Intellectual Property and Patent Q&A Part 2

As promised, here is part 2 of our interview series with intellectual property and patent law specialists. I recently chatted with Gene Quinn, a patent attorney and the editor and founder of IPWatchdog.com. He is also a principal lecturer in the Practising Law Institute Patent Bar Review Course and an attorney with Widerman Malek.

Gene is passionate and excited about the world of inventions and patents, and he is really articulate on this subject. I got a deep sense of what is going on in the world of patents and intellectual property from our conversation, and I better understand how it affects inventors and product developers. Of course, all of this affects American innovation and, in the end, manufacturing in the U.S. I plan to post a future article about his points of view on this subject, which I think you will find interesting.

We talked for more than an hour and covered so much ground that some of the subjects could be entirely separate articles. I’ve distilled our conversation to get down to the nitty-gritty.

Here are some of the points we touched on:

• when an invention is or is not ready to patent;
• the importance of market research before applying for a patent;
• Intellectual Property resources for independent inventors;
• do-it-yourself patents.

So let’s get started. Here’s Gene Quinn.

Jason: Can you describe briefly what you do?

Gene: I have a small patent practice where I work primarily with inventors, startups, and entrepreneurs; I teach aspiring patent attorneys; and I write.

Jason: When do you think an idea is not ready to patent?

Gene: That’s a hard question to answer because the thing that inventors struggle with is, when have you gone over what I refer to as the “idea/invention boundary”? Every single invention starts with an idea, but ideas can’t be patented. So, it’s got to be something concrete and tangible. What I always explain to new inventors is that if you have a new idea it can be something simple—a kitchen gadget—to something more complicated. You start building it in your mind or on paper, and the more detail you add to it and the more complicated you make it, well, that idea may morph from “This is what I want” to “How do I actually do that?” You start layering on tangible things. Tiny details matter a lot.

Jason: So, that’s to differentiate your idea from an invention?

Gene: I try and get them to dial back the idea/invention. I use the top of the disposable coffee cup lid, with the little tab or flap that you pull back. Let’s say you invented and filed the patent for the coffee cup, and you want to improve on that. Well, let’s put a lid on it. OK, how do you put a lid on it? So, moving from the idea of a coffee cup to keeping it from spilling, and now the top needs a hole…

All of these desires and wants can be transformed, little by little, with levels of detail, into an invention. That’s how you go from an idea to an invention—inch by inch. What I always encourage people to do is think about it first and foremost with something ordinary, something that exists. Don’t worry about prior art. [You need] the concept of what it is to invent something and to be able to describe that thing and be able to think about what makes this thing unique or different or useful. Then you get to “Here’s my idea: I want to do X. Well, how I could actually accomplish X?” Then the next question would be, “Is that unique?”

I think what makes it tough for people is that they start with “Is this unique?” Their mind gets wrapped around “How am I going to make this different?” And then you’re chasing a rabbit down a hole, because by the time you figure out how it is unique, you have made something so specific that nobody would ever want it. Even if you could get a patent on it, it would be useless because a patent only gives you the right to prevent others. You want a patent that has broad protection; you don’t want a patent that has very narrow protection.

The Importance of Market Research

Jason: And you want that broad protection to prevent others from making derivatives from your idea.

Gene: That’s right. That’s why you want it as broad as you can reasonably get it. Sometimes when people start pursuing “How do I make this unique?” and that becomes the primary focus of their thought process, they wind up getting so invested in coming up with something that is different that they stop thinking about coming up with something that the consuming public might actually pay for or be interested in.

Jason: That’s a great point.

Gene: One more thought on that. One of the things that the real successful independent investors and startups folks do is, early on in the process, they constantly ask themselves, “Even if I could do X, would there ever be anybody interested in buying X?” That has to be at the forefront.

Jason: That’s a great point because, when working with inventors and product developers, we really stress doing your market research. Go find out about your target audience without telling them about your idea. Show me something that says, “This is a great idea, this is something people need,” and not just something that your family members think is a great idea.

Gene: That’s right. I know another patent attorney who puts it this way: If you can’t get friends and family, if you can’t get four or five people at the very beginning to say that they would buy it, then don’t pursue it—because your friends and family are going to be the easiest people to convince. I’m not talking about the skeptical older brother who always thought you were a screw-up. Your friends and family are usually not going to crush your spirit. The market is unkind. The market is not personal.

So, if you don’t know a handful of people that would be interested, then you’ve got to stop. Because in the next round, when you start to get serious about inquiring whether there is real market potential, if the easy targets aren’t interested, then the next round is not going to be interested, either.

Jason: A lot of inventors come to us with ideas with patents that simply aren’t manufacturable and would need a lot of redesign to be manufacturable. As manufacturers, we think they’ve made the wrong decision in patenting their invention in its current stage of development. In these cases, has the inventor made the wrong choice in patenting their invention?

In other words when is the idea/invention barrier crossed?

Gene: This is another tough one. I think for most small, independent, or small groups of inventors, the answer is that they probably shouldn’t have gone through with getting a patent without giving it a lot of thought. Now, that’s not to say that’s the right answer in every case—universities, for example, do this every day of the week. But there has to be some kind of thought process about how big an innovation [it is] and how big the potential market is. Because if you are talking about something that is really exciting and has broad applicability, that is potentially a paradigm shifting invention of some kind or has a ginormous market, people who might be interested in licensing it understand that there is work to be done from the initial innovation to get it to market, to get it to the commercialization stage. But if it’s something simple—like kitchen gadgets or electrical/mechanical devices, that kind of thing—and you haven’t given thought to “Is this going to be feasible to make and can it be marketed at a reasonable price point?” then I think you did make a mistake.

Jason: That’s an excellent answer, and it goes back to the first point of whether they have looked at their market. Beyond focusing on the technological details, they have to figure out if it will serve their end customer in the future and what that will look like.

Information and Resources for Inventors

Jason: So, other than IPWatchdog—which is great and I follow it—and reading your articles, what are some other essential resources that inventors should look into?

Gene: A guy named Steven Key is a great resource. He is an inventor coach and has three great books. I would recommend that everybody get his books and read them. They’re not expensive, like $10, $15 apiece. They’re quick reading. One of them is One Simple Idea. If you’re not even willing to read those books, then you’re not all that serious.

Another resource if you need engineering or design help is a company that I have known for years—and they treat people right—Enhance Product Development. The guy’s name is Trevor Lambert, and they’re located in Minnesota. I personally have never heard anything but good things about them.

One to at least be aware of is the United Inventors Association. That’s a national group, and if you live in an area where you can be part of a local inventors group, that would be something I encourage everybody to do. The nice thing is, if you can join one of those groups before doing business with anybody, go there and drop names and ask for references. Has anybody worked with this person, etcetera. People know who you should work with and who to stay away from.

Jason: I saw that you created Invent + Patent. How was the traditional way of filing patents not serving the inventor or the start-up and or the patent lawyers, and why is Invent + Patent different?

Gene: This is a system I created many years ago when I was teaching law school. I had students struggling to grasp how to create a patent application. So I came up with a whole series of questions, and I said, “Answer these questions based on the invention disclosure that I gave you. Then let’s work through this and see how we can take the answers to these questions and put them together to create a first draft for a patent application.” It worked remarkably well, so I created a system for inventors to do it. I use it with 100 percent of my clients to get an initial disclosure from them about their invention and get way more detail. Our patents are better and the applications we create are better.

The Invent + Patent System we sell to inventors is a do-it-yourself system. With anything like this, if you can afford an attorney, you really should hire one—it’s complicated to do this. But being an entrepreneur myself, I realize that’s not always an option.

Having said this, doing your own patent work is a little like taking out your own appendix. Do you remember that commercial where the guy is sitting on the table with the butter knife talking to the doctor, who is telling him how to take out his appendix? The guy on the table asks the doctor, “Well, shouldn’t you be doing this?” The answer is yes.

But if you can’t afford an attorney, the Invent + Patent System will get you way, way down the path, better than any other tool that I know about.

Jason: Also, if they do purchase it, would it maybe help them to work more efficiently with their Intellectual Property attorney?

Gene: Yes! I’ve used this even with my software clients, and when people go through the process, the questions provoke them to think about things that they never thought about. Using Invent + Patent focuses you on the relevant information, so it does save time and money when you then go down the stream to work with an attorney.

Jason: Great. We’ll link to it here and share it with our audience and also the people who come to see us.

Thanks again to Gene Quinn from IPWatchdog.com for taking the time to talk to us and share all of this great information. If you don’t already follow him on Twitter, I recommend it! @ipwatchdog