Because there are absolutely no black and whites when it comes to intellectual property, self-education is critical. Merely obtaining a patent is easy enough. If you pay a lawyer to help you, he will. Beyond that, things get trickier. The reality is, your intellectual property is only as strong as your ability to defend it. How far are you willing to go to enforce your rights? More importantly, how are you going to make your patent profitable? How does filing intellectual property fit into your overall go-to-market strategy? These are extremely important questions for which there are no simple, straightforward answers.
For these reasons and more, the value of teaching yourself about intellectual property before diving in cannot be overstated. Is there a learning curve? Yes. It will feel steep! But empowering yourself with knowledge is essential unless you've got money to burn, because filing a non-provisional patent application can easily cost upwards of $15,000. Shortly after I had my big idea, I hastily asked my attorney to file two non-provisional patent applications out of fear. Later, those patents turned out to be of no use. I began educating myself about intellectual property after learning just how worthless patents can be.
With a little insight, today I think product developers can and should file their own provisional patent applications. I published a book explaining how to just last year, in fact.
But filing your own non-provisional patent applications? That seems insane, even to me. They're written in their own language! I do not recommend writing your own non-provisional patent application. Still, some people do. My guess is most pro se filingsare not written well and rarely get issued.
So when I met an independent product developer who has written, obtained, andlicensed his own utility patents, I was floored. Needless to say, that's extremely unusual. For George Burkhardt, whose unique pull-through marketing strategies I wrote about here a few weeks ago, DIY is more of a credo than a lifestyle choice.
I interviewed him to find out how he did it.
What motivated you to teach yourself how to write your own provisional patent applications, patent perspective drawings, and utility patent applications?
I had two choices. I could hire a patent attorney to develop a utility patent application for me at a high cost. If the invention turned out not to be marketable, I was done. Or, I could learn the patent process myself. If my invention failed marketability, I'd have spent relatively little -- just the cost of filing -- and could pursue patents on additional inventions. Growing up on a farm taught me how to be creative and innovative in order to make ends meet. I had to learn to do everything myself because it was too expensive to hire people. Right now as we speak, I'm repairing window screens.
What was your mindset like in the beginning? How familiar were you with the patent process?
Initially I was not familiar with the process, only that hiring a patent attorney would be expensive. I thought having an engineering background would help me understand technical aspects, like perspective patent drawings and terms, and the small machine shop I use to keep the farm running would help me develop prototypes. The patent and licensing processes were the missing aspects. I have not had any professional legal training.
What resources were the most valuable to you?
What initially helped me the most was regularly attending monthly inventor meetings in San Antonio, Texas. After attending four or five meetings, I got a sense of who would be able to help me and had the key information I needed to progress. Each meeting, I made a point of always having at least a couple of questions I wanted to ask of someone -- usually a patent attorney or other technical person. I wrote down their answers, which led to more questions, and also became my homework for the month, because they often recommended books to read, websites to visit, and other experts to contact. I repeated this process month after month until I learned how to patent and license my inventions.
You can't invent in a vacuum. You've got to trust someone somewhere along the line, or you'll never get anywhere. On the other hand, I like to tell newbies that just because they're at an inventors meeting doesn't mean they should provide details to other inventors about their invention.
How extensively did you study?
I studied probably at least two nights a week. Other nights I spent inventing, prototyping, writing patent applications, responding to office actions, developing sell sheets, contacting potential licensees, etc. The books I found most important were:Patent It Yourself by David Pressman, which I read over and over again to make sure I understood the vast amount of information correctly, especially claim drafting; Patent Searching Made Easy by David Hitchcock; Patent Pending in 24 Hours by Richard Stim and David Pressman, which I used to prepare my initial provisional patent applications; How to Make Patent Drawings by Jack Lo and David Pressman; Invention Analysis and Claiming by Ronald Slusky, which I also used for claim drafting; Profit From Your Idea by Richard Stim, which helped me with my licensing agreements; and of course, One Simple Idea and the wealth of information on the inventRight website.
Talk to me about how you prepared to handle office actions. Did you consult with an attorney?
I initially received information from patent attorneys about how to respond to office actions at inventor meetings. Patent It Yourself was also useful. Making use of theUSPTO's Public Patent Application Information Retrieval (PAIR) system was key in helping me prepare my patent applications and respond to office actions. You can search through the prosecution history of every issued patent via PAIR. I searched through the prosecution history of lawyers who I knew were exceptional, like David Pressman, to determine their method of responding to office actions. Most patent attorneys have their own unique style. I also used information provided by the USPTO following the America Invents Act of 2013 on responding to obviousness patent application rejections.
How simple are the ideas you patented?
The inventions I have patented so far are relatively simple -- simple meaning easier to prototype, easier to prepare patent applications and drawings for, and cheaper for a company to manufacture and hence, easier to license. The patent process can get time-consuming and involved, so motivation is key. Being creative and having a technical background also helps. Answering office actions was the most challenging.
When you licensed your ideas, were they patented? Or were they patent-pending?
My first two licensed inventions were patented and the third one was patent pending. Usually a patented invention will bring larger licensing rates, as opposed to patent pending inventions, because the risk to the licensee is typically less.
What advice do you have for independent inventors who want to bring their ideas to market?
If you think your invention has mass-market appeal over a long period of time and/or is very technical in nature, I would file a provisional patent application initially to establish a priority date and then seek out a patent attorney or agent to file and prosecute a utility patent application. If your invention is simple and has limited or possibly even significant mass-market appeal but over a short time period, I recommend filing a PPA and then licensing the invention, as the licensee may pay for the related patent. As far as PPAs are concerned, I suggest using Patent Pending in 24 Hours as a guide and possibly using available PPA drafting software.
To put it mildly, Burkhardt was highly motivated to teach himself how to file and secure his own patents. Innovation is one percent inspiration and 99 percent perspiration, he reminded me.
"I just had the drive," Burkhardt said. "That's what is most important."
Originally published on Inc.com June 17th 2016.