An inventRight student called me today with a dilemma. He’s in the process of negotiating a contract with a company that is excited about his product. But they want to know, is he going to get a patent? Although they understand that he has filed a provisional patent application (PPA), they’re pressuring him for an answer. They want to be sure. And the truth is, he can’t be. There is no guarantee the USPTO will issue him one.
I believe it is possible to say that the USPTO is likely to issue a patent under certain specific circumstances. Has the individual who is filing the patent conducted a thorough prior art search? Has he/she hired a professional to do so as well? Did a patent agent or attorney write the patent? If the answer to each of these three questions is “yes”, there’s a pretty good chance that patent will be approved. More often than not, the patent application process involves a series of volleys between the individual seeking a patent and the patent office – edits are made again and again to make claims as narrow and as accurate as possible. This scares some inventors.
So no, it’s not possible to give a company an absolute answer. It would be irresponsible to do so. You’re not a crystal ball. But there are other ways of offering potential licensees security and control. Patents prevent companies from their competition. But in truth, if a product idea is good, that idea is going to be mimicked anyway. “Design-arounds” and “me-toos” will be developed. The real value lies in getting to market first. Instead of asking for an advance, ask that the company pay for your patent application – and explain that the cost will be recoupable. The cost will be deducted from future royalties. Offer to reduce your royalty rate if a patent isn’t granted. Find other ways to offer potential licensees exclusivity in the market – and one way of doing so is by getting to the market first. It isn’t time effective for them to wait until you are issued a patent.
When companies aren’t sure if they’re ready to “pull the trigger”, so to say, remember that there are many ways to sweeten the deal and appease their fears! There are always ways to figure out how to work together. Get creative, but don’t make any guarantees you aren’t 100% sure you can fulfill.
Stephen Key is a successful award-winning inventor who has licensed
over 20 products in the past 25 years. Along with business partner
Andrew Krauss, Stephen runs inventRight, a company dedicated to educating inventors about selling their ideas and the skills needed to succeed. You can ask questions and get advice on the inventRight forum, check out the resource center, and listen to the weekly radio show on inventing. Get In The News, list your invention to have media outlets find you for news stories.