To receive assistance from IAS, you must complete an application and pay a fee for IAS services. The purpose of this module is to show you some things you can do on your own prior to applying for assistance. The activities we suggest may cause you to improve your ideas, change the focus of your project, and in some cases you may decide to abandon your idea before you apply because you discover that someone has already patented or taken your idea to market. This module is designed to help you, the inventor, to do as much homework as you can before you conclude you have a great idea that could lead to a patentable invention that will make you money.
1
2
The Inventor’s Assistance Service provides confidential assistance to Oklahoma residents who wish to become an inventor. The service is housed at Oklahoma State University in the College of Engineering Architecture and Technology. Funds to support the services offered are from the Oklahoma Center for Advancement of Science and Technology (OCAST). Because of the state funding, inventors pay only a partial cost of the services offered by IAS. The State of Oklahoma provides this service in order to promote invention within Oklahoma and provide inventors with a safe and confidential way of receiving information about the strength of their invention and how they might further develop the invention.
3
Scam activity associated with inventions and inventors has become so prevalent that the American Inventors Protection Act of 1999 was passed and the U.S. Patent and Trademark Office now has a “Scam Prevention” section of their website. Companies take advantage of inventors who are unfamiliar with just how difficult and unlikely it is that their invention, even if it is original, will be profitable in the market. According to the Federal Trade Commission, the “chance of developing and marketing the average invention idea into a commercial success is well below one percent” (Bernstein). http://www.ftc.gov/opa/1996/05/global.shtm 4
In today’s world, if you are making any major purchase, many people check out the internet to look for consumer reviews both of the product or the service. The same is true for invention companies. Use the internet to determine if others have complained. Talk to other inventors. Check for complaints that have been filed with the Better Business Bureau or the US Patent and Trademark Office. Information is power.
5
http://www.ftc.gov/opa/1996/05/global.shtm 6
The services we offer will depend on the stage at which the inventor applies for assistance. Services offered include a preliminary patent search, preliminary market search for competing products, an analysis of competition and marketability, production of engineering drawings, production of prototypes, some design guidance, suggestions about how the product may be commercialized, referrals to manufacturers, and additional information that may be useful.
Every inventor who submits a valid application with the appropriate fee will receive a preliminary patent and market search report. Further services may be offered following the preliminary research if deemed helpful by the review committee. 7
Owners of property have rights to legally use that property to benefit themselves or others. Most property that we think about is “real” property. For example, you own a car and you have the right to use the car in legal ways that serve you, your family and friends. Intellectual property can also have value, and the rights to that value are protected in at least four ways. Intellectual property rights allow “people to assert ownership rights on the outcomes of their creativity and innovative activity in the same way they can own physical (or real) property”. Protection options include Trademarks, Copyrights, Patents, and Trade Secrets.
“A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. The term ‘trademark’ is often used to refer to both trademarks and service marks. This is an option if the product is not new but not infringing on other intellectual property rights, and thus the trademark can be sold.”
“Federal registration (of trademarks) has several advantages, including a notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.” “A copyright protects works of authorship, such as writings, music, and works of art that have been tangibly expressed.” “A patent is a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention.” Patents may be granted by other governments as well, though international patent protection can be a very complex legal endeavor. “Trade secrets are information that companies keep secret to give them an advantage over their competitors. The formula for Coca‐Cola is the most famous trade secret.” Trade secrets do not protect you if someone else discovers your secret and begins to use that information. Many other food products are protected as trade secrets. http://www.uspto.gov/trademarks/basics/definitions.jsp
8
As our name implies, the Inventor’s Assistance Service primarily deals with inventors seeking a utility patent, design patent or trademark. We will outline the requirements for a utility patent.
9
10
The first question to ask before submitting an invention to the Inventor’s Assistance Service is whether the idea is new. Some products thought to be new are already being sold online or in stores. Even if they are not being sold, inventions that are described anywhere that can be read by the public cannot be copied. If an invention already exists or has been described, a later inventor cannot get a patent on that same object, and runs the risk of infringement if someone else has a patent on it. If you are infringing on another patent, someone can prosecute you for infringement. It is useful for potential IAS applicants to conduct a preliminary patent search on their invention. First, start by entering key words on www.google.com/patents. Please note that Google Patents is a beta program and is not complete or error‐free. It is, however, a good place to start. The next step of a preliminary patent search is going through the USPTO database and searching by using class codes. The Oklahoma State University library, located on campus in Stillwater, is a registered US Patent and Trademark Resource Center, and inventors can make an appointment to be trained in how to conduct a patent search. To make an appointment, call 405‐744‐6546. There is also a helpful tutorial on searching patents at http://www.uspto.gov/web/offices/ac/ido/ptdl/CBT/. Even though you have done your own search, it is always advisable to have an experienced patent attorney or patent agent do a professional search for you. The information you provide to the professional may reduce the time it takes them to complete your search. In many cases, you can determine that your invention is not new and you can save your time and money and move on to your next idea. 11
If you are fairly certain your idea is new, next make sure it is useful. Does it solve a problem that people encounter on a daily basis? Is there already another way to solve that same problem, and if so, how is your solution better? Under what conditions is your solution better? Again, it is recommended to search www.google.com for other similar inventions that already exist. According to the USPTO, perpetual motion machines are defined as “not useful”. http://www.uspto.gov/inventors/patents.jsp#heading‐3
12
Non‐obviousness is the third provision necessary for obtaining a patent. Although the term is vague, as “obviousness” is relative, the standard is that obvious solutions to problems are not able to be patented. Obvious frequently is modified as “obvious to someone trained in the art/science.” This is often a difficult criticism to overcome.
13
The final question relating to patentability of an invention regards its ability to be used or described. Before you apply to the IAS, your invention must be specific and either proven to work or described and drawn well enough that we can understand how it works and be able to build a working prototype. For those inventors without enough engineering expertise to build their own model, the IAS provides engineering interns who can help design the detailed elements once an invention has been selected to proceed further in the process. 14
A fifth question to ask before submitting your application is if the invention follows the laws of physics and chemistry. According to the first law of thermodynamics, energy cannot be created or destroyed. Therefore, no machine can create energy—it can only convert energy from one form to another. A “perpetual motion machine” is defined by www.thefreedictionary.com as “a machine that can continue to do work indefinitely without drawing energy from some external source; impossible under the law of conservation of energy.” (http://www.thefreedictionary.com)
Friction occurs whenever two objects are in contact with each other, a phenomenon present in most if not all machines with moving parts. Friction converts some of the system’s energy to heat, resulting in a net loss of energy from the system. Gravity affects all objects on Earth, as the Earth’s mass attracts other matter toward it. Because almost all inventions will be used in an environment subject to gravity, this force must be considered. All chemical equations must balance. The number of atoms you put on one side of the chemical equation will be present on the other, just arranged differently. For a new chemical to be made from a reaction, the proper ingredients must be present. 15
Another point to consider is whether there is a market for the invention. Just because something is new or even patentable does not mean it will be financially successful. Consider the problem the invention solves. Is it faced regularly by many people? Now think of the invention itself. Would you buy it? How much would you be willing to pay? Would people from your city, state, and country be interested in buying it? How much would they pay?
Obviously, without detailed research, it is difficult to ascertain what sort of market there is for the product. However, if the invention is selected by the IAS, we can help the inventor research the market for the invention. That being said, it is always difficult to determine the market for a product that does not exist and cannot be revealed to others. 16
Another aspect of the potential profitability of an invention is its cost‐effectiveness. Even if people are willing to buy the product, it must be priced in a manner that does not discourage them from buying it. When considering the cost to manufacture and market the invention, do you think people will be willing to pay more than that cost to purchase it? Costs include but are not limited to labor, materials, distribution, marketing, and equipment. Before applying to IAS, the inventor should do their best to estimate what those costs might be (especially the cost of materials and equipment) to make sure the invention could potentially make money. 17
If you have attempted to answer the previous questions and still need some help, please send in a complete application to the Inventor’s Assistance Service. Applications can be found online at http://ias.okstate.edu/apply. Click on “Apply” to download an application or complete an online application. Or, you can request an application to be mailed to you by calling 405‐744‐5134. Mail completed applications and confidentiality agreement along with the stated non‐refundable application fee to: Inventor’s Assistance Service
111 Engineering North
Stillwater, OK 74078
Please fill out all portions of the application with as many details as possible. This will allow us to more thoroughly evaluate the invention. Incomplete applications or applications sent without payment cannot be evaluated. Thank you for taking the time to research the feasibility of your invention. Be assured that the time you invest now will save you money and time in the future. 18
19