Intellectual Property (IP) Journal of the PTDLA
Official Journal of the Patent and Trademark Depository Library Association
ISSN: 1534-1143
Donald Grant Kelly
Licensing Consultant and Registered Patent Agent
DgrantK@aol.com
Inventors working alone or in small teams have been responsible for innovations that have blossomed into major industries and created millions of jobs. This is just as true today during the information revolution as it was during the inventors’ heyday of the industrial revolution. Independent inventors unquestionably remain key to America’s economic well-being. These inventors, however, must struggle with an innovation system that is fraught with hurdles and pitfalls. Despite a modest army of assistance providers, independent inventor output appears to be diminishing, especially when compared to the rapid increases demonstrated by corporations. On close inspection, it appears that inventors’ most common mistakes precluding their success have less to do with problems with the system or lack of helpful information, than with some self-limiting personal traits and habits. Inventor assistance providers should take this into consideration when counseling or mentoring inventors.
inventor, independent inventor, patent, intellectual property, common mistakes, advice, support organizations, inventor assistance providers
This paper focuses upon the independent inventor population in the United States. It identifies and explores the most common mistakes they make in attempting to bring their ideas and products to the marketplace. The documented mistakes were assembled from informal interviews with inventor assistance professionals in libraries, patent law firms, small business support agencies, licensing and marketing firms, as well as from discussions with inventors. Information on patenting trends was extracted from official US Patent and Trademark Office records.
Donald Grant Kelly is an intellectual property licensing consultant and registered patent agent. He also is an adjunct professor at Franklin Pierce Law Center and visiting lecturer at the MIT and Fordham University Business Schools. Don Kelly co-authored The Inventor’s Master Plan and was the founding director of the Independent Inventors Program Office at the US Patent & Trademark Office (USPTO). His office is in Alexandria, VA and he can be reached at DgrantK@aol.com
Inventors are who they are because of an incurable penchant for stepping out on their own; breaking away from the crowd; taking the path less traveled. Inventors pride themselves in being, for lack of a better term, independent.
Just how many independent inventors there are out there is largely unknown, since the principal measure at present reflects only their patenting activity.1 It is not unreasonable, though, to suggest that their numbers are legion. Nor is it unreasonable to assume that their positive impact on the American scene has been immeasurable. However, despite the potential value of their contributions, 2 inventors still find themselves struggling against the odds. 3
Swimming almost always alone and well beyond the safety nets, independent inventors throw themselves against the breaking surf. They sometimes rise above and beyond the crashing waves, but more often they are overwhelmed and beaten back. The innovation process has never been an easy one, and the increased legal complexities and associated expense have done nothing to diminish the challenge.4Innovative people appear destined always to have more dreams than energy or time to pursue them.
Over the years, a variety of initiatives have offered a helping hand to independent inventors. The most sweeping and effective of these has come in the form of a remarkable network of Patent and Trademark Depository Libraries (PTDLs). Trained, skilled and dedicated library and information professionals at academic, state, public and research libraries all across the nation deliver a rich assortment of supportive services that include free use of patent and trademark search services, library collections and patent resource materials and facilities.5 PTDLs provide inventors with easier links to additional sources of support and experts at the USPTO, as needed.
Another valuable resource for inventors can be found in an array of regional inventor-run organizations. These groups offer networking, educational programs and mentoring. The best of these groups are allied under a national umbrella group known as the United Inventors Association.6 Other helpful resources include more than a thousand Small Business Development Centers (SBDC's) in cities everywhere, coordinated by the Department of Commerce’s Small Business Administration (SBA). A typical SBDC is staffed with a cadre of business and product development experts, often bolstered by experienced mentors from the Senior Corps of Retired Executives. 7
In 1999, the USPTO weighed in with another national outreach initiative, the Independent Inventor Programs Office. This Office provides workshop and Internet-based resources directed toward educating the novice inventor/entrepreneur and improving their communications with the USPTO.8 Other Internet-based assistance and mentoring programs currently exist as exemplified by the popular Patent Cafe, Inc. and Inventors Network web sites. 9
More recently, an ambitious alliance of private, public, and university leaders has set about the establishment of a national inventor/innovator education and nurturing center. This center will focus on all aspects of creativity in technology and the arts. The initiative is based in Central New York State where it is affiliated with the Rothschild US Patent Model Museum.10
Dedicated professionals working on behalf of these organizations and others like them often are referred to as Inventor Assistance Providers (IAP’s). 11 In terms of positive contributions, these IAP’s have been nearly as significant to the innovation process as inventors, themselves.
Despite the considerable amount of outside assistance available to them, inventors’ chances for success remain limited. As will be seen, the most common threats to their success come from within.
As a learning exercise, an informal survey was undertaken to identify the most common mistakes made by individual inventors as they attempt to capitalize on their inventive discoveries. These “gaffs” have been related and confirmed repeatedly by library professionals, academics, patent attorneys and agents, incubator managers, licensing experts, venture capitalists, and more particularly by experienced inventors and entrepreneurs, themselves. They are not, incidentally, viewed as the most serious among the mistakes that were discussed, simply the most common.12
These are, it will be seen, common mistakes that merely reflect human frailties recorded at least as long ago as the time of the ancient Romans. Interestingly, the early Romans' keen observations13 of human nature ring as true today.
Inventors, it is hoped, will view this collection as constructive and, more importantly, preemptive. As a useful by-product, these Ten Most Common Mistakes will serve as a desktop reference for those IAP's whose life’s work involves extending a helping hand to struggling inventors.
For most novice inventors, this is less of a mistake than it is an annoying habit. Captio pretii embraces the common fallacy that the inventor's brainchild is, by virtue of its existence, alone, a thing of great value. Buoyed by ardent endorsements from relatives and loyal friends, the inventor is boosted to soaring expectations of monetary returns. Inventors are decimated when investors fail to acknowledge that the "baby is beautiful," or when patent attorneys decline a golden opportunity to invest their time and expertise on contingency.
Ideas, it has been said, are a dime a dozen, and even that modest valuation is often exaggerated. To enjoy value, the invention must be reduced to practice and a market niche found or created. Intellectual property valuation is a challenging and demanding profession, one that requires knowledge of the law, market competition, social and economic trends. At the end of the day, the invention will bring only as much as a willing buyer will pay.
Inventors must resist their desire to seek out those who will embrace their view about baby beautiful. Quite the opposite, they should turn to those who candidly whisper that the baby is, indeed, somewhat ugly; and follow up by seeking constructive comments as to why this is so. All such discussions must be under guarded conditions of confidentiality, so as to avoid another of those common mistakes.
Even the smallest "slip of the tongue" can cause an inventor one of the biggest headaches. The compulsion to talk about one’s invention is difficult to overcome. Revealing the invention under the wrong conditions and at the wrong time along the innovation pipeline can prove disastrous. Besides, the reactions and opinions of others in many cases will be irrelevant to the inventor's purpose.
Under US patent law, discussing or writing about an invention during the grace period before filing will not preclude a patent grant, but in most cases the disclosure is unnecessary. Until the patent is actually granted, there is no real protection.14 And it is important that the inventor learn very early in the process that the grace period afforded under US law, 35 U.S.C. Section 102 (see Appendix L of MPEP), has no counterpart abroad.15 Thus, with a simple slip of the tongue, secrets escape. Domestic and overseas patent rights can be scuttled.
Does it matter that the loquacious inventor did not know better? The answer to this question lies in the well-worn Latin phrase that follows.
Essentially, this warns: "Ignorance of the law is no excuse." This ancient observation, as applicable today as ever, could have been invented for independent inventors. A vast array of rules and laws permeate the arcane world of intellectual property protection. Inventors struggle to cope. The USPTO can and does wave a rule or bend a regulation where honest mistakes are involved, but the laws or statutes are inflexible.
Untimely disclosure of an invention, as discussed above, is a typical example of the ignorance issue. Another mistake, one often made by self-help patent applicants involves the filing of a late response to a patent examiner’s requirement. In most cases, and with the payment of requisite fees, a period of up to six months can be taken to respond to an examiner's Office Action. Even a single day’s delay beyond that period is not tolerated; the outcome being a holding of application abandonment.
"But wait," pleads the inventor, "I was busy reading my File-it Yourself Handbook." Overcoming the abandonment holding will be a daunting and often impossible task.
Untimely or non-payment of patent maintenance fees is another frequently occurring example where inventors lose potentially valuable rights because of lack of knowledge of the requisites. 16
Mistakes chargeable to Ignorantia, are in no way limited to the arcane world of patent procurement and maintenance, but instead can pervade the entire innovation-to-commercialization process. Inventors often believe they can cover all the bases, hoping to finese the things they do not know or understand.
Over-extension can be a grave mistake as Roman poet Virgil wisely observed:
"Everyone cannot do everything." A deep pitfall for independent inventors resides in their stubborn unwillingness to acknowledge their own limitations. After all, they swim alone, far from the madding crowd…and by choice. They have an admirable can do attitude, but eventually learn there are things they cannot and should not do, given limits to talents and skills.
While inventors may wish to take flight on their own wings, or alis volat propriis, staying aloft generally requires them to draw upon a wide array of resources. Driving a product to market calls for a range of knowledge and skill sets few individuals possess. Today's entrepreneur must acquire sound advice in areas of business plan development and financing, tax laws and liability, engineering design, scientific and technical standards, intellectual property protection, off-shore and domestic manufacturing, license negotiation, marketing and product branding…the list is endless.
Finding resources and learning where they fit into an innovation master plan commands a great deal of research and study, something many inventors try to avoid, and this can be another serious mistake.
"The homework is never finished." - - not a welcome observation for anyone of us. Hitting the books can be an onerous task, especially for the handy craftsman or technologist who, incidentally, is among the last people to study "instructions for assembling" or "guidelines for operation." Once they find themselves crowded in a study carrel with a stack of recommended reading, inventors are quick to realize that coming up with that invention was the easy part.
But, if inventors wish to be players, they have to learn the game. They need to embrace the innovation process and all those things that make it work. They must learn about the competition, funding options and sources, prototyping and manufacturers, business plans. And, they will have to study the patent file obtained from a carefully conducted patent search- - a task that will involve days or weeks of studying patents that are related to their invention. At this stage, the services of Patent and Trademark Depository Libraries (PTDLs) are critical to the success of an inventor in this innovation process.
Often, this confrontation with the world of documentation proves pivotal. PTDL staff, having invested a significant amount of time with an inventor-patron, guiding her or him into the electronic patent stacks, will sometimes return only moments later to find their patron is nowhere to be found.
It is a mistake, of course, to avoid this homework. It also is a mistake to assume that it is ever finished. The USPTO, after all, issues thousands of new patents every Tuesday morning.
In some cases, unfortunately, an innovator's aversion to mind work, bookwork, and homework may be symptomatic of a more serious problem, one that can be particularly defeating for those who would invent tomorrow.
As one might expect, the Romans had a phrase for this, as well.
"One must steer clear of the wicked temptress, laziness." As a personal trait, the tendency to put things off is widely shared. Where inventors and entrepreneurs are concerned, however, procrastination can be a fatal liability.
Diligence is the hallmark of the invention-innovation process. Unqualified allegiance to timeliness is mandatory in patent application proceedings. Close attentiveness to schedule pervades every aspect of the entrepreneur's life. A prospective business plan for what will be done means little without the when. And the when quickly can become never if the inventor/entrepreneur spends too much time frolicking with this wicked temptress.
All too quickly for the chronically procrastinating inventor, dreams of what could be can fade to what could have been.
"I thought of that years ago," sighs the would-be inventor, "but never got around to doing anything about it." How many times is this whispered in the aisles at invention expositions and uttered by viewers of new products broadcast by QVC?
Assuming that the successful inventor will be a diligent self-starter, where is one to begin? Many will say that to begin the process without a plan is yet another self-defeating mistake.
"A wise man doesn't set sail without a map." Independent inventors too often fool themselves with a dream of success based on a simple four-step progression: 1. Get idea. 2. Patent idea. 3. Await offers from clamoring investors. 4. Carry money to the bank.
Missing from this imagined sequence of events, among other things that relate to reality, is the plan. Invention is a business opportunity, nothing less, and nothing more. Business demands a plan; all decisions and steps taken toward winning an eventual profit must be consistent with the plan.
For hundreds of years, effective plans have reflected the quis, quid, ubi, quibus auxiliis, cur, quomodo, et quando. These of course are the who, what, where, with what, why, how, and when. Planners explore the competition. They set goals in a timely manner and they leverage alliances.
And speaking of alliances, there are some that the inventor will do well to avoid. In echoes of Virgil we still can hear his stern warning:
"Inventor, beware. There's a snake in the grass." Unfortunately, scams and frauds are everywhere; and the invention-to-market business is no exception. Scurrilous invention promotion firms take advantage of unwary inventors by the thousands every year. Their promise to "help" is enticing. Their "generous" offers might include: a market evaluation of the invention; filing for invention protection from USPTO; or broad exposure of their inventions. For a price, all this is gladly performed, always with a sizeable front-end payment.
Following the firm’s boilerplate evaluation that, without exception, joyously proclaims the invention to be unprecedented and quite extraordinary, the lucky inventor is pressed into hasty action. This action begins and ends, of course, with a visit to the inventor's checkbook for another hefty pre-payment for all the good things to follow.
Not only is the evaluation a hoax, but the filing with the USPTO involves no more than a Disclosure Document. The broad exposure promised by the firm involves only a thick book filled with similarly extraordinary inventions, sleepily displayed at a trade show.
"What's that? Can't pay?" inquires the slithering anguis, "Don't worry, we've got an extraordinary charge plan."
These scoundrels call to mind another ageless expression:
As colorful in its choice of words as it is powerful in making its point, this is an apt and timeless admonition to struggling inventors and entrepreneurs everywhere. With all due apologies, a somewhat raw translation reads: "Don't let those bastards wear you down."
This graphic advice might have been invented with those scam perpetrators in mind. But, it refers here to the inventor's more subtle and pervasive detractors, those naysayers, who would appear to mean well, but at every turn are muttering with grave authority: "It can't be done." or "It'll never work."
When the inventor has done it and has shown that it does work, these are same authorities who will declare: "It's already been done." Among their tools for success, innovation pioneers must include grit, determination and an ample supply of patience. A fine example of these qualities at work is found in the remarkable story of Chester Carlson. In his words,
"The time scale of invention is a long one. Results do not come quickly. Inventive developments have to be measured in decades, not years. It takes patience to stay with an idea for such a long period." 17
So, a tragic but common mistake is that inventors may become worn or discouraged, and choose to give up along the way. Turning back may be a conscious and even dramatic decision. Just as often, the decision may be subconscious or passive, a putting off, or lack of follow-through on crucial aspects of the process.
"There is no mistake so great as the mistake of not going on."18
An elegantly persuasive statement, but one many may argue. The reality is that things are always relative. For some, a decision to give up calls for a weighing of the costs of hanging on against the costs of hanging up. For still others, the costs are measured in retrospect, by way of regret since some mistakes might not have been so apparent at the time.
All this leads to the final mistake of “the TEN,” one not often discussed and rarely written about. It is, however decidedly common among today’s inventors, just as it was among our friends of ancient Rome.
“Clever inventor, lousy partner.” No list of common mistakes would be complete without this reference to the impact of inventors’ passionate pursuits on family and loved ones. Any spouse, significant other or close friend of the typical inventor/entrepreneur who reflects on this phrase, is sure to experience a painful playback of personal conflicts.
Stalking the inventors' workbenches and the entrepreneurs' start-up lab is yet another wicked temptress - - the American Dream.
Breathing a concept to life, pulling a business together and pushing the idea to market…this is the stuff of legends. Long days slide into nights; power meetings replace pleasant family dinners; weekends at the desk mean another missed soccer memory; each frequent flyer mile, one more mile from home.
Distracted by the thrill of the chase, impassioned innovators too often look back to see that they have swum far beyond their most critical lifelines. To be successful over the long haul, the inventor/entrepreneur must keep the family, friends and loved ones on the corporate team.
No surprise, but the finding here is most certainly that: Sub sole nihil vovi est. "There's nothing new under the sun."
To help the inventor/entrepreneur, a modest army of IAP’s is deployed across the country. Despite their best efforts independent inventor innovations are facing a slow decline. The source of inventors’ difficulties, however, is largely personal and this is reflected in the nature of the mistakes they make.
The most common of those mistakes mirror those made in another world and time. Those among the readers of this paper who are themselves IAP’s should draw guidance from the powerfully succinct admonishments of the Roman scholars as they addressed their own contemporaries.
The implicit advice that emerges from each of “THE TEN” clearly goes beyond the “how to” and “where to” counseling traditionally dispensed by IAP’s. Inventors must be told, with all due respect and in the most constructive way, that they are their own worst enemies. The ultimate objective would be to counsel inventors against mistakes of human nature, thus enhancing their chance for success, and Society’s opportunity for enjoying the remarkable fruits of their hard work.