Individual Inventors

I have helped individual inventors secure patent rights in the areas of sporting equipment, games, tools and a range of consumer products. I no longer accept clients who have inventions in the area of cookware and food preparation, as this could pose a conflict of interest with a large corporate client that employees me part time as in house patent counsel.

The first step for any inventor should be documenting their idea fully and completely in a bound notebook, preferably with numbered pages, and then signing and dating each page. Each page should then be witnessed as read and understood by two people they have a confidential relationship each day an entry is made. This is the best proof that you invented the idea and when you made the invention. This notebook may be needed to overcome a reference found by the patent examiner or prove that you were the first inventor in an interference proceeding with another patent application.

I encourage individual inventors that hope to license their inventions to do their own patent searching for several reasons. The first is they are likely to improve and refine their own inventions when they see what others have invented to solve the same or similar problems. The second is so they have a realistic idea that the chances of profiting on their first invention is very low, as they will no doubt come across similar devices that have never reached the market as products. The most successful individual inventors have learned to realistically critique their own idea so they focus their energy on those mostly likely to commercially succeed.

A cost effective way to do your own patent search is to hire me to develop your search strategy and deliver a list of patents (with hyper links) that you can review on your own, narrowing it down to the handful that are the closest to your invention before proceeding with a patent application.

I also recommend filing at least a provisional patent application before showing your invention to anyone but your patent attorney, and most certainly before offering it to companies for license. However, a non-provisional application and any non-US patents must be filed within a year of filing the provisional application.

Finally, every inventor should be aware that once the invention is publicly known or offered for sale, even privately, they only have a one year grace period to file the first US patent application. If they are interested in non-US patent rights, the US application should be filed before such a disclosure or offer for sale is made. The foreign applications, if filed within a year of this first filing, can then claim priority thereto so that the public disclosure does not bar them from obtaining patent rights. While a few countries have a limited grace period like the US, the rules for what starts the counting of the grace period or a bar to patent rights differ with each country, thus it is always safer to file first if you have any interest in patent rights in more than one country.

Finally, I like to advise all individual inventors to be very weary of invention promotion companies. Fraud has been so rampant in this “industry” that the FTC and the USPTO have instituted regulations to protect consumers and prevent fraud. As a corporate attorney at a large consumer product company I regularly receive many “boiler plate” offers from these companies.

I am happy to help my clients develop effective “pitch” letters and other materials, as well as lists of target companies from commercial databases so they can promote their inventions themselves after they file at least the provisional patent application.

I also represent these clients in license negotiations.