Quick Pre-Patent Checklist

June 22nd, 2008

Patent ChecklistWhile many late night television commercials would have you believe that priority one is getting a patent, this is far from the truth.  That type of message is more about boosting their sales than moving your invention closer to success.

The cold truth is that several important questions must be answered before deciding whether a patent makes sense. Some inventors are ready to proceed, while a great many others would be wasting their time and money. Use this quick and dirty checklist to see where you stand and what (if anything) you need to do before setting your sights on a patent. We have put together a Pre-Patent Checklist to help you make a good decision.

Pre-Patent Checklist Items:
1. Is there a true market for your invention?
2. How will you commercialize your invention?
3. Can you build a prototype or have one built one for you?
4. Are you prepared to get a patent?

1) Does anyone want your invention?
World-class direct marketer John Carlton once said, “a lot of people want to sell something, but just because you like it, that doesn’t mean anybody else does.” In this case, what’s true of direct marketing is true of intellectual property. It should go without saying that you should only patent something people want, but it’s astounding how many patent applications are sent in before the inventor has really established any demand at all for what he created. Obviously, this is not a situation you want to find yourself in. If you haven’t done so already, do some market research before you even think about getting a patent. Do not proceed until you can answer the following questions:

  • Where are they and how can I reach them? (what magazines/newspapers do they read?)
  • What quantity (and quality) do they want? (are there surveys that gather this data?)
  • What is the best time to sell? (Seasonal, yearly, etc.)

2) Do you have a commercialization strategy in mind?

Once you have established a market for your invention, it’s time to consider how you will capitalize upon it. Believe it or not, there are actually several ways of commercializing a patented invention. The more lucrative but increasingly less pursued way to be the entreprenurial soldier who takes the invention from the drawing board to the consumer. Under this scenario you will be responsible for creating, pricing, packaging, mass producing and getting your invention into stores. While undertaking all of this yourself is difficult and risky, you also stand to rake in the lion’s share of the profits. Other ways of commercializing your invention include selling or licensing the patent to someone who will do all the things discussed above. In this arrangement, you will make less money in royalties but also invest less time and risk. No matter what you choose, you should decide on one strategy or another before diving headlong into the patenting process.

3) Do you have a prototype?

Despite one infomercial’s claim that “any idea, big or small, can make millions!”, you cannot actually patent an idea alone. Instead, the US Patent and Trademark office will seek an “identifiable embodiment” of your idea; ie, a prototype or at least the early workings of one. While this might seem like a hurdle, you should actually embrace it! See this as an opportunity to get a head start on actually creating your invention, of leaving your comfort zone and marching boldly toward the day you discover whether your idea is really feasible. This will give you an edge over many first-time inventors and take you one crucial step closer to obtaining patent protection.

4) Are you going for a patent?

Most, if not all, inventors should apply for a (real) patent if they make it to this step. While you do have the option to file a provisional patent, we no longer recommend it. Instead, we recommend doing the full patent preparation from the get go. If and when you have the above three steps under your belt, it is likely worthwhile to move forward with getting a patent.

If the infomercial or shiny pamphlets didn’t mention these things, it’s because they get paid whether patenting your invention helps you or not. For this reason, you should dismiss invention advice that seems exclusively obsessed with investing money immediately. Instead, ask yourself the hard questions above. When you can confidently answer them, you will know with far greater certainty that a patent will move you closer to commercializing your invention.

Need Assistance? Our patent attorneys can help walk you through your patent checklist. 832-683-1527.

About the author of this article:

Eric Corl is the Founder of IdeaBuyer.com is a marketplace for new technology and products that gives inventors the opportunity to showcase their intellectual property to consumer product companies, entrepreneurs, retailers, and manufacturers. You can email him at EricCorl@IdeaBuyer.com.

Filing a Provisional Patent

May 29th, 2008

Filing a Provisional PatentFor 99% of inventors, filing a provisional patent is a smart decision. But what exactly is a provisional patent? What separates it from a “real patent?” The short answer is: a few hundred dollars and a lot less paperwork. But there’s more to it than just that. A provisional patent is a way for you to stake your claim, to get your application into the USPTO’s system, while you decide whether it would be worth it to get full patent protection.If you have ever seen a label that read “Patent Pending”, you know what a provisional patent is. For 12 months, you get the full protection a patent offers. In that time, smart inventors hustle to see whether or not there is a real market demand for their invention. If nobody is all that interested, they know it would be a waste to spend the time and money getting a full patent. If they are interested, they know it will be money well-spent. If you do decide to apply for a non-provisional (full) patent, your provisional patent is used as a starting point.

This is the USPTO’s official application for provisional patents.
SRC: http://www.uspto.gov/web/offices/pac/provapp.htm
Unfortunately, while it spells out each step of the process, it isn’t exactly what you could call “user-friendly.” So let’s dive into the meat and potatoes ourselves.

There are two main parts of a provisional patent application. The first part is the written description of what your patent covers. Arguably, this is the most important part of the application and the one you should spend the most time and energy making sure is accurate. About.com offers some helpful tips in this regard:

Writing Your Description

Under patent law “the written description of the invention and of the manner and process of making and using the same invention must be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention pertains to make and use the invention.”

“Skilled in the art or science” is a somewhat subjective legal standard. If the description of your invention is so secretive that it would take a person of extraordinary skill to reproduce or practice the invention, that would not be considered clear or concise. At the same time, the description does not have to be so step-by-step that a layman could reproduce the invention.

About.com also has an article called “Tips on Writing the Description.” It will prove very helpful when you sit down to tackle this crucial task.

SRC: http://inventors.about.com/od/patentsbasics/a/descriptions.htm

Above all, remember that your written description should be airtight: exact in every way, with every trace of vagueness cut out. When it comes to intellectual property, vagueness equals death.

The second part of the provisional patent application is drawings. This, obviously enough, is where you graphically represent what is going to be patented. However, there are some conventions that you should adhere to during this process. To follow them, consult these handy guides from About.com.
– Creating Patent Drawings For A Utility Patent
– Tips on Making Patent Drawings
– The Rules For Patent Drawings

Another article discusses the USPTO’s standards for drawings, which are exact. Rather than conventions, these are requirements that absolutely must be satisfied for your provisional patent application to even be taken seriously. Some of them include size, dimension, type of paper, and formatting. You can read about them all in a simple, easy-to-follow fashion here.

SRC: http://inventors.about.com/od/patentdrawings/a/drawings.htm

If all of this seems daunting, it really isn’t. Once you acquaint yourself with what’s required you will find that it is not all that difficult to comply with the USPTO’s requests on drawings.

Finally, your application must also include the filing fee and a cover report with the following things on it.

– the application as a provisional application for patent;
– the name(s) of all inventors
– inventor residence(s)
– title of the invention
– name and registration number of attorney or agent and docket number (if applicable)
– correspondence address
– any US Government agency that has a property interest in the application.

Make sure all these things are taken care of, and you will be well on your way to being the proud owner of a provisional patent! And remember that once your provisional patent is approved, the clock is ticking. You have 12 short months to drum up interest in your invention and see if it will fly. Take it to trade shows, demo it for customers, do all you can to see whether it is worth getting a full patent. If you are smart and diligent, a year is plenty of time to do this type of research. In fact, it’s why the provisional patent exists at all!

That is the unique benefit and advantage that a provisional patent offers you. Best of luck!

About the author of this article:

Eric Corl is the President of Idea Buyer llc, a marketplace for new technology and products that gives inventors the opportunity to showcase their intellectual property to consumer product companies, entrepreneurs, retailers, and manufacturers. you can email him at ericcorl@ideabuyer.com. you can visit the site by visiting this address; http://www.ideabuyer.com new technology and products, patents for sale.

The Maverick’s Do-It-Yourself Patent Licensing Library

May 24th, 2008

Patent Licensing LibraryWhile it’s usually preferable to have an attorney draft your licensing agreement, it’s not always necessary. Legal-minded inventors can certainly draft their own patent license agreements with appropriate study and preparation. This article is about books and articles you should read – and precautions you should take – should you choose to do this.

One excellent free article on the subject comes from IPWatchdog.com, and is entitled “Drafting a License Agreement.” Patent attorney Eugene Quinn begins the article by cautioning that while it is okay to draft your own agreement, you should probably have an attorney review it before you use it. The key, Quinn writes, is finding an attorney who will agree to review an agreement that he did not personally create:

“There are some attorneys who will, no doubt, not want to review your work, but there are a number of attorneys that routinely work with independent inventors and understand the need to keep costs down by offering review services, such as reviewing patent applications or reviewing licensing agreements.”

SRC: http://www.ipwatchdog.com/inventing/licensing-agreement/

The next thing Quinn encourages do-it-yourself license writers to do is forget about the “template” mentality. There is a myth among intellectual property laymen that there are “standard” contracts for patent licenses that everyone uses. According to Quinn, this is wrong, and attorneys actually roll their eyes when clients ask for standardized or “template” license agreements. While there are standard elements of every agreement, the exact manifestation of those elements is virtually never the same for any two patent licenses. So don’t approach the task by trying to emulate what you believe to be a standard form.

Instead, the far smarter thing to do is focus on the specific clauses – things like performance obligations and royalty requirements – that will go into your unique patent license. IdeaBuyer has a comprehensive article on precisely this subject called “Writing Good Performance Obligations Into Patent Licenses.” Consider that required reading for any do-it-yourself patent licensing.

That said, you do want to at least look over a few sample patent licenses to get an idea of the structural elements they all share. Sample patent licenses can be found in abundance on the Internet, such as this one:

SRC: http://contracts.onecle.com/occulogix/brunner.lic.2004.10.25.shtml

However, Quinn recommends using an encyclopedia of legal forms, such as this one, which he describes in detail in his article:

West has an encyclopedia set called West’s Legal Forms. In the Second Edition it is Volume 25 that relates to patents (I know this because I own that volume myself). There are a number of good sample licenses in the West book. If you find a library that has a good intellectual property section (which is becoming easier given the growth of this field of practice) there will be several smaller encyclopedias dedicated to patent licensing, such as Milgram on Licensing. In most libraries the form books will be in one location and the IP books in another location, so be sure to check both locations.

Many will read this and think “yeah, that’s all well and good but I can probably get the same information from a local bookstore with less fuss.” However, this is often not the case. Many bookstore books on intellectual property are what John T. Read calls “dictionaries not in alphabetical order”. That is, they simply define some basic terminology of the field without laying out a concise sequence of steps for achieving the goal, which, in your case, is writing a patent license on your own. For this reason, you should stick to encyclopedias such as the one referenced by Quinn.

If you cannot or will not use such an encyclopedia, sample forms from universities are the most reliable alternatives. In any event, once you have a sample form to work with, you should adopt a “buffet” mentality. Rather than copying the structure of the patent license verbatim, simply take clauses that seem to match what you are hoping to convey in your agreement.

Using the sample patent license referenced earlier, let’s say you wanted to use this clause in your own license agreement.

Advance Royalty Payments. Licensee agrees to pay Brunner Fifty Thousand

Dollars ($50,000 USD) annually as an advance and credited against any and all Royalty Payments paid in accordance with this Agreement. Such Advance

Royalty Payments shall be non-refundable and be paid to Brunner and in

equal payments of Twelve Thousand Five-hundred Dollars ($12,500 USD), made

quarterly, on or before the expiration of Forty-five (45) days after the

reporting close of each prior calendar quarter.

According to Quinn, royalty requirements are one of the things do-it-yourself patent license writers should focus on most. So in the case of this clause, you would simply modify it to suit your needs. If your quarterly royalty payments are $50,000, you would just erase the $12,500 currently in that clause and replace it with $50,000. Repeat this process of taking clauses from other agreements and modifying them until you have a complete agreement that covers everything you want it to.

At this point, you are ready to show your agreement to an attorney and have him iron out any of the kinks that might be left. Good luck!

Click here to read more about Patent Licensing.

Eric Corl is the President of Idea Buyer LLC, a new product development company that owns and operates IdeaBuyer.com- The Online Marketplace for Intellectual Property. The site gives inventors the opportunity to showcase their intellectual property to consumer product companies, entrepreneurs, retailers, and manufacturers. You can email him at EricCorl@IdeaBuyer.com.

License an Invention to a Retailer

May 19th, 2008


Once you have created your invention, the next thought is obviously “How can I capitalize on it?” One time-tested way of doing this is licensing your invention to a retailer who will bring it to paying customers. Retailers can be anyone with the ability to reach your market, whether it’s Wal-Mart, Target, Home Depot, or even an Internet website. The idea is that you will be cutting them in on the profits from the sales they make possible. However, there are a few things you should know about this approach before you dive into it. In this article, we will touch upon the most important considerations.

The first think to keep in mind is the notion of “inventory available.” Generally, successful retailers will want to know that you can supply them with enough inventory to handle a large volume of sales. This is simply part of the planning process that retailers engage in, especially catalogs. Therefore, you should have some type of strategy for addressing this before you go trying to license your invention to a retailer. Do you have the facilities and equipment to mass-produce your invention? Do you need to hire staff? If you are not sure what your capabilities are, ask the retailer in question what their inventory available requirements are. This will give you an indication of what you will need to do to produce enough inventory.

Another term you should get familiar with is the purchase order. About.com defines a purchase order as such:

“A written sales contract between buyer and seller detailing the exact merchandise or services to be rendered from a single vendor. It will specify payment terms, delivery dates, item identification, quantities, shipping terms and all other obligations and conditions.

Purchase orders are generally preprinted, numbered documents generated by the retailer’s financial management system which shows that purchase details have been recorded and payment will be made.”

The basic idea is that the retailer you license your invention to will be sending you purchase orders which say how much product they are buying from you at that time. It will be crucial for you to store and file these records in an efficient way, as they will over time contain almost all of your financial history with that retailer.

Another all too important aspect of licensing an invention to a retailer is the terms of payment. There are four main terms that are common today: net 30, net 60, net 90, and net 120. However, many retailers are known for using other, more creative terms of payment. Wikipedia offers some helpful hints that will help you clear up the confusion.

“Net 30 is a trade credit which specifies payment is expected to be received in full 30 days after the goods are delivered. Net 30 terms are often coupled with a credit for early payment; e.g. the notation “2% 10, net 30″ indicates that a 2% discount is provided if payment is received within 10 days of the delivery of goods, and that full payment is expected within 30 days.


For example, if “$1000 2/10 net 30″ is written on a bill, the buyer can take a 2% discount ($1000 x .02 = $20) and make a payment of $980 within 10 days, …

If credit terms of “2/10, net 30″ are offered, the approximate cost of not taking the discount and paying at the end of the credit period would be as follow:

[2/(100-2)]*[365/(30-10)]=0.3724 in percentage = 37.24%”

Obviously, you as the licensor will want to secure the timeliest payment terms possible; most likely, this means Net 30. However, you should be warned that not every retailer will go along with this. The bigger the retailer is, the more clout they have in compelling you to accept their terms. One way around this is to start by licensing your invention to smaller retailers, building a successful track record that you can use as leverage when it comes time to negotiate payment terms with larger retailers. Either way, you want to try and negotiate as hard as possible for payment terms that benefit you.

Another way to license your invention to a retailer is to go through what are known as “reps.” Although reps are somewhat less commonly used today than in the past, they still have a large role to play. Reps are people who are on good terms with the buyers at various retailers and who convince those buyers to stock certain products. If the buyer’s store does stock those products, the rep gets a kickback from the product manufacturer for getting them into the store. While you might balk at the idea of paying someone to get you in the door, it may be worth investigating. Sometimes all it takes is an introduction to get the deal done.

Keep these tips in mind and you should find that licensing your invention to a retailer makes more sense than it did before.

Eric Corl is the President of Idea Buyer LLC, a new product development company that owns and operates IdeaBuyer.com- The Online Marketplace for Intellectual Property. The site gives inventors the opportunity to showcase their intellectual property to consumer product companies, entrepreneurs, retailers, and manufacturers. You can email him at EricCorl@IdeaBuyer.com.

How to License a Tool Product Invention Idea

May 14th, 2008

Licensing a tool product invention idea starts with first preparing and protecting your tool invention.

10 Steps to Licensing a Tool Invention:
Tool Manufacturers1. Initial Market Research
2. Technical Drawings & Costing
3. Physical or Virtual Prototype
4. Patent Preparation and Filing
5. Identifying Potential Licensees
6. Preparing Presentation Materials
7. Setting up meetings
8. Meetings
9. Negotiations
10. Transaction

1. Initial Market Research
Initial market research is an important step in licensing a tool product invention idea. It is like evaluating the land where you are going to build you a house on. Yes, you can simply choose to plop down on a piece of land you see or seems like a good deal and decide to build there. Or, you can research the best areas and type of land to build on long term. There are several items you want to research here.

Market Research Items:
– Is there a patent on a similar patent already? If so, it isn’t entirely limiting. However, you need to be aware of all similar IP filed. These will need to be referenced in your patent filing.
– What are the current products available that are already solving the problem? Why is your solution better?
– What are the current costs of these alternative products?
– Why would customers buy your product instead of the current solution?

Answering these questions will help you develop a strong foundation for the value of your invention or uncover that it may not be as great of an idea as you originally thought.

2. Technical Drawings & Costing
Technical drawings are important to ensure that the product can; A. Be made with current technology, and B. Be made at a reasonable cost with a reasonable profit margin. They will also be essential for production quality prototyping and manufacturing.

There are several critical engineering aspects for a tool invention to consider.
– What material will be used to construct the item? What will it’s strength be?
– What will the estimated life cycle of the tool be? This is critical for industrial tools but it is also important to ensure quality and reliability for consumers.

3. Production Quality Prototype or 3D Virtual Prototype
A production quality prototype is the best route to go. People react much better to a tool invention when they are able to physically touch, see, feel, and use it. However, 3D virtual prototypes can be a very useful and more budget friendly way to ‘prototype’ your invention while allowing to show what the ‘end result’ should look like. You can take a 3D virtual prototype a step further by having an animation created to demonstrate the function or use of the invention.

4. Patent Preparation and Filing
Patent preparation and filing of your invention idea is critical to recognizing value from your new tool idea. If you skip this step, you will severely limit the value and protection for your intellectual property. Make sure you find a patent attorney that has experience preparing and filing patents for tool inventions.

5. Identifying Potential Licensees
The fifth step is identifying potential licensees of your tool idea. You will want to consider both major and minor tool product manufacturers in this step. Do not simply limit yourself to large manufacturers like Craftsman, Black & Decker, Bosh, and Dewalt. There are many smaller and mid market players that may be more willing to review your new tool invention and it may end up being a more lucrative deal.

6. Preparing Presentation Materials & Business Case
Being able to show these tool companies why investing in your tool product instead of other opportunities will set you far apart from the amateur inventor. With the proper presentation materials in place, you will be able to get more meetings, be taken more seriously, and end up having a better opportunity to get a lucrative licensing deal.

Licensing Items to Consider:
– A major manufacturer will likely require an exclusive license. Are you OK with this?
– What royalty rate will you expect in exchange for providing an exclusive license?
– Are you open to selling your patent outright?
– Are you expecting an upfront some in addition to a royalty rate?

7.  Setting up meetings with Potential Licensees.
We have a great article discussing how to talk to anyone and get into the doors of major companies. You can find that article here; How to Talk to Anyone.

8. Meetings
Giving a good sales presentation is paramount in your quest to license your tool invention. Learn how to craft a good sales pitch and prepare your material in the proper manner. Learn what companies what to see by reading our seven part series on the subject.

9. Negotiations
Negotiating can be the make or break of any deal. Even small contract details can have a huge impact on how you end up making out on the deal. It can also lead to confrontation and kill deals if you aren’t careful. You can read our article on patent licensing negotations here; Patent Licensing Negotations

10. Licensing Transaction
The last step comes down to actually getting the transaction done! You will want to have an attorney with experience in patent licensing review all documents. If you get to this step, congratulations. The next milestone of course is seeing your product on store shelves and collecting those royalty checks!

License Your Idea to a Manufacturer

May 6th, 2008


If you do not want to go through all the time and hassle of bringing an idea to market yourself, there is an alternative: license your idea to a manufacturer. In doing this, you are granting someone else the right to create your idea and bring it to buyers via the marketplace. However, there are some important steps and considerations that you should keep in mind if you choose to do this. In this article, we will make you aware of them.

First, a few words about what it means to license an idea. Licensing an idea actually means licensing a patent, which protects your idea. If your idea is not patented already, you will want to apply for one. You can call 832-683-1527 for more information on filing for a patent. Once your patent is filed it will be considered ‘patent pending’ which will give you the ability to begin presenting it to investors, patent buyers, manufacturers, and retailers looking for patents to license or purchase outright.

Important Steps to License Your Idea

Legally speaking, you have licensed your patent when you (the licensor) grant exploitation rights over your patent to a licensee (the person you are licensing it to.) In this case, the licensee is whichever manufacturer you have licensed your patent to. “Exploitation rights” simply means the right to create, market, and/or sell something based on what that patent protects. A patent license is also a legal contract, and that contract is what will spell out terms precisely which exploitation rights are being granted. These include any performance obligations the licensor might demand of the licensee. This means that if any performance obligations are included in the contract (ie, “You must produce X number of sales by the year X.”), and they are not met, this could lead to the license being terminated in its entirety.

If this sounds complicated, it can be, but it is actually quite simple. The biggest consideration is finding the right manufacturer to license your patent to. To do this, you should check resources like the Thomas Register to find manufacturers related to your idea. These are the people most likely to want to license it from you. There are other easy ways of finding manufacturers to license your idea to, as well. See our article “Researching Your Market Online” for more details. Once you have narrowed down a list of 10-20 relevant manufacturers, the next step is deciding on the terms of your license agreement.

License Your Idea: Terms of Your License Agreement

As mentioned earlier, most license agreements include one or more performance obligations. These are simply requirements that the manufacturer (licensee) must fulfill in order to keep the license. If you have certain expectations that you want to enforce, such as X number of sales in the second year or a 4% profit margin, performance obligations is the way to enforce them. Of course, both parties will have to agree on the obligations before they become final. There is also the issue of royalty requirements, where you can specify that you must receive X dollars in royalties monthly, annually, or semi-annually to keep the license agreement alive. These are ways of ensuring that your own financial needs are met from licensing your idea to the manufacturer.

Making sure those needs are met is probably the biggest consideration of all. How much are you going to ask for in royalties? You cannot get greedy, but you must ensure that your costs are paid back and the money you get is worth your while. Tally up the money you have spent so far and keep the total in mind when setting royalty requirements.

Another consideration is the term of the agreement. Do you want a longer or shorter agreement? Well, that depends on your circumstances. Do you want to someday capitalize on this patent yourself? If so, you might opt for an agreement of 5 years or less. However, if you’re the kind of person who just wants to collect the royalty checks and move on to something else, a longer agreement might suit you best. The key is to choose the length consciously, based on your true needs and goals.

Of course, you should also use a patent attorney for the duration of this process. Licensing a patent is not something you should “wing it” with, as there are complex laws involved and severe penalties for breaking them. Additionally, a good patent attorney can also warn you if you are about to license your idea in a way that harms you. What if the manufacturer tries to get away with paying you a pathetically small sum in royalties? Situations like these are when it pays to have an attorney on your side, so don’t feel shy about spending the money to get one.

If you can keep these considerations in mind and the timing is right for your product in the market place, you will have a much better probability of profitably licensing your idea to a manufacturer.

Eric Corl is the President of Idea Buyer LLC, a new product development company that owns and operates IdeaBuyer.com- The Online Marketplace for Intellectual Property. The site gives inventors the opportunity to showcase their intellectual property to consumer product companies, entrepreneurs, retailers, and manufacturers. You can email him at EricCorl@IdeaBuyer.com.

Selling or Licensing an Automotive Patent

May 6th, 2008

Automotive Patent

With the energy crisis and the worldwide push to “go green”, innovation in the automotive sector is at an all time high. This puts automotive patent holders in a prime position to sell or license their patent. However, it would behoove you to do some research on how automotive patents are typically capitalized on, as well as who would be most likely to buy or license said patents.

Most of the action in the automotive industry takes place in Michigan, specifically Detroit, or “Motown.” A recent article called “Auto Industry Fueling Growth in Michigan’s Patent Applications” describes the recent surge in auto innovation there:

“The auto industry may be bleeding money throughout Michigan, but it is fueling a rise in innovation in the state, federal data on patent activity shows.

The state saw a 20 percent rise in the numbers of patents granted between 2000 and 2006, the years for which the most recent data is available, compared with the seven-year 1993-1999 period, according to the U.S. Patent and Trademark Office.”

SRC: http://www.mlive.com/business/index.ssf/2008/03/auto_industry_fueling_growth_i.html

However, a number of auto leaders do business internationally as well. Wikipedia offers a handy chart that breaks down, by volume, the largest auto makers and their divisions and subsidiary companies. The table is based on the most recent OICA data.

SRC: http://en.wikipedia.org/wiki/Automotive_industry#World.27s_largest_vehicle_manufacturing_groups_.28by_volume.29

General Motors, Ford, and Chrysler are the largest players in the United States market, in that order. Under the GM flag are brands like Buick, Cadillac, Hummer, Pontiac, Saturn, and Saab. Ford encompasses Lincoln, Mercury, and Volvo, while Chrysler markets the Dodge and Jeep line of trucks and SUVs. The divisions of each auto maker should inform your decision on who to contact about selling your patent.

If your patent pertains to low-mid range sedans or gigantic SUVs, you might look to score a meeting with someone from GM. If your patent applies to luxury models like the Lincoln Towncar, a call to Ford might be best. And if your invention would be best utilized in a heavy-lifting work vehicle like a Dodge Ram or Jeep Cherokee, Chrysler is probably the ideal networking target. Of course, there are several other auto makers worth considering who operate outside of the U.S., but it often helps to start closer to home.

It is also worth noting that many automakers own stock in and have business partnerships with other automakers. This means that even if you fail to sell or license your patent to one automaker, they might be able to put you in touch with one that would be more amenable to your proposal. Here is a quick reference of ownership overlap within the automotive industry.

However, not every automotive patent holder should necessarily target auto makers. Instead, some patents are probably more attractive to auto dealers, of which there are tens of thousands across the United States. If you are unsure of which auto dealer to contact or how to get in touch with them, the National Automobile Dealer Association is a good place to start. They are an automotive industry trade group that represents some 20,000 dealerships across the U.S. and boasts some 43,000 worldwide franchises. They also develop comprehensive research data on the auto industry, which might be of use to you in putting your pitch together.

You can contact the NADA by phone, e-mail, or snail mail.

National Automobile Dealers Association
8400 Westpark Drive
McLean, Virginia 22102
(703) 821-7000 or (800) 252-6232

Of course, you will want to consult a patent attorney before diving headlong into negotiations. Furthermore, this attorney should be one with experience and success in the auto sector. One proven winner in this field is Quinn Law Group, PLLC. “Auto Industry Fueling Growth…” discusses the track record and auto industry connections Quinn has at its disposal:

Principal Christopher Quinn said patent applications in areas such as hybrid technology, vehicle safety and electronics are helping drive annual revenue increases of 20 percent or more. The 19-member firm works with customers including General Motors Corp. and suppliers, as well as with out-of-state companies, many with Michigan offices, whose patents wouldn’t necessarily show up in USPTO data, he said.

Quinn can be contacted at the following web URL:


All in all, your quest to sell or license an auto patent should begin with a careful matching of your patent to the right auto maker, and end with the assistance of a proven attorney in the field.

Eric Corl is the President of Idea Buyer LLC, a new product development company that owns and operates IdeaBuyer.com- The Online Marketplace for Intellectual Property.  The site gives inventors the opportunity to showcase their intellectual property to consumer product companies, entrepreneurs, retailers, and manufacturers. You can email him at EricCorl@IdeaBuyer.com.

10 Tips for Patent Licensing

April 25th, 2008

10 Patent Licensing Tips

Are you looking to license your patent? If so, these 10 Tips will help you move through the process faster and with less headaches. In this article, our founder will walk you through what patent licensing is, what it requires, and the critical elements that need to be included and avoided in your agreements. Whether you are looking to license your patent to a manufacturer or sell it outright, this article can help you navigate the often confusing world of patent licensing.

1) Understand What Patent Licensing Is and What it Requires
There is no doubting the lucrative potential of patent licensing, but you should be aware that it is a different animal than selling your patent. Licensing is not always the “set it and forget it” deal that many licensors hoped it would be. Typically, you will need to exercise diligence in making sure that your licensee(s) are performing the way they agreed to. If they are not, you will need to take action and revoke the license. This should not scare you away. Rather, it is only being mentioned so that you approach the process with realistic expectations.

2) Avoid General “Best Efforts” Clauses
One benefit of licensing a patent is being able to stipulate things a licensee must do to retain his license. However, there is one type of stipulation that you should avoid: a vague “best efforts” clause. As an article called “Patent Licensing” explains, courts tend to interpret these clauses in problematic ways:
“Both parties should avoid this clause in favor of more objective standards. The courts may interpret such a clause to require the dedication of all of the licensee’s resources towards exploitation of the licensed patents, when realistically most licensees will have a number of other significant business endeavors to support.”
The way around this dilemma leads us to tip 3.

3) Use Specific Milestones and Obligations
What you want to do is set specific, numeric goals and milestones that the licensing agreement will be contingent upon. As the aforementioned article states, the key is to be objective in setting these requirements.
“The milestones can be anything definitive that the licensee feels it can realistically meet in the stated time frame. For example, the licensee may be required to obtain an approved New Drug Application with the Food and Drug Administration by a certain date. Licensees should be aware that there is an implied obligation to exploit the licensed patent on the part of an exclusive licensee.”

4) Set those Milestones for a Reason
While it is important to have specific milestones, they must also not be arbitrary. It may sound nice to tell a licensee “You can only keep your license if you do a million in sales the first year”, but this is probably not realistic. Instead, do some market research on what it would be reasonable to expect. You want to make sure both you and the licensee feel comfortable with the performance obligations being written into the agreement. After all, the goal is to capitalize on the patent, not one-up each other.

5) Set Royalty Requirements
One alternative to, or supplement of, performance obligations is to use royalty requirements. Simply put, these are stipulations that say “I can revoke this license unless you pay me X dollars in royalties.” The royalties can be paid monthly, annually, or semi-annually, but the idea is that unless you get the dollar amount stated, you can revoke the patent license. This can be useful if you want further assurance that your financial needs will be taken care of. It is a way of ensuring that no matter how the patent licensee performs, he is responsible for paying you a certain amount.

6) Clearly Spell Out how and When Those Royalties will be Paid
Just as important as specific and non-arbitrary obligations is ensuring that you both know how and when they are to be fulfilled. Few patent licensing issues are thornier than when there are misunderstandings about payment schedules. Therefore, you should take special steps to avoid these hassles. The earlier quoted article continues:
“The agreement should clearly specify when reports are required to be made and when royalty payments are due. Payment needs to be made in conjunction with a quarterly or semi-annual accounting report on the royalties received by licensee. Licensors usually reserve the right to annually audit the records, at their expense, to be sure they are receiving the proper amount of royalties. Licensors are advised to also include a provision to audit for a period of time after termination of the license to be sure they have received all the royalties that are due and owing to them.”

7) Get Legal Advice for Your Agreement
As you can see, all of these performance obligations, milestones, and royalty requirements can seem a bit overwhelming if you are new to the field. A patent attorney is the best person to consult when this happens. They can ensure that your contract is on the up and up, that it can be enforced down the road if necessary. While you may balk at paying their high fees, consider it a worthwhile investment. You need to know that you can enforce your agreement if you have to and only a patent attorney can provide this assurance. They can warn you if the terms in your deal are heavily favorable to the licensee.

8) Don’t get Greedy
This rule applies to both patent sales and licensing. If you are in a position to get some nice, life-supporting residual income from a licensing deal, don’t kill it by being excessively greedy. The idea is to score some nice income from your patent, not suck the other party dry. Remember: pigs get fat, but hogs get slaughtered.

9) Specify a Length that you are Comfortable With
Patent licensing agreements can be as long or as short as you and your licensee want them to be. Therefore, you should take the time to think of a length that suits you. If you want to someday take the reins and capitalize on your patent, an agreement length of 5 years or less might be what you want. On the other hand, if you want to just sit back and cash the royalty checks, you might want to go for as long a term as the other party will agree to. The key is to set this length consciously based on your true goals.

10) Decide on an Exclusive or Non-Exclusive License
There are two different types of patent licenses: exclusive and non-exclusive. An exclusive license is what most licensees will prefer, since it grants them “exclusive” rights to capitalize on the patent. It ensures them some protection against competition and also allows them to enforce violations of the patent. Non-exclusive licenses, then, let you, the licensor, keep the right to license the patent to someone else. Decide which of these two licenses you are most comfortable with and try to get the licensee to go along with it.

If you would like hands on help with licensing or selling your patent, feel free to contact us via email at info@IdeaBuyer.com or by phone at 832-683-1527.

Eric Corl is the President of Idea Buyer LLC, a new product development company that owns and operates IdeaBuyer.com- The Online Marketplace for Intellectual Property.  The site gives inventors the opportunity to showcase their intellectual property to consumer product companies, entrepreneurs, retailers, and manufacturers. You can email him at EricCorl@IdeaBuyer.com.

Idea Buyer Member Feature Story

April 21st, 2008

Earl Bennett of GT Seat Belt Extenders

Persistence, patience, and perspiration have paid off for long-time inventor, Earl Bennett in the form of his latest product, the GT Seat Belt Extender.

Bennett says his inspiration for inventing comes from Willy Wonka. “Wonka said inventing is 93% perspiration, 6% electricity, 4% evaporation, and 2% butterscotch ripple. That’s 105% my way of thinking”.

After years of tinkering and inventing, Bennett has produced a product with mass appeal that is moving off the shelves – a seat belt extender. Bennett solved the problems that other similar products were having and built the first prototype in 2004.

Bennett’s seat belt extender initially caught the attention of an entrepreneur who backed the original order that is now being distributed through KOI Automotive, as well as directly to consumers on gtseatbeltextender.com.

While the product’s original purpose was to eliminate size and shape discrimination of people, it has caught the attention of police officers and firefighters who have began buying them by the case. These professionals are a large contribution to the already 70,000 in circulation.

The high response KOI has received about Bennett’s product has forced the company to hire a full-time employee to focus solely on the GT Seat Belt Extender.

With another order for 40,000 units in place, Bennett’s infomercial below has begun airing on Spike TV and Lifetime Television in test markets in preparation for national airing.

Click Play to view the commercial:

Sales are expected at more than 10 million units next year, leaving Bennett with a pleasing return well over 100%.However, Bennett doesn’t plan on stopping. “Right now I’m publishing a book – The Legend of Bucky the Beaver. It’s an inspirational book for children that teaches them never to give up.”Bennett’s advice for inventors is the same as it is for children in his new book, “If you have something that you believe in, then take it all the way.”

You can order a seat belt extender at gtseatbeltextender.com. Investors are also encouraged to contact Bennett if they are interested in future projects.

His contact information is available upon written request to info@ideabuyer.com.

Written by Lindsey Yeauger, Director of Communications, Idea Buyer, LLC.
IdeaBuyer.com- The Online Marketplace to license and sell patents and ideas.
IdeaBuyer.com/news – Patent Licensing and Sale Tips

10 Tips for Creating a Powerful Sales Presentation for Your Patent

March 31st, 2008

The centerpiece of any patent sale or licensing negotiation is a powerful presentation. In this presentation, you will be making the case for why this person or company should want your patent. Obviously, you will want to make this as compelling as possible to justify the time spent negotiating and get that patent sold. But how should you go about it? In this article, we’ll offer 10 tips for making your presentation sing.

1) Use numbers to make your presentation come alive

When it comes to selling intellectual property, nothing sweetens the deal like numbers promising future success. If you can quantify the size of the market your patent will serve, expected sales, profit margins, and the like, this will be an immense benefit. Numbers speak louder than words in this case because they make the prospects of success real for the person you are presenting to. For this reason, use numbers early and often – and be prepared to prove their validity.

2) Eliminate hype from your presentation

If numbers make a great presentation, hype kills it. There is simply no reason to “puff up” your presentation with words like “awesome”, “amazing”, or anything else you would picture a sleazy used car salesman saying. These tactics do not make your presentation more compelling. They just make anyone with common sense suspicious of what you are trying to put over on them. Therefore, avoid this method of organizing your presentation.

3) Deliver your presentation in order

As with anything else, it helps if you deliver your organization in a logical sequence, with each slide or point building upon earlier ones. Therefore, you do not want to start talking about projected sales and profit margins before explaining what the patent covers. While this sounds obvious, many patent holders overlook hierarchy in their zeal to make their patent look appealing. Do not make that mistake. Take the extra time to work out what should be said when, and you will be better off.

4) Avoid “happy talk”

In his landmark text “Don’t Make Me Think”, Steve Krug warns web designers against using what he calls “happy talk.”

“A lot of happy talk is the kind of self-congratulatory promotional writing that you find in badly written brochures. Unlike good promotional copy, it conveys no useful information, and it focuses on saying how great we are, as opposed to delineating what makes us great.”

This applies to patent presentations as well. Bombarding the other party with irrelevant information makes a sale or licensing less likely, because he has more information to process. Instead, you want to keep the other party focused only on what matters, which leads to tip number 5.

5) Focus on what matters

Seems simple enough, doesn’t it? And yet, so many presentations veer off the path of relevancy into the blind alleys of pointlessness. The best way to define the difference in this case is to use an example. Here is an example of something you would want to focus on in your patent presentation.

“Our idea was featured in Time Magazine’s 100 Coolest Things of the Year special.”

This is worth focusing on because it demonstrates a genuine public interest in what your patent covers and has to offer. Now, by contrast, here is something you probably would not want to focus on in your patent presentation.

“It took six months for the patent to be approved.”

By staying laser-focused on the benefits of buying or licensing your patent, you give the other party less to think about. You can lead them down the road to a painless, mutually beneficial sale.

6) The shorter, the better

There will be some exceptions to this rule; for example, a patent covering a way to automate open heart surgery is going to take more than a few slides to cover. However, for most patents, you should strive to keep your presentation as short as you can. In addition to making sure you don’t lose the other party’s attention, a short presentation exudes confidence. It shows that you do not need to belabor the same old points over and over to prove that you have the goods.

7) Answer the tough questions

Smart negotiators can tell when a presentation has conveniently glossed over the tough questions. When it comes to selling or licensing a patent, those tough questions are likely to involve competition, costs, and similar concerns. You should take a proactive approach and anticipate the other party asking those questions. Do not wait for him to ask, though. Instead, answer them right in the presentation. How can X competitor be dealt with, or the worst-case scenario of Y cost going up? Doing this makes you come across as more honest, which helps the other party trust in everything else you are saying.

8) Rehearse your presentation before giving it

If you plan on narrating your presentation (if it’s in PowerPoint, for instance) it definitely pays to rehearse it on someone else first. This should be relatively simple; just ask your partner, spouse, or friend to sit down and listen to you give your pitch. Undoubtedly, you will make some mistakes, or think of something you wish you included in the presentation during this rehearsal. Fortunately, you will be able to go back and make changes then, when messing up doesn’t matter, instead of during the presentation when it could ruin the deal. The result will be a finely tuned and polished presentation that delivers the message you want it to.

9) Consult your patent attorney before delivering your presentation

This is just a precautionary step to make sure you do not make any legal guarantees or statements that could be held against you. A patent attorney can tell you point blank whether something you want to say constitutes a performance obligation, forward-looking statement, or the like. Generally, you want to avoid making these kinds of statements in the event that something goes wrong later on.

10) Close your presentation by explicitly stating what you want to happen

What is the point of your presentation? Whether it is to sell or license your patent, you should wrap things up by saying so. This can be stated in any way you want, so long as it gets that point across. Something like “For all the reasons given, we think it’s clear that buying/licensing this patent would benefit everyone involved” is what you want to shoot for. This integrates everything you said in your presentation toward the main goal that you have in mind – getting that deal done.

If you can implement these simple tips into your presentation, you will greatly increase your odds of selling or licensing your patent.