Intellectual property attorneys not only perform patent searches, but also fill out the required paperwork and submit this information to the USPTO, a crucial part of the daunting process, says Calvin Flowers, president of Chicago’s 1st Black Inventors Entrepreneurs Organization).
“Inventors need to be engaged every step of the way,” says Flowers, whose organization offers resources for inventors looking to commercialize their idea. “You need to ask if the attorney has actually had a patent issued before,” he says, noting that it’s critical to make sure the attorney fully understands and has successfully navigated the patent process.
Unfortunately, inventor Elaine Cato found this out the hard way.
From Your Attorney, With Love
Cato self-submitted her design and claims for a backless bra she created one night when getting ready for a New Year’s Eve party in 1998. The idea had been lurking in the back of her mind for a number of years and she thought her ingenuity could lead to innovation.
Made for bustier women who need support for backless tops, Cato knew she had a hit product on her hands when friends and family began inquiring about how she’d been able to wear backless dresses while still miraculously managing to support her DD bra cup size. Initiating the patent application on her own, Cato went through two rejections before seeking out an attorney.
The Tennessee native finally sought legal help after viewing a television advertisement one day. “I gave them all of my paperwork, which was a complete application and the drawings that I had done myself,” recalls the 43-year-old. After paying a $2,000 attorney fee, Cato received her third rejection from the patent office and she later found out the lawyer submitted the same paperwork she had turned over earlier. She realized the attorney had not done any additional work after the patent office told her the application was denied again for the same reason—the sketches did not meet USPTO guidelines.
Disenchanted, Cato found guidance from the USPTO. After each rejection, the patent office explained to Cato why her application was declined. “The examiner at the patent and trademark office counseled me,” says Cato. “She gave me the information of who to contact to get a professional prototype made and also who to contact to get professional drawings.”
Cato’s patent was issued after a fourth attempt and nearly six years of getting it just right. On average, Owens says it takes about two to three years to receive a patent approval. He also says it is rare that a patent application is approved on the first submission.
Test and Let Fail
Inventors can be sensitive about their creations. But as you speak to potential customers, buyers, and investors, and learn about your competition, don’t be afraid to refine your product, says Woolery.
“After a provisional application is filed, there’s no need to wait for the patent office,” says Owens. “[Inventors] should be out there trying to sell the product.” Woolery designed plans to do just that and test his magnetic wristbands in the marketplace.
While Woolery’s Stanford Graduate School of Business classmates were summer interning at major financial firms and Web companies, he spent his time creating a sales plan. Isolating a 20-mile radius of local hardware stores, the Menlo Park, California, resident began pitching his product to potential retailers. He sold his product on consignment so retailers would only have to pay for what was sold and could return unsold merchandise. But the effort was not without challenges.
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