Tips on an old-school approach to landing a licensee for your invention
Most people assume a patent covers the entire item, whereas it may only cover a fraction of the features.
BY JACK LANDER
Let’s say you have received your patent on your Turneez TM can opener (an imaginary kitchen tool). So, your next major step is licensing.
You have used the time waiting for your patent to issue to prepare a list of companies that market kitchen tools. Now you have to contact them and propose licensing your patent rights.
One way to contact a prospect is to show up at the home office of your first-choice marketer and hope you can entice the director of marketing to invite you to his or her office for discussion and a demonstration. But suppose you live in New York and the producer’s home office is in San Francisco? Do you have the money for a plane ticket, cab fare and so on?
Not likely, after paying big bucks for your patent work. In any case, it’s not a good idea to attempt to get a face-to-face interview without first agreeing to a time and place to meet.
Also, to land your licensee may take several original contacts and interviews. Even if you are lucky and conclude a deal with the first of your prospects, it may make sense to use the U.S. Mail to negotiate an invitation for a face-to-face meeting.
A letter usually makes more sense than a “cold” call. But prior to your letter, phone the company and ask for the correct spelling of the marketing director’s name and his or her exact title. You will probably receive a reply from a subordinate of the director who has been delegated to handle the early communications.
Advantages of an initial letter are:
- It saves money and time.
- You can send out two or more at once. (Responses are often slow or no answer at all.)
- If you receive a few responses within a short period, you can prioritize them and respond to the most promising first.
- You will have the name of the contact person you’ll be dealing with early, in case you wish phone contact.
Form example
A typical first letter to prospects should use the following form:
Patented new product offered to Modern Kitchens, Inc.
To: Michele Smithers, vice president, product development
Subject: The photos enclosed show the patented Turneez TM, in action.
Dear Director Smithers,
Turneez TM has been thoroughly tested in more than 30 homes under typical food-preparation conditions and has received enthusiastic praise in every case.
Users praised the ease of locking the opener in place on the can, which is a major complaint on competitive products, and the super-easy cranking of the handle. In addition, cleanup is quick and simple; just rinse using tap water. A video of Turneez TM can be seen in action on Instagram or YouTube.
I would like to send you one or more prototype samples so that you can have your relatives or friends test them firsthand. Alternatively, I would be happy to visit you in person to demonstrate Turneez TM and discuss its profit potential for Modern Laundry Inc. from licensing of the Turneez TM patent.
Sincerely,
John Rogers, patent holder
You may be tempted to send a copy of your patent along with your letter. That’s not a good idea, in my opinion.
A patent has a mystique about it. Use that mystique to create excitement and incentivize your contact to want to see the product and the patent.
Are all your claims unique?
Most people assume a patent covers the entire item, whereas it may only cover a fraction of the features. That is another reason to withhold the patent at first—especially if your patent covers only one or a few claims.
True story: I was coaching the inventor of a more comfortable head mount for holding and reading small books. He had applied for a patent, but his application was rejected.
As you may know, we inventors can phone and talk to the men and women in the patent office who approve or reject our applications. They typically are not cynical people who get their kicks from using a huge “REJECT” stamp. They are generally friendly and willing to explain their rejections.
The bottom line is that the office’s rejections are based on existing prior art or not passing the “unobvious” test. In other words, another patent already covers a claim in your application, so if the office were to allow your claim you would risk a lawsuit from the other inventor. Or, your claim(s) are not sufficiently novel that they pass the unobvious test.
My point is that the head piece on my example lacked a small lip that would prevent a book from sliding off. The inventor added a claim for the lip and eventually received his patent.
All the remaining features that seemed to make the invention novel and marketable had been covered in out-of-date patents. Thus, all features except the lip were not patentable due to prior art (existing patents), and the inventor received his patent based on the one seemingly minor feature, the lip.
You may ask: How valuable is a seemingly minor claim in your patent?
In other words, would the lack of the feature and its patent claim make a difference in how many more of the product you would sell due to the inclusion of that feature?
Your satisfied customers will be the best source of your answer.
For many products, such as the lip in the example above, the added feature has no cost except in the making of the production tooling.
For example, a molded or stamped product may include several small features that are built into the mold or the stamping die-set. The added cost of the product due to added plastic or metal is negligible, but the features offer significant utility to the product and provide attractive advertising claims.
Back to the pitch letter and the pitch.
If your invention lacks features that attract attention, consider adding one or more that add utility. Check out the competing products. You might be able to turn ordinary into extraordinary—a winner.