Developing an Idea

Brain Power
Think long and hard about your idea
One of the first things you should do after coming up with your brainstorm is find a comfortable chair to sit
in and think long and hard about your idea. If an invention is going to make money, it must be more than
just a good idea. With store shelves filled to capacity, a product must be outstanding to attract consumers'
attention-and cash.
When considering your idea, start with the basics. For instance, is it legal? Don't skip this step, because
your product could cross some legal boundaries you weren't even aware existed. Many watchdog
agencies ensure that products meet or exceed certain standards and requirements; these include the
U.S. Food and Drug Administration, OSHA, and the Underwriters Laboratory.
Does the product conform to all local, state and federal laws? Are you sure your idea doesn't infringe on
someone else's patent? Many of these concerns can be answered by speaking with experts in your
industry, consulting with an attorney and having a patent search performed.
Next, ask yourself if your product will create safety concerns. This is an issue you can't afford to ignore. If
your product is designed for children, this should be your number-one concern. Get advice about this
issue from both your attorney and your insurance carrier.
Also consider the environmental impact of your idea. Consumers today care more about how products
affect the environment than they did in the past. Your idea may be more successful if it's biodegradable or
recyclable.
Also consider consumers' likely perception of your product. There are many great ideas that people
simply won't accept for one reason or another. For example, a hat with a built-in stereo, sunglasses and
fan may be practical, but many people would consider it ridiculous and, in turn, ridicule the wearer.
What industry does your idea belong to? Making this distinction is important because it helps you identify
what companies and products make up your competition. You can then shop the competition and see
what you'll be competing against, what your retail price will need to be and what stores you can sell to.
On Target
Know your potential customers
Knowing whom you're marketing to is crucial to determine before you start the development process.
Does your idea fit into a growing or shrinking market? For example, developing a new type of addingmachine paper when adding machines are virtually obsolete is probably not going to be a money-maker.
Get an idea of who will buy your product and how many of these people there are. What is the profile of
your potential customers? Do they live in one specific geographic area? Will they be able to afford your
product?
You can conduct your own surveys of potential consumers at shopping malls or other public places. Or
you can talk to potential retailers of your product to gauge their interest.
If your own market research indicates your product is a winner, you'll then want to take it to the
professionals for their unbiased opinion.
Second Opinion
Get the best advice
To get the best advice, seek out the services of an independent product developer (IPD). For a fee, these
companies will evaluate your idea (usually without requiring a prototype) and give you a report on its
marketability.
But beware! There are a lot of IPDs that are nothing more than scam artists. Warning signs include a hard
and fast sales pitch, evasive answers to specific questions about how they perform their research, and
too-good-to-be-true success statistics. Disreputable companies also usually ask for money upfront and
tell you your idea has great potential-then try to sell you additional services.

Protecting Yourself
Do you have reason to believe your idea will be a success?
Roughly 100,000 patents are issued every year by the U.S. Patent and Trademark Office (PTO). Some
patent attorneys estimate that only one in one thousand patents becomes a profitable product. With the
average patent costing close to $5,000, that means that around $500 million is wasted each year on
patents that are essentially useless. Unless you just want a patent as a trophy, don't rush into spending
thousands of dollars to file a patent application until you have reason to believe your idea will be a
commercial success.
You may have heard about the need to file your patent application as soon as possible to prevent
someone else from beating you to the patent office. There is some truth to needing to be the first to file. If
you know there's someone who wants to file a patent on the same idea, I recommend you file a
provisional patent application, which costs only $75. (For more on provisional patents, see "Bright Ideas,"
March.) This establishes an official filing date for your idea with the PTO and buys you an additional year
before you must file officially. Most patent applications don't move quickly, however, so it's best to take
some time to research the viability of your idea in the marketplace before incurring the time and expense
of a patent.
Let me leave you with one final thought: Coming up with a great idea is a wonderful, euphoric feeling. But
before diving in headfirst, check how deep the water is. Carefully evaluate your idea for its marketability
and potential for success. Such an approach saves time and money, an entrepreneurs two most valuable
resources.
Independent Counsel
IPDs tell you what's great-or not-about your invention.
Independent product developers (IPDs) can give you-for a fee--an objective evaluation of your product's
potential, which may help you decide whether to pursue further development. There are three very
reputable IPDs you may want to consider.
The first is the Wisconsin Innovation Service Center at the University of Wisconsin in Whitewater. (You
don't need to be in Wisconsin to use its services.) For $495, it will send you an evaluation of your product
with regard to competition and technical feasibility in about 30 days. It will also conduct a preliminary
patent search. Call (414) 472-1365 for more information.
Another IPD is the Washington Innovation Assessment Center (WIAC), which is affiliated with the
Washington Small Business Development Center at Washington State University, Pullman. For $350,
WIAC will select three evaluators from a pool of more than 300 to analyze your idea and give you
feedback. For an additional fee, they'll also conduct a preliminary patent or trademark search. The
evaluators identify positive and negative characteristics of your idea and then provide a quantitative
measure of its potential for commercial success. For more information, call (509) 335-1576.
The Wal-Mart Innovation Network (WIN) is another option. For $175, the students at Southwest Missouri
State University in Springfield will evaluate and score your idea for market potential. If your score is high
enough, it may be viewed by Wal-Mart buyers for possible placement in their stores. However, WIN
should be looked at primarily as a source for product evaluation. To find out more, call (417) 836-5671.
The best thing about these IPDs? You don't have to worry that sharing your idea with them will release it
to the public domain. All three will sign confidentiality agreements to ensure your idea is kept on the QT.
Testing Your Wings
Will your idea fly? Our expert tests the experts.
Family and friends have probably always been there to lend you moral support and encouragement. But
when you have an idea for a product you want to put on the market, their kind words can sometimes lead
you astray. What you really need to know is whether your product will sell.
There are two independent nonprofit organizations that can help evaluate the marketability of your idea:
The Wisconsin Innovation Service Center (WISC) in Whitewater, Wisconsin, and the Washington
Innovation Assessment Center (WIAC) in Pullman, Washington. I heard their evaluations were sound, so

I decided to test their appraisals myself. I sent both organizations a product I invented and asked them to
assess its marketability. The results were enlightening.
The product they evaluated is called the Halo, a brimmed hat made of rain- and sun-resistant fabric. A
special construction inside the hat's crown suspends it above the wearer's head to prevent "hat hair";
grommets on both sides provide ventilation to keep the wearer's head cool. The entire hat collapses down
to a 7-inch circle that fits into a coordinating pouch. The hat retails for $35. Neither center was told that
the Halo holds several patents and has already been successfully test-marketed.
Doing Their Homework
WISC mailed me its results in 30 days. I received a 100-page Research Report specific to my product and
a well-written 100-page Innovation Guidebook full of answers to first-time inventors' common questions.
WISC's approach is to evaluate your product using three criteria: competition, demand and industry
trends. To identify the Halo's competition, the staff investigated a wide variety of retailers and mail order
companies to find out what competing products were on the market. While none of the hats they found
had all the same features as the Halo, some shared one or more of the Halo's characteristics. WISC
provided photos of these hats, along with verified prices and contact numbers. It also included a list of
retail stores and catalogs that didn't carry competing products; these would be good leads to approach
when selling my product.
To evaluate the patent potential of an idea, WISC does a preliminary online search to see what patents
may already exist. This search is not an official patent search; however, it's a great tool to help you decide
whether to pursue a patent. WISC's search on the Halo uncovered my existing patent. It also identified 11
other patents it thought I should be aware of. With the cost of a patent search at more than $200, I felt
this information was very valuable.
The third research area is industry trends. WISC identified the market for the Halo to be retail hats. It
contacted the Millinery Information Bureau and collected statistics on the retail hat market that showed a
steady increase in sales over the past five years. It also summarized eight recent articles about the
industry and provided copies of the articles with relevant areas highlighted.
A nine-page synopsis was included with its findings, in which WISC concluded, "The Halo appears to be a
unique, useful and feasible product." I was impressed with the fact that without judging the product to be
good or bad, WISC simply provided a concise explanation of its findings. For $495, I felt this research
was absolutely worth the money.
The Final Analysis
WIAC takes a different approach to evaluating the marketability of an idea. Three evaluators from a list of
more than 300 are assigned to analyze your idea and give you feedback. For the Halo, the evaluators
selected had experience in new product development, specialty product marketing, and the clothing and
textiles industry. The evaluators' mission: to identify the positive and negative characteristics of your idea
and then provide a quantitative measure of its potential for commercial success. Unlike WISC, this
organization grades your idea in a number of areas and then sends you an overall report card. In 30
days, I received my WIAC package, which included a 200-page bound evaluation, a 78-page guide titled
Tips and Traps for Inventors, and a book called Marketing Your Invention.
Four general areas form the parameters for WIAC's analysis: research and development, marketing,
performance and implementation, and legal protection. Within each of these areas, several evaluations
are conducted.
The research and development area addresses the feasibility of manufacturing the product in volume.
The evaluators use a four-point scale to measure the product's manufacturability and then a five-point
scale to evaluate the complexity of the research necessary to bring the product to a market-ready stage.
The Halo had a "somewhat likely" chance of being manufacturable and a "somewhat difficult" level of
research complexity. I found this opinion curious, given that I had provided WIAC a manufactured sample.
Next came the marketing analysis. WIAC identified the most appropriate target market to be the "general
consumer." Based on this determination, they concluded that acceptance of the Halo in the general
consumer market would be "fairly unlikely." In essence, the evaluators felt: 1) additional competitive
research needed to be conducted; 2) market acceptance for the Halo was not highly likely; and 3) the
relative market for the product was not very large. These conclusions contradicted the fact that the
product had already been successfully launched.
A product's ease of use is analyzed in the next area, performance and implementation. My evaluators'
general conclusion was that the Halo has a unique design but is more complicated than any competing
product. They did, however, feel the product would perform safely and as intended.

The final area, legal protection, measures the product's patentability. The judgment of the evaluators was
that patent protection for the Halo is "somewhat unlikely." This conclusion was troublesome to me, as the
Halo has two issued patents and several other patents pending. When asked how this determination was
reached, it was explained as the combined "gut instincts" of the evaluators.
WIAC gave the Halo a 70 percent chance of success. The 20-page report included individual comments
from each of the evaluators on the specific sections, a feature I found very insightful. For example, one
evaluator suggested looking into the promotional products market. Another suggested offering a product
guarantee. The remainder of the 200 pages comprised an appendix of various market research material
found on the Internet, general articles on the accessories industry, a listing of hat manufacturers, and a
thick collection of Web sites that sell or advertise hats.
It's difficult to grade a product, but I believe WIAC made an intelligent and thorough attempt to do so. Of
course, there is risk associated with predicting success, and I have the advantage of hindsight with the
Halo. The cost of the WIAC study was $350, and I believe this one was also worth the price.
WISC and WIAC are both useful assessment resources for someone in the early stages of developing an
idea. I strongly recommend sending your idea to one or both of these centers before applying for patents,
hiring staff or commencing with manufacturing. It's an important first step on the road to realizing your
dream.
Contact Sources
Washington Innovation Assessment Center, (509) 355-1576
Wisconsin Innovation Service Center, (414) 472-1365
Got It Made
Looking for a manufacturer? Here's a blueprint for getting just what you want.
The duct tape and staples worked fine for your prototype. At some point, however, if you want to reach
the market, you'll need to transform your idea into a finished product and produce it in large quantities.
Therefore, you need to find a manufacturer whom you can trust to turn your idea into reality. But where
can you find one?
The first and easiest step is to contact friends, business associates, former clients, customers and
anyone else you know to see if they can recommend someone they trust. Finding a trustworthy
manufacturer can take time. If these associates can shorten the process, all the better.
Your next step is to contact trade associations. Generally, if a manufacturer is a member of a trade
association (or its local chamber of commerce), it at least wants to be viewed as reputable. Associations
that will provide you with information on their members tend to screen them and weed out those with poor
reputations or unscrupulous business practices. The American Electronics Association, for example,
produces a roster of its members and cross-indexes them by type of business. To find the appropriate
trade association for your needs, most libraries have two reference books: the National Trade and
Professional Associations of the United States (Columbia Books Publishers) and the Encyclopedia of
Associations: National Organizations of the U.S. (Gale Research).
Another helpful reference guide is the Thomas Register, a multivolume set of cross-referenced books on
the manufacturing of nearly every product made or sold in the United States. Keep in mind that the
Thomas Register, which can be accessed on the Web at http://www.thomasregister.com, does not tell
you how reputable the listed manufacturers are.
Making Contact
Once you have a list of potential manufacturers and the appropriate contact people, prepare a verbal
presentation before speaking with them, so that you can explain clearly what you want.
Approach manufacturers with a phone call, not a letter. A phone call is faster and gives you an immediate
response. The objective when first contacting a manufacturing company is to find out if it does contract
work. Don't address this question to the first person who answers the phone; ask to speak to someone in
the sales department or a production manager.
Site Inspection
Once you've identified prospective manufacturers, consider their locations. It's best to find a manufacturer

within driving range. If a problem arises, it's much easier to solve it in person than over the phone. A lot of
value should be placed on a manufacturer in close proximity to you.
If you're not located in an area with many manufacturers or you need a specific manufacturer that is
distantly located, visit the manufacturer before reaching any kind of agreement. If a manufacturer refuses
an on-site visit, consider this a large, waving red flag.
A site visit will tell you many things. You'll get a feel for how the manufacturer does business--are areas
clean and organized or dirty and cluttered? You'll see firsthand the company's setup and capabilities: new
equipment and ample employees or old equipment and a skeleton crew. You'll also see the quality of
products coming off the assembly line.
The other advantage of an on-site visit is the ability to put a face to a name. Knowing who your contact is
and what he or she is all about builds a bond between you that otherwise wouldn't exist. Giving
personality to a business relationship also makes it harder for your manufacturing company contact to
refuse special requests.
Working It Out
Most contract manufacturing relationships take one of two forms. The first is a turnkey relationship where
the manufacturer supplies all the parts and materials and makes your finished product for a set charge
per unit. In the other common arrangement, you provide all the needed materials to the manufacturer,
who then performs the appropriate manufacturing process and charges you a set fee. This fee could be
per unit, per hour, per process or a combination of the three. There may also be a fixed setup charge; this
is a flat fee charged each time you want the manufacturer to make your product. You're usually charged
for setup when the machines need to be adjusted, equipment needs to be moved or extra people need to
be hired. Your arrangement could also be a hybrid of these two relationships.
The manufacturer will charge you more for turnkey production. After all, it has taken on your headaches
and responsibilities for outsourcing, purchasing, storing and financing the inventory. The company has
also taken on overhead: handling costs for finished goods, management time and labor, and general
factory operating costs (depreciation, electricity and so on). These will be included in the manufacturer's
price, but you won't see them itemized on the invoice.
The alternate arrangement has you doing all this work, plus dealing with the logistics of getting the
materials to the facility in a timely fashion. If you're doing any significant volume with a product containing
many parts, you'll likely need a full-time employee to handle this.
I am a big advocate of turnkey relationships because they make life easier. In many cases a
manufacturer is already outsourcing parts and raw materials for someone else's product that your product
can also use. The company is able to make volume purchases and thus buy your parts for less. Turnkey
agreements also remove some of your liability. If the wrong part is ordered, it's not your problem. If there
are shipping delays, you aren't charged for scheduling changes. You don't have to find storage facilities.
And the list goes on. The bottom line is you need to put pencil to paper and weigh the two arrangements
to see which will work best for you.
Once you've selected the best arrangement for you, get quotes from the company you've selected for
manufacturing a variety of volumes. For example, ask a manufacturer to quote you prices based on
1,000, 5,000, 10,000 and 50,000 units. There should be a price drop with each increase in volume.
Asking for pricing using large numbers also shows the manufacturer it may have big business coming its
way. But don't misuse this strategy. Asking for a 50,000 quote and then only ordering 500 units makes the
manufacturer question your integrity.
Idea Protection
If your idea doesn't have a patent pending, have the manufacturer sign a nondisclosure agreement before
you fully divulge your idea. Also get in writing that your idea and any adaptation of it are owned solely by
you. This protects you if there's a major modification to your idea. Most manufacturers are familiar with
these agreements and are willing to sign them.
Many advisors suggest signing a production contract with your manufacturer. This allows you to lock in a
cost and provides protection should either party default. Most production contracts include the quality
standards the manufacturer agrees to meet, the specifications of the item being produced, the
specifications of any unusual raw materials needed in the process, and the consequences if either party
defaults. The manufacturer, in exchange for signing such an agreement, may want you to commit to
minimum production levels during the term of the agreement.

I suggest you avoid this kind of contract. It's best to maintain flexibility should product demand not be as
high as you had hoped. The downside is that a manufacturing firm will want its price quote to vary
depending on the units it produces. Manufacturers aren't crazy about production contracts either. They
usually want an attorney to be involved, and this could get working relationships off on the wrong foot.
If you decide not to sign a production contract, be aware that a purchase order is already legally binding.
When a manufacturing company accepts the purchase order, it's agreeing to the price, volume and
delivery date. There are also many laws that protect you from manufacturers who make poor-quality
products. Finding out about existing protections may help you decide whether to use a contract.
Avoid signing long-term purchase orders for parts or raw materials. Large judgments have been awarded
to suppliers whose customers did not take delivery of all the parts and raw materials the supplier
purchased for them under a binding purchase order.
Most manufacturers are in the business of manufacturing only. It's rare to find a manufacturer who also
does marketing. Manufacturers don't steal inventors' ideas very often because marketing inventions takes
time and money. A manufacturer without a sales force is probably not interested in taking a product to
market. The company is simply interested in making the product and getting paid.
Patents
Have a great idea, but you're not quite ready for a patent? A provisional patent protects your
rights--and "holds your place" in the Patent Office's line.
The question I get asked the most is, "If I don't have enough money for a patent, what else can I do?" In
the long run, a patent is the only way to protect your invention. However, in June 1995, the U.S. Patent
and Trademark Office (PTO) created another way to protect your invention and buy you some time. For a
small fee, you can file a provisional application for a patent.
To Save and Protect
The provisional application was created to provide an inexpensive way to file an initial application for a
utility patent. (Provisional applications for design inventions are not allowed.) To that end, it allows an
applicant to file without providing all the information required for a standard patent application, such as
patent claims, oath, declaration, information disclosure statement and all prior ideas that could be similar
to yours.
So what do you get when you file a provisional application? For starters, you get to establish an early
effective filing date on your invention, avoiding, at least for a while, the considerable time and expense of
an official patent application. In effect, a provisional application holds your place in the patent application
line.
This type of application also allows you to mark your product with the notice "Patent Pending" for one
year, should you place your idea on the market. This notice serves as a warning to potential copiers that
you are protecting your idea.
The provisional application for a utility patent also provides a quick and inexpensive way to test an idea's
commercial potential before you make the expensive and time-consuming commitment involved in filing a
formal patent. The fee for a standard utility patent is $380, while a provisional patent as an individual
applicant costs only $75, and it gives you some security against having your idea stolen during its
commercial promotion.
Unlike a patent, which is eventually disclosed, a provisional application is always kept confidential.
Additionally, you could file many provisional applications for a patent on an idea and then consolidate
them into one formal patent application within a year of filing the first provisional patent. This is of great
benefit should you discover more patentable qualities after filing the initial provisional application: You
won't lose the opportunity for inclusion as you would with a formal application, which can't be altered once
it's filed.
A formal patent application requires all inventors of the idea to be included on the application. If you fail to
include a name or wish to exclude a name, there's quite a bit of paperwork involved, which can prove to
be expensive. With a provisional application, submission or omission of an inventor's name is simply
achieved by the filing of a petition.
Should you decide, after one year, to turn your provisional application for a patent into a formal patent
application, the result will be protection for 21 years from the provisional application filing date.

Words to the Wise

As wonderful as this type of application sounds, I have a few words of caution. You should know that a
provisional application for a patent is not examined on its merits. Therefore, don't assume that because
you have a provisional application on file, you'll automatically receive a patent when you file a formal
application.
Also, when you disclose your invention, be as complete and comprehensive as possible. If, for some
reason, the claims in your formal application aren't supported by your earlier provisional application, you
won't be allowed to use the filing date of the provisional application. Also, there must be at least one
common inventor on both the provisional and nonprovisional applications, or you not only lose your place
in the application line, you forfeit the rights to your idea altogether.
There are some additional rules you need to follow to keep your provisional application legitimate. You
must file a formal patent application before the one-year deadline. If that deadline falls on a Saturday,
Sunday or federal holiday, your formal patent application must be filed beforehand. If you take no action
to turn a provisional application into a formal patent application within the one-year time frame, the
application will automatically be abandoned by the PTO. Also, filing a provisional patent without the
appropriate cover sheet and filing fee will result in a surcharge of as much as several hundred dollars.
Although a provisional application (as well as a formal patent application) can be filed without the help of
an attorney or agent, it's highly recommended that you at least consult with one or the other before filing.
The laws and filing procedures are very complex; it would be a shame to unknowingly make a mistake
and have it negatively impact your invention. For a listing of patent attorneys and agents in your area, you
can go to the PTO Web site (http://www.uspto.gov) or call (202) 512-1800.
Strategic Planning
Intellectual property attorney Robert Chiaviello of Baker & Botts LLP in Dallas has some sound advice for
anyone filing a provisional application for a patent. "When discussing your idea with someone else, never
tell them if the application you have on file is provisional rather than formal," he says. If they know it's
provisional, according to Chiaviello, they know you'll probably wait a year before starting the formal patent
process. A competitor can put your idea on the market and sell it with impunity during your "patent
pending" phase. If they know your filing date, they know they have one to three years before your patent
will be issued. You should keep all filing dates a secret to protect your idea from competitors who make a
business out of bringing ideas to market before the rightful owner of the idea can get a patent issued.
Starting the Process
If, once you examine the pros and cons carefully, you decide a provisional application is a good idea for
your invention, you can begin the application process. The nuts and bolts of filing a provisional application
for a patent are pretty straightforward. Here's what you need to include:
A written description of the invention
Any drawings that will aid in the understanding of the invention
The names of all inventors
The appropriate filing fee. This must be a certified check or money order made out to the Commissioner
of Patents and Trademarks
A cover sheet identifying your patent application as provisional
The cover sheet, which labels your application as a provisional one, must include the inventor's name(s)
and residence(s), invention title, attorney or agent information, a correspondence address, and the name
of any U.S. government agency that might have a property interest in the application. You can download
a sample cover sheet from the PTO Web site. The cover sheet form number is PTO/SB/16.
For more information on provisional applications for patents, you can call the Office of the Deputy
Assistant Commissioner for Patents Policy and Projects at (703) 305-9285. For a copy of a brochure on
provisional patents or to listen to general patent information, call the PTO General Information Services
Division at (800) 786-9199.
The Best Defense
Resources to protect yourself against scams and legal thieves.

Once someone comes up with a great idea, mistrust and suspicion of others usually follow. And for good
reason: You've got something others could steal from you. How can you protect yourself against would-be
partners looking to rip you off? There are numerous sources you can turn to for help.
Federal Trade Commission
The Federal Trade Commission (FTC) is a government agency that accepts written complaints from
consumers and will investigate a company if enough complaints are filed against it. Complaints should be
sent to the Correspondence Department, Federal Trade Commission, Sixth and Pennsylvania Aves.
N.W., Washington, DC 20580.
The FTC also has the power to enforce the Freedom of Information Act. If you submit a written request for
any public document, such as a company's filings with the state or records of court proceedings, the FTC
will provide a copy to you if it has not been exempted by law. Include in your request the company name,
the product or service they provide, and a requested time frame for receiving the document. The FTC
should send you a written response within 10 working days. For more information, call the FTC hotline at
(202) 326-2222. Requests for documents should be sent to the Deputy Executive Director for Planning
and Information, Federal Trade Commission, Sixth and Pennsylvania Aves. N.W., Washington, DC
20580.
Attorneys
It's an unfortunate fact that business today is fraught with legal potholes. It's therefore a good idea to find
an attorneys you can turn to when needed. In the beginning, look for someone skilled in the art of patent
protection. Known as intellectual property attorneys, this type of legal advisor can assist you, step by
step, with the patent and trademark filing processes, patent searches, patent law issues and more. An
attorney can also act as your intermediary, speaking with third parties for you, if you are unable or
unwilling to do so.
To find a reputable intellectual property attorney, get a referral or contact the U.S. Patent and Trademark
Office (PTO) and ask about an attorney's status. The PTO's office of Enrollment and Discipline provides
information about the status of licensed patent agents (attorneys registered to practice before the PTO).
Contact the PTO at (800) 786-9199 or visit its Web site at http://www.uspto.gov
The Internet
You can find just about anything on the Internet, using any one of dozens of search engines. If the
company you're looking up doesn't have a Web site, however, take heed: These days, any company
without a Web presence is either too poor to afford one or woefully behind the times.
Better Business Bureau
The Better Business Bureau (BBB) is a helpful resource for entrepreneurs who want to check out a
particular agent or company. But many people don't understand what the BBB really is or how it operates.
Companies pay membership fees to be a member of the BBB and must meet certain standards in order
to be accepted. When a complaint is filed against any company, the BBB informs that business. The
company is then given 30 business days to resolve the problem. If the complaint is not resolved, the
problem goes on the company's record. The BBB can even rescind a problem company's membership.
When you request a report on a company, the BBB doesn't tell you the total number of complaints filed,
only the number of unresolved complaints. Thus, the information you receive isn't the whole story, but it's
a good place to start. To check a prospective company, call the BBB in the city in which the business is
located.
Dun & Bradstreet
Another information resource is Dun & Bradstreet (D&B). D&B is a business reporting service and, for a
nominal fee, will provide you with information on most companies.
D&B offers several types of reports at various prices. They include such information as a company's legal
history, operations data and payment history. For more information, call D&B at (800) 879-1362, ext.
9712, or visit its Web site at http://www.dnb.com
Nonprofit Organizations
There are many nonprofit organizations that can help you in your research. They're a great resource and

many times will help you for free or for a small fee. Finding groups in your area is as simple as contacting
your local chamber of commerce. Some groups provide a way for inventors to gather and exchange
information, give advice, and get together to trade ideas.
The SBA frequently offers workshops and seminars on a variety of topics, including inventing. The
majority of its services are free. Most cities have SBA offices, so check the phone book for your nearest
branch.
Funded by the SBA, the Service Corps of Retired Executives (SCORE) is designed to help small
businesses. More than 12,000 retired executives in 389 chapters across the United States volunteer their
time to help entrepreneurs. SCORE can put you in touch with a successful inventor who can give you
business advice. To find the SCORE office nearest you, call your local SBA office or the national SCORE
office in Washington, DC, at (800) 634-0245.
United Inventors Association of the USA
This nonprofit organization was created solely to help inventors. It publishes a monthly newsletter and
can suggest people and companies to work with. The United Inventors Association of the USA (UIAUSA)
also acts as a "watchdog" for inventors and entrepreneurs. It informs its members of current industry
legislation and reports on fraudulent companies. The UIAUSA can also offer information on local
inventors' organizations in your area. Contact the association at (716) 359-9310.
Patent Infringement Abatement Insurance
This is an alternative to consider if you've filed for a patent but don't have the financial means to defend
yourself should someone infringe on your idea. Patent infringement abatement insurance pays for outside
legal expenses incurred in enforcing your patent against infringers, and also pays for the cost of fighting
others' attempts to invalidate your patent. The policy must be in place prior to litigation or knowledge of
the legal controversy. To get a referral for an insurance provider, talk to your business insurance agent.
State Attorney General's Office
This state government office will send you a report listing any complaints filed against a particular
company doing business in your state. If enough complaints are sent to the attorney general about a
particular company, the office may launch an investigation into the company's business practices.
Westlaw & Lexis-Nexis
Most attorneys and law libraries have access to legal databases. Westlaw and Lexis-Nexis are two of the
largest. For a fee paid online, these services allow you to search names of people or companies for a
history of present and past lawsuits. If a court has awarded a settlement or judgment, this information is
also provided. These services are useful when looking to see if a company is litigious or has been the
subject of suits from others.
Some major public libraries and most law libraries have access to these services for free or for a small
fee. You may want to have an attorney skilled in using these databases do the search for you, however.
His or her search would take less time and probably be more thorough than if you tried to do it yourself.
For more information, contact Westlaw at (800) 937-8529 or http://www.westlaw.com Lexis-Nexis can be
reached at (800) 356-6548 or http://www.lexis-nexis.com
U.S. Customs Service
Once you're awarded a patent, trademark or copyright, record it with the U.S. Customs Service to get
help blocking illegal, imported knockoffs. Counterfeit goods most often come through California, Florida,
New York and Texas. For more information, contact U.S. Customs at (202) 927-6724, or visit
http://www.customs.ustreas.gov
Picking good partners to get your invention to market is a skill mainly learned through trial and error, but
these resources can give you the information you need to get a head start.
Property Rights
What gives you the right to your idea? We'll tell you.
(TM)

You've heard the terms: patent, trademark and copyright. You've seen the symbols: ,
and . But do
you really know what they mean? Your ideas are known as "intellectual property"--and if you want your

ideas to remain under your control, you need to protect them. Here are some basic facts about the
different types of intellectual property protection available to you under U.S. laws, in response to common
questions I've received from readers:
Patents
What is a patent? A patent is a grant of protection for an invention. It's granted by the U.S. Patent and
Trademark Office (PTO) and has a term of 14 to 20 years. Owning a patent gives you the right to stop
someone else from making, using or selling your invention without your permission.
Who can apply for a patent? Only an inventor may apply for a patent on his or her idea. If two or more
people participate in the creation of an invention, the law requires that all participants apply for a patent
as joint inventors. A person applying for a patent on an idea he or she did not directly invent is subject to
criminal penalties and invalidation of the patent, if one was issued. A person making only a financial
contribution to an invention can't be named as a joint inventor.
Are there different kinds of patents? Yes, and the following are the two types of patents that
entrepreneurs use most often:
A design patent provides protection on the appearance or ornamental design of your invention. It is
generally cheaper, simpler to file and more easily accepted by the PTO than other types of patents.
However, its overall protection isn't as effective as a utility patent because the invention's design can be
changed many times, thus helping others who want to use your design avoid patent infringement. Its term
is 14 years.
A utility patent protects the function or method of your invention. This patent is more complicated than a
design patent because it requires you to explain how your invention is used. A utility patent is usually
more expensive to obtain, requires more input from an attorney, and is more difficult to have issued by
the PTO. Its protection is greater than that of a design patent, however, because patenting a method or
function provides stronger, broader coverage. A person trying to make a product similar to your patented
one must avoid all the claims of your patent. The utility patent's term is 20 years. Most inventions can be
filed as a design patent, utility patent or both.
Is there a test to determine whether my invention is patentable? Yes. To receive a design patent, your
invention must pass these tests:
It must have a new, original and ornamental design.
The novel features of your design must not be obvious.
To receive a utility patent, your invention must pass four tests:
1. Statutory-Class Test: Your invention can reasonably be classified as a process, machine,
manufacture, composition or a "new use" of any one or more of these classifications.
2. Utility Test: Your invention is considered useful.
3. Novelty Test: Your invention has a feature that sets it apart from previous inventions and is unknown
to the public.
4. "Unobviousness" Test: Your invention's novelty must not be obvious to someone who has ordinary
skill in the area of your invention. For example, if your invention is a hairbrush, the uniqueness of its
design must not be obvious to someone who uses a hairbrush every day.
How do I know if my idea has already been patented? A search can be performed on all existing
patents. This patent search will tell you whether other patents have already been issued that may
disclose or suggest your invention. You can perform a patent search on your own, use the Internet or hire
a patent researcher.
To perform a search on your own, simply find the nearest public library that has been designated as a
Patent and Trademark Depository Library. They are staffed with knowledgeable librarians who can assist
you in your search.
If you have Internet access, you can use two Web sites to perform a search. The first site is
http://www.uspto.gov This site is sponsored by the PTO and allows you to search existing patents. The
second site is http://www.patents.ibm.com , which is maintained by IBM and is more comprehensive. It
allows you to do more sophisticated searches and displays drawings of the patented products.
You can find a professional patent searcher by looking in the Washington, DC, Yellow Pages under
"Patent Searchers." These people actually go to the PTO search room where the most current information
is available. This type of search is the most accurate, although it can be expensive. Average fees for
searches start at $200.

How do I know if a product on the market is patented? Products marked with a "patent pending" or
"pat pend" have patents filed with the PTO that have not yet been issued. When you see a product with
the legend "patent" or "pat" followed by the patent number, this product has received a patent from the
PTO.
Where do I file a patent application? The Assistant Commissioner for Patents, Washington, DC 20231.
How can I get more information? Call (703) 308-4357 or (800) PTO-9199.
Trademarks
What is a trademark? A trademark is like a brand name. It is any word(s) or symbol(s) that represent a
product to identify and distinguish it from other products in the marketplace. A trademark word example
would be "Rollerblades." A trademark symbol would be the peacock used by NBC.
How do I establish a trademark? A trademark can be registered in three ways:
1. By filing a "use" application after the mark has been used.
2. By filing an "intent to use" application if the mark has not yet been used.
3. In certain circumstances in which a foreign application exists, you can rely on that.
(TM)
(TM)
When can I use the
and symbols with my trademark? The
mark may be used immediately
next to your mark. The registration symbol may only be used when the mark is registered with the PTO.
It is unlawful to use this symbol with your mark before receiving an issued registration from the PTO.
What qualities make for a strong trademark? The cardinal rule is that a mark must be distinctive. The
more distinctive it is, the easier your trademark will be to enforce. This is why so many trademarked
products have unique spellings.
How long does a trademark last? Trademark rights last indefinitely if the company continues to use the
mark to identify its goods or services. When the mark is no longer being used, the registration is
terminated. The initial term of federal trademark registration is 10 years, with 10-year renewal terms.
Where do I file a trademark application? The Assistant Commissioner for Trademarks, 2900 Crystal
Dr., Arlington, VA 22202-3513.
How can I get more information? Call (703) 308-HELP or (703) 557-INFO.
Copyrights
What is a copyright? A copyright is the legal protection of the way someone expresses his or her idea.
This kind of protection is awarded mostly to authors, artists, composers and software programmers. A
copyright only protects the particular arrangement of words or the way something looks. It does not
protect the subject matter or information communicated. For example, only an exact copy of the word
order constitutes copyright infringement of a book or part of a book.
What types of works can be covered by a copyright? Books, plays, songs, poetry, catalogs,
photographs, computer programs, advertisements, movies, labels, drawings, maps, sculptures, prints,
game boards and rules, and recordings.
What types of works can't be covered by a copyright? Titles, slogans, lettering, ideas, forms, facts,
mailing lists, directories and U.S. government publications.
When does a copyright begin? A copyright exists automatically upon the creation of the work. Thus, no
registration is necessary.
When can I use the symbol with my work? Works published after March 1, 1989, no longer need to
display the notice. However, this symbol reminds anyone seeing the work that copyright protection is
being claimed.
When should I file my work with the U.S. Copyright Office? If someone infringes upon your work, you
must first file your work with the Copyright Office before going to court to collect damages. However, if
you register within three months of publication or before you are infringed upon, you may be able to
collect attorney fees, costs and damages that don't have to be proved by you.
How long does copyright protection last? Copyright protection lasts for your lifetime plus 50 years and
needs no renewals. Copyrights awarded before 1976 last for 28 years with one 28-year renewal.
Where do I file a copyright application? Library of Congress Copyright Office, Register of Copyrights,
101 Independence Ave. S.E., Washington, DC 20559-6000.
How can I get more information? Call (202) 707-3000 or visit http://lcweb.loc.gov/copyright

Shelf Life
Want to get your product on grocers' shelves? Don't go it alone.
The next time you go shopping at your local grocery store, take note of the vast number of products lining
the shelves. How did they get there--and how can you get your product there, too?
Today, securing shelf space isn't easy--especially if you own a small company with only one product. The
truth is, it's costly, time-consuming and complicated. It takes a savvy entrepreneur to find the right
representation and distribution channels for each market.
This month, I'd like to share with you the success story of a small, one-product company that was able to
secure shelf space in grocery stores nationwide in just under two years. The company is Clean Shower
LP in Jacksonville, Florida; the product is Clean Shower; and the key to the product's success was the
Association of Independent Marketing Services Corp. (AIMS), a Chicago-based sales and management
services company and association of brokerage firms.
You may have heard about Clean Shower on the radio or seen its inventor, Robert H. Black, on television
singing the product's praises. Clean Shower is a biodegradable spray that removes soap scum, hardwater deposits, stains and mildew from a shower without scrubbing. Black, a chemist who invented the
product in 1993 after trying to clean his shower with ineffective products, gave samples to family and
friends. When they loved it and wanted more, he knew he was onto something.
Confident the best places to sell Clean Shower were in grocery stores, Black did some research and
found that grocery stores purchase most of their products through representatives known as food brokers.
So he personally approached several brokers--and got shot down each time.
Finally, in April 1995, Black got his first break when he spoke to a group of venture capitalists about his
product and gave away free samples. Paul Porter, whose wife was pregnant at the time, was in the
audience that day. Because he was on shower-cleaning duty, he went home and put the sample to the
test. He was so impressed that a week later, he set up a meeting with Black. The two became partners,
with Porter as president and CEO of Clean Shower and Black as chairman of the board.
Black couldn't have found a better partner. Porter's brother, Phil, had a connection to a food broker, and,
working together for the remainder of 1996, the brothers were able to establish distribution in two
markets: Southern Florida and Boston. Thanks to a creative radio campaign, Clean Shower achieved
great product awareness and sold extremely well.
Despite their success, the partners were frustrated. Clean Shower was a great-selling product, but
expanding into other markets was consuming too much time. They felt they were paying a huge price in
lost opportunities because they weren't able to expand fast enough.
In January 1997, Paul Porter received some strategic advice from the owner of a food brokerage
company. He told Porter to set up a meeting with AIMS, which, among other things, helps consumer
products companies achieve their sales goals. AIMS locates the right brokers to represent a company's
product, develops sales materials and conducts industry research.
After his first meeting with representatives of AIMS, Porter realized that having the company on its team
would give Clean Shower the clout it needed to sway brokers. So Porter hired AIMS to help expedite
Clean Shower's market distribution and, as Porter put it, "to validate our product."
The first thing AIMS did was research. It reviewed Clean Shower's market plan, verified its financial
backing, wrote a sales manual to be used by the brokers, and conducted research on the Clean Shower
product in its current markets. AIMS assessed the product's strengths and evaluated the company's
current marketing program for maximum effectiveness. Finding both the company and the product to be
sound, AIMS began creating a broker network for Clean Shower.
AIMS representatives contacted prospective brokerage companies and presented them with the
opportunity to represent the product. AIMS then gave Clean Shower a written recommendation of the top
brokers to consider in each market.
Within nine months of hiring AIMS, Clean Shower had landed broker representation throughout the
country. By last December, Clean Shower could be found in every U.S. market and had achieved sales of
more than $13 million.
The Grand Total
So how much did it all cost?
Before answering that question, let me share with you how much it would cost (and the effort it would
take) to establish such a broker network yourself.

First, broker relationships should always be established in person. Additionally, there are steep costs
associated with researching each of the 35 U.S. food brokerage markets. You have to find out who the
brokers are in each market, review their qualifications, and then determine their interest in representing
your product. Travel is a primary expense, as you must visit each market at least once.
All that said, many in the industry will quote an average cost of $4,000 per market to select and recruit a
broker. Porter, however, spent much more than that setting up just two markets before eventually hiring
AIMS.
AIMS charges $1,000 per market (with a six-market minimum) to recommend qualified brokers, in
addition to 1 to 2 percent of sales per market for the first two years.
Using a company like AIMS--similar consulting firms can be found via a quick Web search--saves you
money in other areas as well. For example, brokers charge a commission that ranges from 5 to 10
percent of your wholesale price, depending on the product category and expected sales volume. When
AIMS finds a broker for you, it assists you in negotiating broker fees, which can result in significant
savings.
But there is another cost of doing business with grocery store chains: slotting fees. Although many
entrepreneurs may not know about these product placement fees, the truth is that almost every grocery
store chain charges them.
These fees date back nearly 20 years, when manufacturers were going crazy introducing new products,
most of which died a quick death on store shelves. This ended up costing grocery store chains a lot of
money, because they constantly had to reset their shelves. Finally, one large grocery store chain decided
to control the frenzy of product introductions by charging manufacturers each time they added a new
product. The idea garnered immediate industry acceptance from other food chains and wholesalers, and
still stands today.
According to a recent slotting fee study done by AIMS, the cost of slotting just one item across all U.S.
markets is approximately $1.2 million for a food item (such as potato chips or cereal), $1.1 million for a
perishable item (such as butter or chilled juice) and $473,000 for a general merchandise item (such as
batteries or mascara). The cost breaks down to $23 to $75 per store--for just one item. So if you sell
cooking oil and you have three different flavors, you must pay a slotting fee for each flavor.
A company like AIMS is a great help when you're negotiating slotting fees, because they're determined
individually with each grocery store chain either through the broker or in person. And since standard
slotting fees do nothing to build sales volume, AIMS has been successfully working with manufacturers to
create traded promotional programs that convert some or all of the slotting costs into productive
expenditures, such as designing and running an agreed-upon number of radio and newspaper ads in a
certain market. With such fees sometimes totaling millions of dollars, having that money go toward
building volume can create brand awareness and put money in your pocket.
"I was just a babe in the woods [when we started]," confesses Porter. "Without AIMS, we wouldn't have
known how to roll out a broker network. I'm sure it would have taken us several years to do it on our own."
And as the success of Clean Shower demonstrates--current revenues top $42 million--getting a product
onto the shelves in all markets can have a huge positive impact on your bottom line.
For more information about AIMS and its services, check out its Web site at http://www.aimsnet.com
Contact Sources
Association of Independent Marketing Services Corp., http://www.aimsnet.com
Clean Shower LP, http://www.cleanshower.com

Father Of Invention
Meet a man who holds more than 60 U.S. patents. (You might learn a thing or two!)
Most of us know the stories of Thomas Edison, the Wright Brothers and Benjamin Franklin--American
inventors who demonstrated great ingenuity. But how come it's so difficult for most of us to name a
modern-day inventor? Our focus on whom to admire seems to have shifted from those who improve our
lives to those who entertain us. Well, allow me to introduce a living, breathing inventor who has
undoubtedly changed your life.

The next time you peel open a Band-Aid, bite into a granola bar, wear a plastic-underwire bra, squeeze a
ketchup bottle, use microwave cookware or wrap a contoured disposable diaper around a baby's bottom,
thank 76-year-old Stanley I. Mason.
Mason's inventions are as diverse as his background. He's studied in several fields and worked for many
companies, including Hunt Foods, Kimberly-Clark and Volvo. Today, he's president of Simco Inc., a
Weston, Connecticut, think tank he established in 1973. As Simco's client list reveals, many Fortune 500
companies have looked to Mason to invent or improve their products. The reason is clear: He has a long
track record of success.
An Early Start
Like most inventors, Mason showed talent at an early age. When he was 7 years old, his dad refused to
give him 15 cents to buy minnows for fishing bait. His mother suggested he make an artificial minnow and
gave him a wooden clothespin. A few prototypes later, Mason had a bass-catching minnow. Within days,
he had neighborhood kids paying him 26 cents each for the minnows, which he could make in 15
minutes.
He learned four important lessons from his minnow-making venture. First, create a product that people
want. Second, products that can be demonstrated are easier to sell. Third, find a market that will be
anxious to buy the product. And fourth, always think of how you can modify the product to create a line of
related items.
Mason has since amassed an impressive inventing record. He holds more than 60 U.S. patents, many of
which protect ideas currently in commercial use. Having worked with more than 40 corporate clients,
Mason has developed insights into how to be an effective inventor of pint-sized products, which he shares
in his new book, Inventing Small Products: For Big Profits, Quickly (Crisp Publications).
Mason believes many inventors create problems for themselves by inventing products before having the
slightest idea of who might buy them. To discover where there's a need for a new product, take weekly
trips to grocery, drug and hardware stores to study the categories of products for sale. Mason has even
gone so far as to buy a sample of all the products in a category so he could recreate a store shelf to see
how his product would look in a realistic retail environment.
If your objective is to sell or license your idea to another company, Mason has some strong opinions
about how this should be done. He has discovered that the leading company in an industry is usually the
least interested in new inventions. Mason recommends seeking out companies that are trying to become
industry leaders.
Large companies also prefer to make lump-sum payments to buy inventions, rather than pay annual
royalties. So Mason feels it's important to know how much money you want for your idea before meeting
with one of these companies. And never go to a meeting alone; always have someone with you to act as
a witness and to take detailed notes of what transpired. But Mason warns against bringing your lawyer to
a meeting. This can ruin a deal by making the other side nervous. Bring your accountant instead, since he
or she has probably already calculated the anticipated costs of bringing your idea to market and can help
you negotiate.
On The Drawing Board
Mason's list of successful inventions is impressive, but this inventor has far from exhausted his creativity.
He has several promising inventions that are expected to make their debuts soon.
For example, he has invented and patented the ultimate fruit bowl. Wouldn't it be great if you could put
fruit in a bowl and not have it spoil in a few days? When that thought crossed Mason's mind, he solved
the problem by designing a bowl set on a pedestal with strategic ridges and air holes.
Another of Mason's ideas addresses the problem caused when liquid cleaning products make your
grocery sacks heavy. Why not package these products in concentrated form so consumers can mix water
with the concentrate when they're ready to use them? With the help of his team at Simco, Mason invented
a container that holds the concentrate on one side, and has an opening on the other side that allows you
to easily add water. The sprayer at the top instantly mixes the two ingredients in the proper proportion. All
consumers have to do is fill the empty chamber with water, then spray as usual.
But Mason's grand passion is the tallow tree. Several years ago, he realized that the Chinese tallow tree
might offer a solution to our nation's need for cleaner-burning fuel. The liquid from the tallow tree's seeds
can be used as diesel engine fuel without being refined. The smoke from an engine burning tallow seed
extract is white and replaces the odor of diesel fumes with the smell of cooking honey. The outside of the

tallow seeds can be used as a substitute for edible fats such as cocoa butter; the oil can be used in
manufacturing plastic; and the leftover solids can be compressed and fed to cattle. "It's like the pig. You
use everything," says Mason.
Mason believes enough tallow trees could be grown on marginal land in Hawaii and other states to
replace at least 5 percent of the petroleum used in the United States--at the same cost as diesel fuel.
Hawaii stands to benefit from this plan as well. In the past few years, the Aloha State has seen its sugar
cane and pineapple crops transplanted to countries where labor is cheaper. Mason hopes the tallow tree
will return valuable lost agricultural dollars to Hawaii.
Although Mason has clearly been successful, he hasn't always been financially independent. Many of his
ideas were developed long before he quit his day job. He received a salary; the company retained the
patents.
His first personal commercial success came when he and his wife developed a line of microwave
cookware. Known as Masonware, it was the first line of microwave-safe cookware and cooking utensils. It
sold in thousands of stores and made him financially independent.
With so many successes under his belt, what motivates Mason today? He enjoys working on his ideas
and those of others at his custom-designed conference table at Simco, and his biggest joy is still the
same: seeing an idea materialize into something useful.
Contact Sources
Stanley Mason, (203) 227-0041, smason05@snet.net
Finders Keepers
Not sure how to choose the right patent attorney? Here's where to look and what to look for.
One of the hardest tasks you'll face as a first-time inventor is finding the right attorney to file your patent. I
know, because I unsuccessfully hired several attorneys before finally finding one that was right for me.
The reason it's so tough is that attorneys who practice patent law are highly specialized and hard to find.
To add to the confusion, many attorneys claim to have knowledge of patent law but lack actual
experience. If you don't know what to look for in a patent attorney, you could be playing Russian roulette
with your idea.
You should first understand what's required to be a true patent attorney. A patent attorney must not only
have a law degree, but also an undergraduate degree in a technical field, such as computer science or
engineering, that has been approved by the Patent and Trademark Office (PTO). A licensed patent
attorney must also pass a rigorous test administered by the PTO. Once the attorney has passed the test,
he or she is given a PTO registration number and is licensed to practice before the PTO in patent cases.
Individuals without law degrees, but with an undergraduate degree in one of the approved PTO technical
fields, may take the test. Once they pass the test, they're known as patent agents and may also submit
patent applications to the PTO. However, a patent agent is not allowed to engage in litigation or render
any kind of legal advice.
For a listing of all PTO-approved patent attorneys and patent agents, go to the PTO Web site at
http://www.uspto.gov and look under "General Information." You can search for attorneys and agents by
geographic location as well as by name in the agent and attorney roster. Another option is to search for
patent attorneys at http://lawyers.martindale.com/marhub This Web site not only outlines lawyers' basic
qualifications and contact information, but also provides their resumes.
If you're looking for someone to file only copyright and trademark applications, you should know that the
PTO does not require attorneys doing these filings to be registered. But be careful: This doesn't mean just
any attorney can perform this function. As with most legal work, you should look for an attorney
experienced in this aspect of the law to do the work for you.
Fishing For A Firm
When choosing an attorney, consider the size of the firm. You'll find patent attorneys at three types of law
firms, each with its own advantages.
A small patent law firm--maybe with just one attorney--is your first option. The good thing about hiring
such a firm is that the attorney you speak with will most likely be the same one who writes the patent
application. There is little chance your work will be spread around to others in the firm. Small firms also
have less overhead than larger firms, so they can afford to charge less. They can usually give you a very

accurate estimate of when the work will be finished because they're responsible for their own calendars.
Mark Gilbreth of Gilbreth & Strozier PC, an intellectual property law firm in Houston, says, "When you hire
a small firm, you know who your lawyer is. No patent filing is too small for a small firm."
You may decide instead to choose a large patent law firm with 30 or more patent attorneys. A large firm
offers a wealth of talent to draw on. Chances are, this type of firm will have an attorney with relevant
experience in your invention's specific field. Large patent firms are also skilled in litigating patent lawsuits.
This can be very beneficial should your patent come under attack. If you choose one of these firms, you'll
probably meet with a skilled patent attorney who will develop a patenting strategy. He or she will then
assign the initial drafting work to an associate under his or her direction. This process can be very costeffective for you because the associate bills at a lower hourly rate.
A large general practice law firm with a patent division is the third place to look for a patent attorney.
Since most entrepreneurs will need legal advice on more issues than just patent law, a large general
practice firm can serve as a legal grocery store where you can shop for solutions to your various legal
needs. You also have the advantage of not wasting time re-educating a firm about your business every
time you need legal assistance. Also, a large firm has a wide range of contacts throughout the business
community, which can be a great benefit to you and your business. And of course, your validity is
enhanced when others know you're using a large, prestigious law firm.
First Encounter
Once you've compiled a list of patent attorneys, your next step is to interview them. There are several
questions you should ask in the initial meeting. First, verify that the attorney has an appropriate technical
background. If your idea is a new chemical compound, you want someone with a chemical engineering
degree who can understand what you're talking about. Be sure to ask how many patent applications the
attorney has filed. A good rule of thumb is to look for someone who has written 50 patents, with at least
10 having been filed in the previous year. This will show competence in patent drafting.
Next, discuss billing. Unlike other legal areas, the billing in patent law is pretty straightforward. A patent
attorney should be able to give you an accurate estimate of what your patent will cost. Make sure the
estimate includes a patent search, drawings, application filing fees and at least one "office action
response" from your attorney to the PTO, in case the initial patent application is rejected.
Another area to inquire about is how the firm handles litigation. G. Gregory Schivley at patent law firm
Harness, Dickey & Pierce PLC in Troy, Michigan, believes that all patent litigation should be done by
lawyers with patent litigation backgrounds. "A big red flag is a firm that forwards its patent litigation to its
general litigator who has no patent expertise," Schivley says.
Don't overlook rapport between you and the attorney. I can't tell you the number of inventors who have
come to me over the years complaining that they didn't get along with their patent attorneys. My question
is always, "Why didn't you change attorneys?" If you don't like working with a particular attorney, you owe
it to yourself and your idea to keep shopping.
A good patent attorney should also be able to give you solid business advice. If the attorney sees flaws or
problems with bringing your idea to market, he or she should state them at the beginning of your
relationship. Bob Chiaviello, an intellectual property and patent attorney at Baker & Botts LLP, a general
practice firm in Dallas, says, "I always ask the inventor why they want a patent. If it's for nothing more
than a trophy, I say fine. However, if they feel the idea is going to make them millions of dollars and I don't
see it, I feel it's only fair to level with them upfront." Patent attorneys with years of experience have very
valuable advice to offer. If they're willing to give it, listen and take notes.
Finally, accept referrals cautiously. I don't recommend asking another attorney for a referral to a patent
specialist. Attorneys like to reciprocate with attorneys who send them business, but their referral may not
be the best one for you. Also be cautious of referrals from inventors' groups. Just because one attorney
has worked with many inventors doesn't mean he or she is best suited to you and your idea. No patent
attorney fits all inventors.
Remember, there's no single correct way to write a patent--if writing a patent was that straightforward,
inventors could write and file their own patent applications. Patent law is very complex. It takes a highly
skilled and talented attorney who knows all the subtleties of patent law to create a strong patent. If you
ever find yourself in the unfortunate circumstance of having to defend your patent in court, you'll be
thankful you took the time to do your homework before selecting your patent attorney.

Tomima Edmark is the inventor of the TopsyTail and several other products and is author of The American Dream
Fact Pack ($49.95), available by calling (800) 558-6779. Questions regarding inventions and patents may be sent to
"Bright Ideas," Entrepreneur, 2392 Morse Ave., Irvine, CA 92614.

Innovations
Business StartUp's Magazine
July 1999 Issue

No Time? No Problem

You're never too busy to private label.

By Don Debelak
ike most people these days, 32-year-old Jerilyn Winstead of St. Louis is very busy. In her
case, it's because she has three small children. Whether it's because of your job, family or
school, you, too, probably think you're too busy to do anything with your ideas.
Big mistake. True, you might not have time to manufacture and market a product on your
own, but almost everyone can spare enough time to sell a product on a private-label basis,
which means you supply a product to another company that then sells it under its own
name. For instance, many Sears products are made by independent manufacturers who sell
the product to Sears on a private-label basis.
Winstead's invention, the BlanketStrap, is a strap with clips that attaches to a nursing
blanket. It wraps around a mother's neck so she can nurse a baby more easily in public.
Winstead got the idea when she was nursing her first child. When she was expecting her
second child, she made a prototype, spoke to a patent attorney and started to sell her
product.
From the start, Winstead was afraid she wouldn't have time to sell her product properly.
She didn't want to pay $5,000 to patent it, because she was worried she wouldn't sell
enough to cover the cost. She placed the product in one store and contacted several
catalogs, but found she just didn't want to spare the time necessary to sell the BlanketStrap
effectively.
Winstead is frustrated that she's missing out on a golden opportunity. "I know the product
can sell because nursing moms love it," she says. "I just don't have time to pound the
pavement." Winstead hasn't given up on the BlanketStrap, and continues to sell it on a
direct basis and via mail order to people who've heard about it from a friend or seen it in a
parenting magazine.
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An Easier Way
Teaming up with a small to midsized company that makes related products is the most
effective way to market a product when you don't have time to do it yourself. You can set
up a private-label sale to the company, or sign a marketing agreement with the other firm
to sell your product for you under your own name.
This tactic is relatively easy to execute if your product is truly novel and innovative. Striking
a bargain with an established company benefits you in two ways. First, it frees you of the
sales and marketing workload; second, a company with an established sales force and
distribution channels will probably sell many more products than you could on your own.

There are several reasons manufacturers like private-label deals. One is that having a larger
product line makes it easier for manufacturers to sell to retailers. Retailers prefer to buy
from manufacturers with larger product lines because it's less work and because a complete
line of products from one company, with uniform packaging, looks better on the store
shelves than a hodgepodge of products from different companies. Manufacturers also find
that private-label arrangements help them attract distributors and independent sales
agents.
A private-label sales agreement typically won't interest larger manufacturers because an
additional product adds only a small percentage to their sales volume. But small and
midsized companies will be interested if you've got an innovative product that can increase
their sales by 10 to 30 percent.
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Finding Private-Label Partners

You can find small to midsized companies in your target market by searching trade
publications and consumer magazines. Companies selling to your target market will run ads
and press releases, or may be listed in directories of suppliers that the magazines
occasionally publish. You can find magazines appropriate to your business in Gale's
Directory of Publications and Broadcast Media (Gale Research), available in larger libraries.
For Winstead, a good trade magazine to get is Baby Shop Magazine, from Spindle
Publications in Pittsburgh; it targets retailers that sell juvenile and maternity products. Good
consumer magazines include Child First Year Planner, Child Birth Planner, and Child
Pregnancy Planner, all published by Gruer + Jahr USA Publishing in New York City.
Once you get the magazines appropriate to your product, request literature from every
company that provides products that target your customers. In Winstead's case, the target
customers are mothers who are or will soon be nursing.
When you get the literature, call to find out how big each company is and get the names of
its president and/or marketing director. Keep a file on companies with sales between
$500,000 and $10 million. Avoid companies with sales of less than $500,000 because they
may not have the money or salespeople to effectively market your product.
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Making Your Pitch

Before approaching a prospective private-label customer, prepare a prototype package
similar to the packaging that company uses. Take a high-quality picture of the package and
of your product in use, and prepare a one-page sales flier highlighting your product's key
benefits. Next, call the president or marketing director at the company and ask if they
would like to take a look at a product they could purchase under a private-label agreement.
Contact only one company at a time. Companies want exclusive arrangements and don't
like taking on products that have been "shopped around" to a lot of manufacturers. Tell the
manufacturer you've chosen to approach only them because you feel your product is a
perfect fit for their business. If they show interest in purchasing your product, send a cover

letter and your sales flier. A week or so later, call back to see if they would like a sample.
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Price Pointers
Pricing is a major issue in private-label sales arrangements. In order to make money after
paying all the marketing and sales costs, a manufacturer has to be able to buy a privatelabel product at about 30 percent of the final retail price. That means your profit margin on
private-label sales will be slim--but you'll still earn more than you would selling your product
part-time.
Don't stop trying to come up with new inventions just because you're short of time. If you
set up a private-label agreement, you can sell your product with a minimum of effort. You'll
generate part-time income and begin building a track record of success that will make it

easier to sell future inventions.

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How Low Should You Go?

Jerilyn Winstead wanted to price the BlanketStrap very low so every nursing mother could
afford one. Probably the biggest misconception I've run into in my 20 years of marketing
new products is that low-priced products are easier to sell. In fact, just the opposite is true.
The problem with inexpensive products is that the sales costs for distributors, retailers and
manufacturers' reps are too high for them to make any money.
Winstead tried to sell the BlanketStrap to several baby products catalogs. Only one was
interested in her low-priced product. Why? First, a catalog's shipping and handling charges
are typically about $5--almost the same amount as Winstead's suggested retail price of
$4.99. Consumers don't like it when a product's shipping and handling cost more than the
product itself.
Second, catalogs typically make more money on expensive products. The only time catalogs
might accept a low-priced product is if it appeals to every buyer. The BlanketStrap appeals
only to mothers who are or will soon be nursing--a small segment of most catalogs'

customer base.
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At Your Service
Large distributors often won't take on new products. That's because the cost of stocking a
new product, putting it in a catalog and training a sales force to sell it is too high if the
product is unknown. The distributors who are willing to take on new products are called
jobbers (or service merchandisers).
Jobbers sign contracts with retailers who assign them some shelf space. The jobber places
merchandise and charges the store only after an item sells. This gives jobbers flexibility in
taking on new products. They can watch a new product and see if it sells.
Several jobbers specialize in baby products and might give Jerilyn Winstead's product a
chance. Phelon's Discount Jobbing Trade Directory (Phelon, Sheldon & Marsar), available at

most large libraries, lists jobbers for each state.

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Resident Advisors
If you don't have time to market your invention, you can sell it through a resident buying
group. These companies, which buy products for anywhere from 50 to 5,000 different
stores, provide a valuable service because small and midsized retailers don't have time to
search for new products. Department stores, smaller discount stores, children's stores,
hardware stores and sporting goods stores all typically use resident buying groups for at
least some of the products they buy.
Several resident buying groups specialize in infant accessories and maternity products.
Jerilyn Winstead would have far greater sales potential if she targeted a few buying groups.
A good directory, available at larger libraries, is Phelon's Major Stores & Chains & Resident

Buying Offices (Phelon, Sheldon & Marsar).

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Contact Source
Jerilyn Winstead, c/o Baby Bunting Co., 1055 N. Rock Hill Rd., St. Louis, MO 63119,
74401.176@compuserve.com
Don Debelak (dondebelak@uswest.net) is a new-business marketing consultant who has
introduced new products for more than 20 years. He is the author of Bringing Your Product
to Market (John Wiley & Sons, $19.95, 800-225-5945).
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