That idea of yours? Great. Just super. You can make a million dollars with an idea like that and live large — not like that poor schlub on the commercial lamenting that someone (i.e., you) beat him to the patent office and made a killing off his idea for a widget like yours.
You know who will never tell you that? A patent attorney. Patent attorneys have no idea whether your idea is any good, whether it will make you rich, or whether it will be your living end.
#b#Eric LaMorte#/b#, a patent attorney who operates LaMorte & Associates in Yardley, has spent the past 20 years trying to get that message across to dreamers who think that getting an idea, getting a patent, and getting rich are synonymous. He makes an annual lecture circuit in and around New Jersey, mostly in an effort to guide would-be inventors away from the invention companies that advertise on television.
LaMorte’s next presentation, “How To Patent and Profit from Your Invention,” will be on Thursday, February 10, at 7 p.m. at Princeton High School. The workshop, part of the Princeton Adult School, costs $50. Visit www.princetonadultschool.org or call 609-683-1101.
LaMorte, like most patent attorneys, is an engineer. Because of the nature of the work, which requires the ability to translate technical details into what amounts to a manual for someone else to follow, a prerequisite to becoming a patent attorney is a bachelor’s degree in a hard science. LaMorte holds mechanical and electrical engineering degrees from Villanova.
He began his career in engineering controls at Ford Motor Co., where he sat in on lots of meetings with lots of company attorneys who needed to know lots of technical things for lawsuits. Eventually those attorneys encouraged him to go to law school and LaMorte went to Seton Hall for his J.D. His father, who ran a vending machine company on the boardwalk in the family’s native Staten Island, could not figure out why his son was still in school. “I was in law school and I was engaged and my father looked at me one day and said, ‘I think it’s time you stop fooling around and take the civil service exam,’” he says. “Until the day he died, I’m not sure he ever quite understood what I do for a living.”
LaMorte’s wife, Mary Alice, however, does. The two met at Villanova and work together at their Yardley firm. She is a patent agent, which means that she has passed the U.S. Patent Office’s bar exam but has never gone to law school. She can file for patents but cannot take on lawsuits.
After Seton Hall LaMorte worked for several law firms, the largest being Gibbons Del Deo, based in Newark. He opened his own firm in 1995.
#b#They’re all scams#/b#. People are natural dreamers and many have had a brilliant thought that they are convinced is worth millions. “What I find is that people view a patent as a lottery ticket,” LaMorte says. They envision themselves, like Ralph Kramden, making a boatload from something that will change the world and change their lives for the better.
Invention companies prey on that romance. And, unfortunately for most would-be inventors, they end up the same way Ralph Kramden always did — still broke, on the losing end of their dreams. The main difference between a patent attorney and an invention company is that a patent attorney will give you bad news, otherwise known as the truth. A patent attorney will do some legwork for an inventor and find, probably 95 percent of the time, that his idea already exists. And rule No. 1 in patents is that an invention must be new.
Invention companies reel in the dreamers with the promise of filing for patents, which they do, LaMorte says. After telling you that your orange juice squeezer or paper clip is a great, patentable idea, invention companies will file a provisional patent. Which is mostly worthless.
A provisional patent exists to give inventors some time to develop an idea and is a legitimate thing, LaMorte says. The law requires that if you plan to file for a patent, you must do so within one year of your first public disclosure — say at a lecture, where you explain what you’re developing. A provisional patent gives the inventor a place holder. Something is on record and the inventor now has some time to develop his (usually vague) idea.
But provisional patents expire after one year, and if neither a utility nor design patent application is not filed by then, it’s over. Your idea becomes public domain and anyone who knows about it can start making and selling your invention.
Invention companies, says LaMorte, will never file a real patent application because your invention probably is not new. They will just file the provisional patent and then provide you with generalized market analysis. “It’s usually census stuff,” LaMorte says. “Say you invent a kitchen gizmo. They’ll show you that there are 100 million kitchens in America.”
Such companies also will feature your idea on their websites, following through on their pledge to promote your invention. The only problem, LaMorte says, is that real companies do not rummage through websites looking for ideas. So while, theoretically, your invention could be noticed, the odds are not in your favor.
For what little work they do (all of which even a mildly educated person could do on his own), invention companies will charge between $18,000 and $24,000 for their services. By contrast, LaMorte says, most true patents, soup to nuts, cost around $5,000. “And that’s everything,” he says. “Attorney fees, government fees, the works.”
After dumping their money into invention companies — which do exactly what they say they will do, LaMorte says — people usually find that they’ve been had and end up coming to see him. “They ask me what they can do,” he says. “But the truth is, usually, there’s nothing they can do. They not only lost their money, they lost their idea as well.”
#b#Who’s really filing patents#/b#. The romantic image of the inventor at his garage table examining his invention with a jeweler’s loupe is mostly fiction. In reality, LaMorte sees very few walk-in inventors who have a legitimate product to develop. The odds are little better than 1 in 100 that a home-working inventor has come up with something truly new.
Yet some companies, like Hitachi or Xerox, that can afford staff patent attorneys file hundreds or even thousands of patents a year. What large companies like these have, says laMorte, is insider knowledge. They know their own product lines, but they also know their competition’s products. They know the industry and they know what doesn’t exist yet.
These firms are how most patent attorneys make their money. LaMorte works mostly with small and mid-size companies that cannot afford staff attorneys. His firm serves about 400 clients, including a dozen major toy companies that are this month ramping up their filing efforts for the large toy conventions.
#b#The market#/b#. If you are convinced that you have an idea worth following through, LaMorte wants to know one thing first — what you plan to do with your invention. Remember, people generally think about inventions the same way they think about lottery tickets, which is fitting because the odds are about the same. But the most important part of an invention is, like anything else, its marketing.
Sitting back and waiting for someone to infringe upon your patent is a gamble. There are professional inventors who do this, LaMorte says, but since patents only last for 20 years at most, who knows whether anyone will stumble across your idea in that time frame. And if anyone does, there is little incentive for him to pay you for your patent. By the time anyone finds it, it will likely be close to expiring, so the world will just wait you out, if anyone cares at all.
The truth, of course, is that no one is required to file a patent for anything. A patent is only if you want to be the only one who can sell or license your product. But if you want to license your widget to Ford, for example, you will want that patent.
The reason is simple — if you do not have a patent, anyone can build your invention on his own. Which means that GM could build your widget for its cars and not pay you the $1 per widget that you’re asking from Ford. And Ford isn’t going to pay you $1 for something it can build without your permission like GM can.
#b#The real patent process#/b#. Contrary to popular belief, you do not need to build a model of your invention in order to get a patent on it. Your invention just needs to be new, tangible, useful, not obvious, and your own idea. It needs to be describable, something that someone like LaMorte can explain in writing that, like instructions, allow for someone else to follow along.
The process begins with a search. LaMorte travels to the U.S. Patent Office in Alexandria, Virginia, to look through the millions of patent files to see whether your idea has ever been done before. This is a chief benefit of hiring a patent attorney, by the way — he will know where to look among those millions of patent files.
Most of the time LaMorte finds the idea sitting among the Patent Office’s files. Sometimes, however, he finds that parts of an idea are new, and he directs his clients to develop that aspect.
If there is a way to proceed, the next step is a 3,000 to 4,000-word application that explains the invention in terms that allow others to follow along. Once that is filed, there is a patent-pending, which usually takes two to four years to get to the patent examiner’s office. The patent examiner (a.k.a. “the goalie”) will almost always reject the application, demanding an explanation of how this idea differs from everything else out there. Once the back-and-forth settles down and the patent examiner is satisfied, you get your patent.
There are few guarantees when it comes to patents, but those that exist are all negative. You will lose out if you let your dreams of avarice get the better of you and you hire an invention company to do your patent work for you. “These guys get sued a lot,” LaMorte says. “But they just file bankruptcy and start again as a new company.” One company that runs a lot of TV commercials has had about 10 incarnations in the past decade, LaMorte says.
The best way to approach the patent process is to do so as if your product is a business. “A patent is not a lottery ticket,” LaMorte says. “It’s a business tool.”