Small Inventors Now Have The Upper Hand
Prof. John Rizvi, Esq., Miami Patent Attorney
When Bert Martinez, a well-known marketing consultant and media personality recently interviewed me on his Money for Launch Radio Show, he expressed his surprise – as most entrepreneurs do - when I told that one of the biggest patent law modifications in the last 100 years has shifted the tide in favor of small, everyday inventors.
In 2013 The United States Patent Office (USPTO) made the monumental decision to adopt a similar legal framework to its counterparts in Europe, and indeed, the rest of the world, by switching from a First to Invent legal framework to the First Inventor to File (FITF) provision commonly referred to as the American Invents Act.
The importance of this decision cannot be understated: Inventors who come up with a ground-breaking idea FIRST are essentially no longer protected under Intellectual Property Law UNLESS they file FIRST to establish ownership rights which ultimately transfer into long-term commercial rewards.
This means that while developing prototypes and working models of your invention are important, failure to lock-in patent protection at the outset exposes you to copycats in America and abroad who may file first to steal your idea. However, I must stress that your idea does not need to be perfect or possess “zero defect” - it simply needs to be “good enough” on paper to satisfy the patent examiner at the USPTO.
Working night and day to perfect your new product should take place AFTER your file your patent application; not before. This early-stage patent protection gives small inventors the ultimate peace of mind as they refine and tweak their idea in preparation for commercial launch. It also means you don’t need to spend tens of thousands of dollars to build a working prototype before your file your patent application with the USPTO.
In the early days of America, the USPTO did require a working model to be submitted with the invention. However, with the sheer number of patents being submitted annually in the latter part and early parts of the 20th and 21St Century respectively, this model is simply not realistic. The migration to the First to File system allows a more sensible documented approach without the need for a complex demonstrable prototype.
This has led to a shift in power away from Big Business towards the small, independent inventor who was a common feature back in the early 1900s. In the last several years, I have personally witnessed the dawn of a new Golden Age of Inventing which is being driven at a rapid pace by micro-entities, small inventors, small businesses and startups using a variety of approaches to launch, market and earn revenue from their ideas that bulky, slow moving corporate giants like General Electric or Hasbro Toy & Board Company, are unable to emulate.
Clients like Grace By G® who use a direct to consumer model over the Internet to reach new customers for her haircare line, or David Cogswell who tapped into the Home Shopping Network to market his Toilet Purifier®, reflect a daring breed of inventors who no longer need to rely solely upon licensing royalties from giant companies to be profitable.
While traditional royalty models remain open to inventors such as Troy Faletra who developed the world’s first throwable safety device, ThrowRaft® they are developing direct relationships with consumers who are happy to share and like their products on social media or fund new startups up on Kickstarter.
Can you imagine the benefits of the First to File patent system for Stan Weston, the acknowledged inventor of the G.I. Joe action figure, had it been around in 1963? In a rash decision he licensed the ENTIRE concept to Hasbro for a paltry one-time fee of $100,000.
Hasbro subsequently trademarked and patented the doll and it’s estimated that Stan may have lost up to $20 million in royalties since he had no ownership rights or legal recourse to extract annual licensing income.
Of course, the migration to the new First to File (FITF) provision does not mean you can patent an imaginary time machine or fabled flux capacitor – it still needs to obey the laws of physics, engineering and Mother Nature. It must be reduced to practice. You still need to offer some reasonable proof that your idea will work in real life, but the documents and supporting drawings required are reasonable and attainable when drafted by a board-certified patent attorney.
This approach applies to design patents, utility patents, provisional (and non-provisional patents) – all of which I explain and outline in my extensive educational video animation library.
The First to File system has undoubtedly been a boon for inventors, reflected in the remarkable statistic that the USPTO recently passed 10 million patent filings, a defining benchmark for American entrepreneurism. Some of my clients have become millionaires during this Golden Age of Inventing, including Alex Gomez who defied critics in the medical device arena to conceive, build and market a unique surgical defogging device which he eventually sold for $100 million to a large medical conglomerate.
Other clients of my firm have reshaped entire industries including Donal Inman who patented the Inman Aligner®, a leading product in the Dental Orthodontic field. His patented dental aligners work quickly to straighten teeth and his financial success feeds off the Intellectual Property allowing him to limit copycats and establish a dominant market position.
Remember, a patent prevents others from importing, making, using or selling YOUR intellectual property in the United States for 20 years from the initial filing with the United States Patent Office. This exclusivity allows you the necessary time to commercialize your product and recoup development and marketing costs. I explained this point carefully to another one of my clients, Carlos Enrique Rodriguez, who had the novel and unique idea for an ornamental hitch enclosure for boat trailers. His major concern was the absence of a working prototype which he felt may hamper his patent application and limit his chances for commercializing the product. The First Inventor to File patent provision allowed him to secure patent protection and prevent others from stealing the idea and going to market first. He was then able to work systematically - at his own pace - on perfecting a working prototype and commercialize his product which I am happy to report he released recently under the title Premium Hitch Covers®.
Others like Peter Roccisano, inventor of the Backup Holster® in the law enforcement sector wanted a patent prior to showcasing it at a major firearm trade show. Bulletproof patent protection gives small inventors like Peter the armor to shield themselves against larger predatory companies or the nefarious tactics of companies in the far east. They can focus on development, marketing and word of mouth without the anxiety or worry that their idea could be stolen by a thief in the night.
Despite the opportunities available to inventors in the Golden Age of Inventing, self-doubt, procrastination and fear continue to bedevil some small American entrepreneurs. This was painfully obvious to me at my inaugural address to the Inventors Society of South Florida (ISSF), which was filled with creators, innovators and entrepreneurs. Many of them felt like industry outsiders - powerless to alchemy a flightpath for making their idea a reality in a word dominated by Big Business.
I reminded them of my personal journey through patent law which was filled with setbacks and heartbreaking moments, including an employment rejection letter by one of the most famous patenting law firms on the planet at the time, Fish & Neave. With unconditional support from my loving wife, Saba, I influenced the firm’s decision-makers and was ultimately hired. Years later I decided to start my own law firm to help the small American inventors present in the ISSF auditorium that day even while Fish & Neave called me insane, crazy and misguided. Today Fish & Neave no longer exists while my law firm thrives, a testament to the power of self-belief and the amazing entrepreneurial landscape I and my clients find ourselves in.
During the radio interview with Bert on Money for Launch, I argue that being an outsider to an industry is actually an asset and a blessing. This is reflected by some of the most incredible inventions dreamed up by people in everyday situations who experience an AHA moment while getting dressed, drinking coffee, or teaching concepts to students in stuffy classrooms.
They don’t fit the perfect checklist or have the ideal credentials, just picture the Wright brothers who invented the airplane. They were simple bicycle mechanics who barely finished high school. Or Jay Sorensen, a struggling realtor who spilt hot coffee on his lap, the impetus for masterminding the Java Jacket® , a type of cardboard sleeve seen on Starbucks coffee cups. He launched this product with less than $20,000 but would go on to sell 1 billion units annually, a remarkable feat for The Average Joe with no insider knowledge of the beverage sector.
This example is not an exception, but fast becoming a rule in The Golden of Age of Inventing. Just ask Sarah Blakely who built an apparel empire called Spanx® after she macgyvered a modified pantyhose to make her feel more comfortable and limit panty lines under a fabulous outfit she wished to wear to a party one evening. She had zero knowledge of (or connections in) the apparel sector but her passion and heroic determination saw her become one of the world’s most famous female billionaires.
This powerful desire to solve a small, annoying problem is touched upon in my recent TED Talk, which made the Inventor’ Digest Top 10 TED Talks for Inventors. All these inventors – these outsiders – were able to see an idea that an entire industry miss. This is not to say the journey is always easy. J. K Rowling, author of Harry Potter, was rejected by 12 publishers before one decided to take a chance on complete unknown. Walt Disney was fired for “lacking imagination”. Oprah Winfrey was told she was too fat and ugly to for television before building her own empire around The Oprah Winfrey Show. Coincidently, it’s worth mentioning that her show would one day showcase the Spanx® product to her worldwide audience allowing Sarah Blakely to sell 20,000 pairs in less than 24 hours.
Sometimes these examples are not enough to spur inventors into action. We all experience an occasional nagging feeling of embarrassment. A niggling sensation that we are punching above our own weight, that our tiny idea has little merit, or that we are conceited or arrogant to believe we can change the world. I experienced these same fears preparing for my first Inventor TED Talk. I asked myself:
“Who am I to express these ideas to strangers in an audience. What right do I have to share my outlandish thoughts with those that may have more knowledge than me?”
When these thoughts arise in myself or those of my clients, I always turn back to one of my personal heroes in American history, Theodore Roosevelt, who Dared Us To Do Mighty Things. His quote is seen below, reflecting the attitude we should all adopt towards adversity and self-doubt when it comes to making our idea a reality.
The First to File Patent Law should help fuel your fearless desire to get an idea protected, commercialized and profitable. Nobody epitomizes this theme more aptly than the Hungarian inventor, Erno Rubik who invented the most famous and profitable toy of all time, The Rubik’s Cube®. While earning a pittance as an Architectural Lecturer, he stumbled upon the idea for a Magic Cube that would challenge the mind of his students.
His first version was crude and by no means perfect. But as he played with the combinations and attempted to solve the puzzle, he realized the entire world would enjoy his product. Most of the big toy companies did not share his belief, but perseverance - along with patent protection - would eventually merge into a defining moment when The Ideal Toy Company, at this point in its history bereft of innovation and on its last legs, adopted his toy as part of a lucrative licensing arrangement. The rest is history is they say, but we must always remember that Erno was no rocket scientist inventor, simply a curious independent puzzle maker who wanted men and woman of all ages to simply enjoy the challenge of solving the Cube.
Since he was based in Europe, Erno could benefit from the First to File inventing system which gave him time to craft and perfect a more pleasing prototype for audiences, including his breakthrough launch for the Rubik’s Cube in New York years later. Just like Alex Gomez, the medical device inventor mentioned earlier, Erno understood the value of defensible intellectual property and its sway in increasing commercial sales and attracting the interest of larger players. Both inventors reached a staggering number of people with their inventions. It’s been estimated that by 1983 alone over 350 million Rubik’s Cubes were sold. Likewise, Alex Gomez formed a startup around his surgical device (and related patents) which become the tool of choice in over 1 million surgeries in the United States.
Today’s inventors are no longer hamstrung by the First to Invent patent model or the mandatory requirement that they seek out a larger company to help commercialize and manufacture their product. In fact, inventors can often bypass large industry titans and leverage on-demand manufacturing platforms in the United States or abroad.
They can use ecommerce portals like eBay to sell their product or build their own shopping platform in Shopify. David Cogswell, mentioned earlier, tapped into the power of Indiegogo and crowdfunding to generate close to $30,000 in seed capital, a common strategy used by inventors who approach me for Patent Attorney services. His later forays into the Home Shopping Network has given his product a giant footprint in a competitive landscape.
Entrepreneurs no longer need to maintain expensive in-house staff or build costly infrastructure. They can outsource their accounting & marketing requirements to sub-contractors and scale their startups in ways not imagined over two decades ago when I started out as a patent lawyer. In fact, in those days nobody knew what a patent lawyer actually did. In the Internet Age everyone is familiar with the Shark Tank or investing shows which highlight the importance and value of Intellectual Property.
In essence, the Golden Age of Inventing has removed the gatekeepers who previously blocked the efforts of small inventors. Or, who only offered narrow pathways to commercialization and financial freedom. Today, the low cost of entry and the multitude of creative outlets available to inventors is leading to a massive upsurge in patent applications using the First to File patent system. The ability to accept pre-orders or build a brand on an initial idea allows an inventor access to capital at an early stage in his ideation journey. The ability to gauge demand and test market interest, limits risk and explodes opportunity, especially for niche products that have a narrow audience. This means that even if you believe your idea is too small to succeed a tiny marketing budget to test public opinion may prove your theory completely wrong.
On this note, I again reminded listeners of the inventor radio show that no idea is too small to succeed. You do no need a car that runs on water or a flux capacitor that bends time at 88 miles per hour to make a dent in the universe. Holding onto your idea for several years because it’s embarrassingly tiny or inconsequential could literally cost you millions in unrealized commercial revenue. Consider for a moment if the inventor(s) of the Post-It Note had not moved forward with their idea? This simple invention has a tiny amount of temporary glue positioned on a small piece of square paper. Yet its success has defied imagination. Visit any office or corporate headquarters and you will see at least one member of staff who has emblazoned those irritating little notes all over his or her desktop and computer screen. This paper “dwarf” has produced over $1 billion in revenue confirming the rule that TINY ideas have giant footprints when paired with the power of patents.
The earlier Java Jacket® example also highlights the power of assembling existing components or parts in the marketplace to form a new idea or invention. Sorensen did not invent the cardboard or the coffee cup; he simply paired them together in a novel and unique way which allowed him to pursue a patent and penetrate the marketplace. This disposition towards product imagination rather than an over-reliance on engineering skills is the key hallmark of the small, modern-day inventor.
In the early days of the cell phone, there was no camera to take pictures or an ability to share images via text. Over time, new generations of smart phones integrated a digital camera into its assembly which has exponentially helped social media platforms like Facebook and Snapchat acquire millions of users. We take these features for granted but when cell phones first came out nobody could imagine that one day, we could snap a photo with it and send it by text to friends and family.
As Bert’s show proclaims, “YOU were created to succeed,” a maxim that has never been more attainable than in the Golden Age of Inventing which thrives upon the new First to File provision contained in The American Invents Act. I hope I have shown you how your tiny idea can influence the marketplace and earn you financial freedom. The road is well travelled: It simply requires some imagination and steady perseverance to take your patented idea to the court of public opinion.
Don’t fear or reply upon the overtures of Big Business to cross the finish line
"Believe in yourself and your idea - you will find that millions of people do, too, including your trusted board certified patent attorney, The Patent Professor® , who can leverage the full power of the First to File patenting system to give you a head start in the marketplace.
John Rizvi, Esq. // National Patent Attorney, TED Speaker, & Best-Selling Author.