If you’ve ever had the misfortune to channel surf through cable television at 3:00 a.m., you’ve undoubtedly seen commercials for invention marketing companies. These companies encourage viewers to pursue that million-dollar idea by sending for a free inventor’s kit.
Entrepreneurs who speak with both invention marketing companies and patent attorneys at legitimate law firms may question why the invention marketing firms appear to be less expensive while offering a broader range of services.
Unfortunately, most invention-marketing firms are a trap for the unwary and the uninformed, making money by playing on the general public’s unfamiliarity with intellectual property law and its terminology. Here are some common misunderstandings used by invention marketing firms to sell their services.
- “We will get you on file with the U.S. Patent and Trademark Office” — The inventor hearing this phrase wrongly believes this phrase refers to a US utility patent application, a service for which a patent attorney may charge $5,000 or $6,000. The invention marketing firm may charge only a few hundred dollars to file with the U.S. Patent and Trademark Office.
How? The papers filed by the invention-marketing firm are not a patent application, but rather a disclosure document. A disclosure document is sometimes useful to demonstrate the conception date of the invention, but creates no legal rights for the inventor. The filing fee for filing a disclosure document with the U.S. Patent and Trademark Office is only $10.
- Narrow or few claims — Like most things in life, some patents are more valuable than others. Analogizing patents to real property, your patent might be a half-acre undeveloped city lot strewn with broken bottles or it might be a 150-acre horse farm.
Nonetheless, in each case, the inventor receives a patent, just as the land owner receives a deed to the property. The value of the patent depends on the novelty of the invention and the skill of the patent drafter. An invention-marketing firm may actually get a patent for the inventor but the claim will most likely be very narrow and specific to the invention, meaning the patent is easily avoided and not very valuable.
A good patent attorney will write several claims of varying scope and will try to get the broadest claim possible for the client. Of course, such effort requires more time and more effort, and costs more money. But in the end, the client is better served.
- Design patent versus utility patent — The word design is commonly used by inventors, such as, “I want to show you my new piston design.” However, in United States patent law, a design patent has a very specific meaning.
A design patent protects ornamental, nonfunctional, nonutilitarian aspects of an invention. A utility patent, on the other hand, protects utilitarian, functional aspects of an invention. It’s hard to imagine how a design patent for a piston in an internal combustion engine would ever be relevant or applicable, since the piston is never visible to the consumer.
Nonetheless, a popular scam used by invention marketing firms is to obtain U.S. design patents on all inventions, instead of a utility patent. Why? Because utility patents are more difficult, time-consuming and costly to obtain. A design patent is very simple to obtain and may take only an hour of legal time.
Some invention marketers charge $3,000 or $4,000 for a design patent and will then compare it favorably to the $5,000 to $6,000 cost of a utility patent requested by a patent attorney.
A search for articles on the subject of invention marketers reveals a near epidemic of fraud and waste promulgated on the American public by invention marketing firms. For further information, please refer to www.ftc.gov/bcp/conline/pubs/services/invent.htm and www.inventorfraud.com and www.uspto.gov/web/offices/com/iip/complaints.htm#licensepromotion. If you need to protect an invention, hire a patent attorney, not an invention marketer.
Roger D. Emerson chairs the Intellectual Property practice group at Brouse McDowell. Reach him at (330) 535-5711 or [email protected].
