A creative alternative-Inventors don’t need costly help to get a patent

Not long ago, inventor and author Richard C. Levy decided to
put invention marketing services to the test. He set out to invent
the most impractical product possible, with the sole intent of hearing what an invention marketing
company thought of the creation.

By Jeffrey Steele
Special to the Chicago Tribune

His invention: A container to keep a single strand of uncooked spaghetti fresh. When he finished
the prototype, a long, very thin clear plastic tube with red plastic caps on each end, he called an
invention marketing company to discuss his creation with a firm representative.

"And when I described it on the phone, he said, `I think you’re on to something,’" Levy recalled
with a laugh. "And then he asked me for $600 to get the ball rolling. There are several steps you
have to go through, and by the end I would have been several thousand dollars lighter."

Of course, Levy, the Washington, D.C.-based author of "The Complete Idiot’s Guide To Cashing in
on Your Inventions," thought he knew, before he called, how the inventor’s service rep would
respond. But thousands of would-be inventors aren’t as savvy. They’re not aware many
invention marketing companies promoting their services through direct mail, TV and radio ads
accept virtually any idea that comes through the door, Levy said.

That assertion is confirmed by Joanne Hayes-Rines, publisher of Inventors’ Digest, a 17-year-old
Boston-based national magazine for independent inventors. "They never saw an idea they didn’t
like," she said of many invention marketing services. "And the more money in your bank account,
the better they like the idea."

While many inventors are tempted to seek a "one-stop service" to help them patent and bring their
inventions to market, experts point out that most invention marketing firms provide little in return
for upfront fees that range from $500 to thousands. Inventors are far better off, they say, doing
much of the legwork themselves for a fraction of what these services charge.

That’s not to say that honest invention marketing services don’t exist, Hayes-Rines points out. But
many are so small they don’t advertise.

Instead, these firms read publications geared to inventors, visit invention trade shows and work
with inventor groups to scout for good ideas.

"There are some great folks who are looking for products, and we have a few in the magazine,"
she said. "And usually these kinds of companies work in selected areas, for instance in toys and
games, women’s fashion accessories or hardware products. The reason they restrict their
searches is they have connections in these industries. No one company can have contacts in all
industries, and that’s what fraudulent invention marketing companies claim to have."

Those claims have apparently lured a lot of unsophisticated inventors in recent years. According
to Levy, Richard Apley, the former director of the Office of Independent Inventors Programs at
the U.S. Patent and Trademark Office, claims that invention scams ring up about $200 million a
year and that the average loss per inventor for useless services is $20,000.

While some invention services are able to help inventors obtain patents, those patents are
frequently too narrow to provide the inventor with any real value in return for his or her
investment, added John Hyatt, an associate specializing in intellectual properties and patents for
the Chicago law firm of Jenkens & Gilchrist.

A patent, Hyatt said, is a grant from the government that gives its owner the right to exclude
others from making, using or selling the product covered by the claims of the patent. That means
that if the patent is to have any value, the claims must be relatively broad. It’s fairly easy to obtain
very narrow claims on a particular invention, Hyatt explained. "But those narrow claims are so
easy to design around that the inventor gets no practical protection," he added.

Rather than being hoodwinked by invention marketing services, inventors should try to do as
much of the preliminary work as they can on their own, said Sarah Columbia, a partner who
heads the intellectual properties litigation group at the Boston law firm of Choate, Hall & Stewart.
She noted that today’s inventors have an advantage yesteryears’ didn’t: The Internet has opened
up research opportunities unimaginable to inventors 10 years ago.

For instance, prospective inventors can do a patent search with the U.S. Patent and Trademark
Office (www.uspto.gov), helping them determine if someone else has already developed and
patented the same product or a similar one.

Another good source is the United Inventors Association at http://www.uiausa.com. Founded in 1990
as an outgrowth of a U.S. Department of Commerce program on innovation in America, the
association is a non-profit organization of individual inventors and inventor organizations. Yet
another helpful site is that of Inventors’ Digest at http://www.inventorsdigest.com.

Search patent libraries

The Internet can also direct inventors to patent and trademark depository libraries near them.
(Such libraries can be found on the fourth floor of Chicago’s Harold Washington Library Center
and at the Illinois State Library in Springfield.) These libraries offer collections of all patents that
have been issued nationwide, Hayes-Rines said. The advantage for novices in visiting these
libraries is that they can gain advice on how to conduct patent searches from specially trained
librarians.

After a patent search, the next step is a market search. Hayes-Rines suggests searching
Internet sites, visiting stores and scanning catalogs that sell products like the one you’ve
invented. Columbia urges inventors to conduct searches of literature, such as scholarly journals
and trade magazines that may have written about product introductions similar to your own.

Only after inventors have conducted patent searches and even more exhaustive market
searches, and are still convinced their idea or something better than their invention is not yet on
the market, should they seek the counsel of a patent attorney, Hayes-Rines said.

How to find a good attorney? Hayes-Rines urges joining local inventor clubs and organizations. If
no such group exists close by, budding inventors should find one reasonably close and join it,
even if they can’t attend the meetings. As a member of the club or organization, they will be able
to access a roster of other members, some of whom may be helpful in suggesting competent and
trustworthy patent attorneys.

Inventors can conduct searches of clubs in their area on the Inventors’ Digest Web site at
http://www.inventorsdigest.com/connect/orgs.

In addition to the Web, inventors have enjoyed another advantage since the mid-1990s, said Jim
Patterson, partner at Patterson, Thuente, Skaar & Christensen in Minneapolis. At that time,
Congress amended the U.S. Patent Statute, allowing filing of provisional patent applications.

The government’s filing fee for a provisional patent application is $80, and attorneys’ fees for
preparing the application start at a couple of hundred dollars, Patterson said. The attorney can file
using photos or videotapes of the invention, with very little write-up required.

"Here’s what you get with provisional filing," Patterson said. "You have one year from the date of
provisional filing to file your formal patent application. So during that year, the inventor has a filing
date, can go out and talk with third parties, such as manufacturers, and know that he has some
protection. … Before the provisional filing, he’d have had to assume the full cost of the attorney’s
time, the preparation of formal drawings and the government filing fees."

And that whole package, he added, could run $7,500 or more.

If an inventor decides after filing the provisional application that it’s not worth the investmenthe
can simply allow the provisional patent application to expire, Columbia added.

Copyright © 2002, Chicago Tribune

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