in 15 days.

  • For an NDA, basic contact info about the inventor or company, and a general description of the field of the invention. (no detailed disclosures until NDA signed by both parties)

    For a Patent Search, we will need a detailed description of key functional elements of the invention, information which may be disclosed by phone discussion, email, or onsite interview. Any relevant patent numbers or information about competing products may also be useful.

    For a Provisional application, we will need as much current information about an invention as is known to the inventor. If the product is still in development, it might be best to postpone writing until the optimal version is discovered. But if time is a factor, or there are multiple related solutions, then complete information on each variation should be available. As discussed in that section, drawings already available to the inventor can be used as the foundation for patent drawings, and will need to be available before the writing process begins.

  • Inventive Solutions can document various patent, provisional and design applications and reports for an inventor or inventive company:

    > View details on the Documents page

    Inventive Solutions can also provide patent and design searches as well as drawing and graphic services:

    > View details on the Services page

    Inventive Solutions offers various filing options and strategies to the inventor:

    > View Filing details on the Services page

    For a better understanding of the terminology used by patent practitioners and the basic language used in protecting inventions:

    > Visit the Glossary on the Patenting page

  • Independent inventors who need a more economical and reliable way to protect their ideas while seeking financing, investment partners, licensing arrangements or starting production.

    Companies that invent new products and find they don't have the time, manpower or resources to document their intellectual property, until their competition sues for infringement. (In Canada, patents go to the first inventor to file, not the first to invent)

    Patent attorneys/agents who prefer to focus on the more interesting aspects of patent work, and who appreciate the increase in quality and comprehensiveness when a certified patent paralegal with technical experience does the preliminary documentation.

    Venture Capitalists who need to understand a new invention for marketing or licensing presentations, as well as to protect their investment by ensuring the most economical means of infringement protection.

    Inventive Solutions can help the independent inventor or inventive company protect their invention by providing provisional application documentation & filing services that are approximately one fifth that charged by traditional patent practitioners.

    > View details on the Services page

    > View details on the Documents page