Designing for a Patent

Heed these 5 main principles, with your prospective licensee’s preferences also in mind

A negative patent search—that is, finding nothing like your invention—is not reliable.

BY JACK LANDER

The five most important principles of invention design are:

Keep it simple.

Make it inexpensive to manufacture.

Make sure it isn’t already patented.

Make sure you know about similar products from the past.

Make sure there is a market for it.

Simplicity 

If your design has six parts in an assembly and another inventor can achieve the same result as yours with only five parts, that inventor can patent his or her design even though it uses the same five parts as yours. So, strive to minimize the number of parts that achieve your objective.

Simplicity has the advantage in the marketing of a patent.

A patent for a complicated invention is often frustratingly difficult to understand, especially to a non-engineer who is part of the marketing team. It will usually pay to create step-by-step illustrations that explain the operation of your invention rather than leaving the non-engineers to try to create the operation in their heads from the patent drawings.

Also, be aware that each discrete component requires at least one special tool, such as a mold or die-set, to produce. Such tools are expensive, and the total cost to “tool up” may scare the financial people—if not the marketing people employed by your prospective licensee.

Expense

Other than the investment in tooling, the cost of assembly is a major consideration in your licensee’s profitability calculation.

We may imagine that in this age of artificial intelligence and robots that assembly will be easy to engineer, and of negligible cost. Probably not.

Each component that is not symmetrical has to be flawlessly oriented in order to achieve perfect positioning of all components during assembly. And the final assembly machine, if indeed it can be designed and built, may cost hundreds of thousands of dollars.

Furthermore, the time required for the design and construction will delay entry into the market—possibly a major concern if a competitor is already on the market with its product.

Patenting 

Most of us hate this part of the invention process, I suspect. I think it was easier for me to quit smoking than to perform a thorough patent search before I started my prototype, and I was so sure that my invention was novel and non-obvious.

That is immature.

Not only is it futile to proceed with designing and prototyping before being assured that your design is not already patented, but by studying the patented designs that precede your invention you may invent a different configuration than you first imagined—and thereby achieve the novelty that is required.

If money is not a limiting concern, you may wish to pay your patent attorney or patent agent to provide a search and patentability opinion as an initial step. The advantage is that a professional searcher will usually do a better job of searching than we can do ourselves.

However, a Google patent self-search is well worth the time. You may find your invention or something like it, and you will learn better ways to define your invention for the purpose of more searching.

A positive search result from Google patents may disclose a patent that is identical to your invention, in which case you can hire a patent attorney or patent agent to evaluate the discovery. In other words, a second opinion will either verify your opinion or show you where you erred in your interpretation.

 A negative search—that is, finding nothing like your invention—is not reliable. It is easy to miss similar or identical patents due to your description being different than the one used by the United States Patent and Trademark Office.

Products from the past

Not all prior art is patented. No doubt, thousands of items have been manufactured before the Patent Office opened in 1790. Also, many items of manufacture simply avoided patenting due to cost, time delay, and superior production and marketing capability of the invention source.

A search for products that were marketed without patent protection may be less tedious than a patent search.

I just searched Google.com for “early can openers” and found several pictures of can openers dating to 1858. And one of the latest inventions, the “Kitchen Mama,” also appears.

I’ve had two of these hand-held electric openers so far. I had some problems with the first model a couple years ago but like it so well that I gambled on the shortcomings being corrected—and was pleased to find they had been.

The point is that the Google search is a great place to learn about products of yesteryear as well as patented products.

The market

I’m reminded of the grocer who had the top shelves of his shop lined with boxes of salt. A customer, noticing the overabundance of salt, said to the grocer, “You must sell an awful lot of salt.”

The grocer replied, “No, I sell very little salt; but that wholesale fellow who comes in here … can he sell salt!”

Remember, you don’t want to find a product that does what yours does lining the top shelves of stores that sell it. Excessive inventory is likely to be due to the stocking of several brands. Why would you want to compete? 

But if there is no stock of a product that does what yours does, that’s usually also bad news; it means there is no demand.

It may also mean that you are the originator of a product that has great potential demand that is awaiting your invention. Be careful if you believe that is the case, because you’ll have to sell your licensing prospect on the gamble that a market exists.

That means market research, either yours or your prospect’s. Ideally, you should accomplish the market research so that it is part of your sales pitch.

Consider: Google has an interesting account of 25 products that were launched and failed by several well-known companies. Among them: Google Glass; Amazon’s “Fire Phone”; Samsung’s tablet phone, and Apple’s U2 iPod. 

The Goldilocks goal

Creating is the easy part of successful inventing. In order to license your patent, however, you must be aware of your prospective licensee’s concerns about simplicity, cost to produce, broad patent protection and assurance that there is a “Goldilocks” market—not so big that it is already well covered, but not so small that it isn’t appealing.

I never told you that inventing was easy, did I?

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