Inventing A to Z

A: Attorneys
Like any businessperson, you'll need one of these folks. In your case, it'll be so you can build a strong patent. For this purpose, you can also hire a patent agent. "A patent agent has to pass the same section of the [bar exam] as the patent attorney in order to get licensed by the USPTO," says Lander. "But that's all that patent agent passes, and he or she is not permitted to litigate." Patent agents are usually engineers who become enamoured of the patenting process, and they tend to charge less than their legal brethren.

But James White suggests you don't base your decision entirely on this. "I strongly advise inventors to choose their patent practitioner based on two criteria: 1) Is the practitioner knowledgeable in the field of their invention? and 2) Does the inventor feel comfortable with the practitioner?" says White, inventor, marketing consultant and author of Will It Sell?

One more caveat: Patent attorneys and agents have a vested interest in encouraging you to patent--they won't make money if they tell you otherwise and you drop the search. So be aware of this self-interest, and make an extra effort to find an ethical attorney. Ask a lot of questions, get references and be cautious when selecting a patent attorney or agent.

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B: Business Plan
Why do you need a business plan? You're just going to patent the invention, sell licenses and then reap the rewards, right? Even if that is your planned course of action (rather than becoming a business owner and controlling product manufacturing and distribution yourself), creating a business plan will force you to know every nook and cranny of your target market--knowledge that can only help you.

"Once an inventor gets business plan software and they work through that--maybe they'll never be the entrepreneur, but they've done their homework," says Andy Gibbs, founder and CEO of PatentCafe.com, a network of intellectual property sites. "So when they talk to a licensee, they have a business plan instead of an idea. Now that carries some weight because [the licensee is] speaking with an intelligent inventor who's ready to support the business--not an idea, but a business.

"For you to have a viable product, you really have to make it viable from a commercial perspective. And to do that, you really need to do a business plan and learn your industry. You need to become an expert in your little niche."

C: Contracts
It's near impossible to cover all the contracts you may encounter in your quest from idea to market in this short space--that's a task for your attorney and/or your continued research--so we'll just introduce one in particular you should know about. (See Z for information on confidentiality agreements.)

If you procure a drafting, design or engineering firm to help create your product, you can very well end up with a co-inventor. "If that engineer is required to do any real engineering and they come up with patentable matter, it must be included in the patent application," says Gibbs. "To prevent that person from owning the invention along with you, you simply need an invention assignment agreement in conjunction with the actual consulting contract." The agreement says that any patentable matter that comes out of this relationship will be assigned to you.

You still need to name the engineer or prototyper on your patent, but if you have the agreement completed before you file, then that person has no rights to your patent. Seems like a small formality, but if you neglect to do it, the engineer could have equal rights to your invention. (And don't think you can get by with not naming the person on your patent--that's fraud, and you can lose rights to your invention.)

D: Distribution
Simply put, this is how your product ends up in a store--except it's not nearly so simple, as you'll find out when you start researching it. But understanding your product's distribution chain is absolutely vital, as it will have a direct effect on how much your product sells for. Every step in the chain takes a chunk of the cash, and if too many chunks are taken out, you may find that your hot new kitchen gadget needs a price tag of $200 to make a profit.

"Work backwards from the store shelf," says Gibbs. "How does that particular channel work? How much does the store get? The store gets 50 percent of the retail price. Who do they buy it from? What do they get?" The answers to these questions will, of course, depend on your product category.

E: Evaluation
Before you hire a patent attorney and shell out the cash for a prototype, shouldn't you get your product evaluated by someone a little more impartial than your mom? Jack Lander thinks so. "The first step I always recommend is to have it evaluated by an indifferent nonprofit organization," says Lander, former president of the United Inventor's Association (UIA). He specifically recommends the UIA's innovation assessment, which determines the commercial potential and risk of your invention. The service costs $275, which may seem expensive until you calculate how much you might spend trying to put out a product that might not make it.

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