What do I do first...after the thought?

[JimIvey]

Dear Mr. Auslander,

While I don't disagree with the bulk of what you wrote, I still don't agree that I *know* that the first thing an inventor must do is see a patent attorney.  A patent attorney is not the sole source of information pertaining to the potential value of a patent.  And, of course, we've been 'round and 'round with this topic before.

A few points of exception:  I don't agree with your repeated assertion that the primary determination of the value of a patent is the breadth of the claims.  It's merely one factor.  And, I've gone over this in greater detail before.

I also don't agree that trademarks are alternatives of substitutes for patents.  They're entirely different things.  There is no reason to choose between trademarks and patents (except for perhaps budgetary reasons).

Regards.

[Chris_Whewell]

A fact, there is a $100M a year scam industry getting patents for inventors, only one in 10,000 get back more than they pay.

 At last count, there are about 6,700,000 patents issued by the US govt.  If only 1 out of every 10,000 yielded more revenues than they cost, then that would mean that in the entire history of the US, there have only been 670 profitable patents.

Personally, I do not believe it.  

Momdoc, I suggest using various people as a resource within their specialty area only .  Don't take legal advice from an accountant, and don't take business advice from a lawyer.  Don't go to a veterinarian when you have a toothache, etc.

I think you should do preliminary investigation to determine whether your invention can make money.  If so, and if you can afford to gamble a couple thousand dollars and go on with your life if nothing ever comes of it, here is what I would do:

1) have a patent application filed directed to your invention, so that you have "patent pending" status;

2) get a prototype of the invention into the hands of several people in industry who are in a position to market the invention, preferably under an appropriate secrecy agreement.

You might make some money.   That is my opinion.

Feel free to write back with any further questions.

[JimIvey]

Dear Mr. Whewell,

I share your skepticism with respect to the oft-quoted statistic.  Personally, I don't know how you add up the money a particular patent makes.  

From my own unscientific survey of the projects I've worked on, the vast majority of patent applications are just one of many pertaining to a single product/service.  How do you break down the profits among the various applications/patents?  I personally don't know -- it's a rather complex issue.

And it's not fair to just compare the revenues to the cost of the patent(s).  First, if you do for most corporations, you'll see that the vast majority of patents are profitable.  However, so many factors affect the value of a particular product/service, and patents are just one of those factors.

In addition, many patents/applications are never asserted but rather are kept in a defensive portfolio.  How does one measure the value of never being sued or having a suit dropped earlier than it would have otherwise been?  This is perhaps an even more complex issue.

Perhaps the statistic looks only to infringement awards, assignment revenues, and licensing revenues.  That's a rather skewed perspective in my opinion since only a small minority of patents are litigated and my understanding is that a relatively small minority of patents are licensed or assigned for money (outside of an employee context).  

I suspect the statistic pertains primarily to independent inventors with "better mousetrap" inventions.  But, even then, looking at the cost of a patent and the revenue generated by  various inventions probably doesn't tell the whole story.  Many people get a patent and then don't do anything with it.  They don't produce a commercial product/service and they don't have success convincing someone else to do it.  It's like not watering a plant and then complaining how worthless it was after it dies.

I guess I'd sum it up by saying (again, unscientifically) that a patent is potentially essential but almost never sufficient.  Having been on the inventor side a few times, I'd say the inventor has to be willing to go to the mat for the invention to have a chance at making money.  It's a war of attrition.

And, if anyone has some authority to back up that oft-quoted statistic, I'd love to see it.  It would help me to better advise my clients.

Regards.

[Chris_Whewell]

Mr. Ivey, I agree with you on all points.  If there were an easy answer, the answer would have probably been known long before either of us were born.   Most inventors have more than one idea, and I believe the most difficult aspect for many resides in choosing which invention to devote full resources to for commercialization.  For individual inventors with no experience, the deck is stacked agains them, since commercializing an intellectual asset is a multidisciplinary task and the individual with the required skill set is becoming scarcer by the day, owing to rapidly changing demographics.

The risk of losing everything varies directly with the extent that a given inventor does not have all of the Intelligence (I don't mean brains here) data when decision-making time approaches.  I believe Mr. Auslander attempts to address this with his methods, to bring enamored inventors back to an earthly reality.   The question of where one draws the line is the fleeting aspect, but in the end, most inventors will follow their heart if they believe in their invention enough.  Following one's heart leads to a love affair, which sometimes ends up in heartbreak and other times leads to multiple offspring !  I always caution clients that the downside of filing for patent is that all of their money may be lost, including what they pay me, while at the same time the downside of not filing is the risk of seeing some other person with a patent on the same invention coming out in a year or two, because as you probably know, it is common for the same inveniton to be made by two different people at about the same point in time.  If the other person makes $ 1MM, then the inventor will have to live with that.  Which do they want to live with ?  Losing a few 1000's of $, or seeing somone else come up with the same thing in the near future ?  It is entirely up to the inventor as to what they choose to do.

Like I stated previously, the rewards go to those willing to take the risks !

best regards,

Chris