Inventors: Do a Patent Search Sooner Rather Than Later
When you have an idea for a new product, the first thing you should do is your homework. You need to — to ask important questions and attempt to answer them. Is this idea unique? Where is this industry headed? How much do similar products retail for? Will my idea be able to hit that price point? Ultimately, the research you do will help you determine whether or not you should move forward.
There are many resources available to help you study a market, including trade publications and . One resource that you absolutely must mine is what’s known as "prior art." Prior art is broadly defined as any evidence that your invention is not new. But as far as studying the market is concerned, what I mean by prior art is specifically previous patents.
The sooner you dig through issued patents that are similar to your idea, the better off you’ll be. Why? Because I can almost guarantee you’ll find your idea when you do. And that’s actually a great thing! Let me explain.
Keep disappointment at bay.
Perhaps nine times out of 10, when you search for prior art, you will discover that your idea is not as unique as you had imagined. You may find it has even been patented before. You will feel shocked — especially those who have already put in quite a bit of work. How do I know? Because I've been there. It's what caused me to co-found a .
But, even though I warn my students not to overreact when they find out that their idea has already been patented, they do. It's natural; we become attached to our ideas. We want to believe they’re novel, even when that’s a bit unrealistic!
When I discovered my ‘big’ idea already existed, I was upset, of course. Really upset. I had hired a firm to help me search for prior art because, at the time, doing so was expensive and I didn’t know how. When the firm didn’t find anything relevant, I was elated. I was the first to come up with the idea of a rotating label! Wow. A few months later, I pitched my innovation to a Fortune 500 consumer packaged goods company. They liked it, they informed me, but they wouldn’t be paying me a cent for it, because it wasn’t actually my idea. From across the table slid two patents numbers. In patents issued 50 years ago, they had found my exact idea.
The search is just beginning.
I was devastated. My attorneys told me it was time to give up. But I couldn’t get over the fact that there were no rotating labels on the market.
So I studied those two patents intensely. I read what they claimed over and over again. Eventually I noticed both failed to specify a method of manufacturing. That was my opening — the opportunity I needed to establish a point of difference. To date, I’ve obtained nearly 20 patents related to that technology, almost all of which I had a licensee pay for. More importantly, I’ve used those patents to keep profiting from that idea.
What prior art really gives you is a roadmap. Essentially, what you’re doing is detective work. You’re learning all that you can about how others have succeeded and failed. That’s not a bad thing: That’s priceless.
Dive into the prior art.
When you unearth prior art, examine it very carefully. To save yourself time, look at the drawings first. Then read the claims closely. Finally, if the patent is indeed relevant, read the rest of it. Focus on the claims, because those are most important. What is being established? Do you understand? The first time you read claims you’ll want to fall asleep. Stick with it and take your time. Read each claim over and over again until it begins to makes sense to you. Keep looking for more prior art.
After you’ve spent some time doing this, ask yourself: Can I differentiate my idea in a meaningful way? How? (For the record, I am not an attorney and this is not legal advice. You may need to get legal advice to be sure you have identified a substantial enough point of difference.)
If your idea is too similar to the prior art and as a result, you cannot hone in on how it is uniquely different, then the best course of action may be to walk away entirely. But what you discover may enable you to improve upon your design, to make it stronger. Are there some aspects that you’ve yet to consider? Did the patent ever result in a product on the market? If not, why? Keep thinking like a detective.
Seek out the inventor.
Let’s say you find a patent that encapsulates your idea exactly. But after you’ve studied the market, you're certain that the idea isn't a product on the market. Yet, there’s this patent. Can you keep moving forward? Well, if the patent has yet to expire, you could call the patent owner to ask a few questions. Look up the person’s name on LinkedIn. Spend some time learning about him or her. (If you cannot find the patent owner on LinkedIn, you could call the inventor’s law firm and ask to be put in touch.)
When you connect, tell the patent owner you absolutely love his product idea. Ask him where you can find it on the market? Don’t be threatening; just have a casual conversation. In many cases, your call will be the best one he's received in a long time. You see, he has a very expensive plaque on the wall. It is a patent award that likely cost him nearly $20,000 to get and has not resulted in a return on that investment. He may be tired and frustrated.
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So listen to his story. Try to find out what went wrong. Most people who file patents don’t know how to bring their ideas to market. Maybe he didn’t have enough capital. Just by listening, you can learn a lot. Is there an opportunity there? If so, you could call him back and ask to license the idea from him. Ask for one year of exclusivity, during which you will to try to get a licensing contract. If you succeed, you could split the royalties. If he agrees, have a licensing attorney write up a one-page agreement that gives you exclusive right to try to get a licensing deal.
Don’t let prior art intimidate you. Use it to your advantage. Knowledge is power: When a potential licensee refers it, you can respond with confidence, “Yes, I know those patents exist. This is how my concept differs and why it will sell better.” Make prior art your friend. It will truly give you a roadmap of what to do next.