Beat the (Patent) Clock
© By Stephen Paul Gnass
A patent is a very
important part of the process of inventing. But there are
certain aspects of this process that are a complete surprise to
many inventors when they finally learn the reality of the patent
One of these aspects
is that there are ongoing patent fees "after" the application
fees for the patent. I call these "submarine" fees because, like
a surprise attack from a submarine, they come right on the heels
of applying for a patent. Yes, when your patent finally gets
approved - after an appeal or two - you get the privilege of
paying a patent "issue" fee when the patent is granted.
Then, there are "maintenance" fees every few years, with the
first one due after a period of four years. These maintenance
fees actually increase with time, and if they're not paid when
due on a timely basis, it puts the patent into suspension and
eventually into the public domain where anybody can make it
without paying you one penny.
Most inventors that I've talked with over the years, feel
protected by the patent and believe that their invention's value
will remain the same throughout the whole patent duration. They
think that they will receive the same kind of financial deal no
matter when it happens within the patent's life.
probably the most surprising factor to inventors, is that while
the maintenance fees continue to go up, the patent depreciates
in value and each year it becomes worth less and less in the
The reason why the patent value diminishes
over time, is that any businessperson, licensee, manufacturer,
etc. who takes on the invention, will need as much time as
possible to get his/her return on investment (ROI) back. After
negotiating the deal, it also takes time to set up and establish
the manufacturing, distribution, and sales and marketing
systems, etc. So after this initial start-up period, they will
want the balance of the time protected by the patent to sell the
product. Obviously, a patent with the maximum time left is more
valuable and beneficial to an investor/licensee.
sitting on your patent, and waiting for somebody to magically
(poof) come along to buy or invest in it, can be a sure way to
find that you have an invention that not only has very little
time left to make the best possible deal, but has diminished in
value, which makes it even harder to get a deal.
are exceptions to every rule, and this is not to say that
someone with a patent that has two, five or eight to ten years
couldn't still make a good deal come about. But in general,
years of inactivity after the patent is issued, doesn't fare
well for the inventor in getting the invention licensed.
So you can see that without action before, during, and after
the patent has been issued, you're just spending time, energy,
money and resources for a piece of paper called a "patent".
This is why I always tell my clients about the importance of
maximizing the U.S. patent system i.e. using the First-to-Invent
system and the Provisional Patent Application (PPA), and the
proper patent filing - all at the right time. This helps give
inventors years of extra protection without huge upfront costs,
and gives them the maximum time to get the proper exposure for
their invention to the buyers i.e. licensees or investors.
Beat the (Patent) Clock
So what does all of this
mean to inventors? It means that from the get-go, instead of
sitting back and hoping and wishing for a deal, that inventors
need to take proactive steps to actively seek out licensees,
manufacturers, investors, distributors, etc.
If you were
patent pending, and then issued a patent, and now you're at your
first maintenance fees that need to be paid, and you still
haven't done anything to license or get your invention into the
marketplace, shame on you! If this sounds like you, then you
haven't got a minute to spare, it's time to take action and get
There are a multitude of ways to reach
prospective buyers, licensees, etc. For example, inventors have
options like advertising in publications that reach their
target, participating in trade shows, contacting qualified
companies directly, and exhibiting in online venues like our InventionConnection.com
cybershow. But I do believe that it's important to have a mix of
passive as well as aggressive venues.
It's similar to the
process of looking for a job where you're simultaneously
answering classified ads in newspapers or magazines, looking up
job listings on internet web sites, posting resumes on web
sites, mailing out resumes to a targeted list of companies,
registering with job placement firms, dropping in on companies,
networking, etc. I believe that it isn't any one specific thing
that inventors do, but that results come from a mix of as many
options as they can afford to do.
The process of finding
qualified licensees or investors isn't quite as clear cut as
finding a job, and that's where I come in. Similar to a career
counselor, I try to help inventors see all their options and do
as much as they can with as little costs as possible, or in many
cases, for no costs at all.
For example, in consultations
with my cyber-exhibiting clients [two hours are included with
the cyber-show, but some clients have preferred to just buy a
block of consulting hours], the classic example of what I do is
to look at each inventor's unique situation, then I guide them
in customizing a strategy for an outreach program to help them
go after these targeted markets in conjunction with their
cyber-exhibiting. There are ways that they can do this
themselves, or they can delegate these activities to individuals
or companies. I often have recommendations on how to do this
with little or no expenditure.
Yet everything takes time,
including this process of researching, finding, contacting, and
negotiating with potential licensees and investors. So now that
you're aware of the fact that there's a clock ticking on
maximizing your value of the patent, as I said earlier, if
you're to capitalize on your intellectual property - your
invention, the patent - bottom line, there's not one minute to
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ABOUT STEPHEN GNASS:
Stephen Paul Gnass is founder of InventionConvention.com,
Executive Director of the National Congress of Inventor
Organizations [NCIO] and an inventors advocate. Mr. Gnass
speaks on the subject of the "Business of Inventing" [tm] and
has had his articles reprinted in various magazines. As Senior
Consultant with the Gnass Group, he consults independent
inventors, entrepreneurs, and small businesses. He can be emailed at
email@example.com or visit www.businessofinventing.com.
A SPECIAL NOTE: Complimentary
If you're further along the path of inventing and are ready to
launch your product, and need assistance in determining whether
to license your idea or build a company around your invention,
I'll be more then happy to offer you a Complimentary
Brainstorm, no obligation. For a Complimentary Brainstorm,
please be sure to include your phone number with area code and
your time zone [continental U.S.] with the best times to call
you back in your email. If you're in Canada or another country,
email us for special instructions.
Sincerely Stephen Paul
P.S. I offer additional brainstorming as part of the cyber-exhibiting program. Or, if you have special projects or
problems and you need some brainstorming, I also offer a-la-
carte consulting sessions with a special rate for inventors.
Situations like these, that I describe in these articles,
are snapshots at the time that I write them. Things may
change, for example, U.S. Patent and Trademark Office rules or laws may
change, etc. In addition to the constant research that we're
doing, I would like to personally speak with anyone that has
had a similar or related experience. Feel free to email me at
firstname.lastname@example.org and include the best time
to get in touch with you.
This article is for general information purposes only and is
not a substitute for legal counsel or financial services. The
information provided is accurate to the best of our knowledge,
and we are not liable for any omissions or incorrect
information. It is the responsibility of the reader to verify
any legal information with appropriate professionals. If you
need specific legal assistance, we recommend that you contact
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