Last week, I was honored to give the keynote at the First Annual Patent Bootcamp for Women and Minorities in STEM at the University of Arkansas.
Time for the Patent Bootcamp Keynote: “Diversifying Innovation: From a Seat at the Table to Inventing a New Table.” Happy to welcome back #UARKLaw alumna Shontavia Johnson, AVP for Academic Partnerships and Innovation at Clemson University.#PatentBootcamp#STEMpic.twitter.com/twqrze4kry
The day was quite full, with experts from around the region and country providing insights to a full room about how women/people of color can acquire greater access to the patent system.
https://twitter.com/UARKLaw/status/1172619042219315204?s=20https://twitter.com/UARKLaw/status/1172619042219315204?s=20In the spirit of that conversation, I wanted to share some lessons from the bootcamp for current-and-future inventors who weren’t there.
One of the things that struck me throughout the day was how many inventors had the fundamental questions about inventing and patenting. Many questions were about the basics of when/where/how you even know that you have something worth patenting in the first place. And, people really wanted to know what they could actually patent and what wouldn’t make it through the patent office.
Before you can really be prepared for the complicated world of patents, its important to understand the basic realities of what you’re getting into!
Here are three realities for innovators just starting down the path of brainstorming, ideating, inventing, and patenting: #1: you need more than just “an idea,” #2: you need help; and #3 you may or may not get rich.
#1: You need more than just “an idea”
Lots of folks have ideas about how to solve problems, but ideas aren’t patentable by themselves. This is just the starting point. What is patentable is an invention. An invention is what happens after you find a problem, come up with an idea to solve that problem, and literally articulate the steps in the process that allow your idea to solve that problem.
For example, if you hear lots of stories in the news about kids being left in hot cars, you might have an idea for a device that reminds adults that there’s a child in the backseat before they get out, lock the door, and go into work. This is an incredible and valuable idea, but it isn’t patentable until you do the work of identifying the steps necessary to create that device, and perhaps make some drawings or a prototype. The latter is the actual invention.
So, your first step is to clearly determine all of the steps that get your problem-solving-concept from idea to actual invention. This can take days, weeks, months or years, depending on what you’re considering.
The patent system in the United States is complicated, time-consuming, and expensive. For these reasons, and others, many people work with patent lawyers who are experienced and competent. These lawyers do not come cheap. The Patent Bootcamp in Arkansas featured many professionals, lawyers and inventors alike, who reiterated the importance of competent counsel through the patent process.
Here are some suggestions that can help you get the right kind of help, at the right price point, for your invention and goals.
* If you absolutely have to do this on your own, without a patent lawyer, check out the NOLO Patent It Yourself book. It is one of the best I’ve seen. Sometimes you can find an edition in the library.
*Speaking of libraries, there are a number of Patent and Trademark Resource Centers around the U.S. that can help you through the federal government’s patent and trademark processes.
* If you want to try working with a lawyer and/or law students acting under a lawyer’s direction, but have very limited resources, read this article I wrote: For Women: On Being an Inventor and Finding a Patent Lawyer (it’s good for the fellas/non-binary/genderqueer folks too!). It is full of low-cost resources, including the Law School Clinic Certification Program (students and lawyers draft applications for low/no money, besides filing fees) and the Patent Pro Bono Project.
* If you can afford it, hire someone. An average patent application costs between $7,000-$10,000, and the application is just the first step in what will likely be a multi-year process with even more fees, so you want to choose right. My For Women: On Being an Inventor and Finding a Patent Lawyer article gives some suggestions on how to find a patent lawyer. The Patent and Trademark Resource Centers can also help you find a lawyer.
#3 You may or may not get rich
Many inventors assume that getting the patent is the pièce de résistance and the key to unlocking millions and millions of dollars. This may happen for you, and I hope it does. One need only look to Sara Blakely’s story of patenting and building what has become known as Spanx for confirmation that it is indeed possible.
Monetizing a patented invention is not for the faint at heart. Once you get that patent in hand, manna does not automatically flow from heaven. You’ll either have to make and sell the invention yourself or find others to make and sell your invention.
Re. making/selling your invention, if you don’t already have the money, you’ll have to seek funding from a bank, family and friends, or investors. Women can have it tough when it comes to fundraising, but, obviously, all things are possible. One woman, Arlan Hamilton, has founded Backstage Capital to invest in underrepresented founders, including women, POC, and folks in the LGTBQIA+ community.
Re. finding others to make and sell your invention, a common way to do this is via licensing, where you and a third party create a contract where you give the third party permission to make and/or sell the invention in exchange for some kind of payment(s). As has been written about elsewhere, licensing is HARD. However, don’t be discouraged, just be realistic.
These three realities popped up many times during the Patent Bootcamp in Arkansas. Hopefully they help you on your journey!
What other realities have you experienced as an inventor? Drop a line in the comments and let me know what your experience was like!
Starting a business requires making all kinds of decisions, and one of the most important is how you’re going to operate and do business. You have to ask aaallllll kinds of questions about concepts that are pretty foreign to folks new to the game:
Will you go start making money and growing your business without incorporating at all?
Will you file a DBA/assumed business name/fictitious name and stay in that lane until you make more money?
What’s difference between an LLC and a corporation and why does it matter?
I recently talked with business law expert Carliss Chatman about all of this and she offered some amazing advice that I’m excited to share here.
Carliss holds a number of titles, including attorney, author, and business law professor at Washington and Lee University School of Law, where she teaches classes including Contracts; Sales and Leases; Agency and Unincorporated Entities, Corporations, and Business Associations.
She has more than a decade of experience representing small and start-up businesses in the United States and the Kingdom of Saudi Arabia. If you are wondering about whether and how to incorporate your business, Carliss is definitely the expert to ask.
Carliss and I had an incredibly wide-ranging discussion about how new entrepreneurs can set up their ventures. We talk about how to decide between an LLC and a corporation, when a limited partnership makes sense, and why you should always have a separate bank account for your business.
We also spend a few minutes at the end talking about her viral tweet, which to date has nearly 600,000 likes and more than 200,000 retweets, and how she was actually prepared to make that unanticipated moment work for her brand and professional projects.
One of my favorite a-ha moments happened early in the discussion when I asked Carliss when entrepreneurs should think about incorporating their business, and her reply was, “you should not do one thing without forming some entity that gives you liability protection.” Basically, forming a separate entity should come first, before you do anything. She explains why she believes this, and more, throughout our conversation.
You’ll also learn:
Why the LLC isn’t always the best way to go.
How to decide between a corporation and an LLC.
Why your business may not need to own all of your intellectual property.
How to make decisions today based on the future plans you have for your business.
Why and how the prospect of VC funding should impact how you form your business.
When to hire a lawyer to help form a business entity and how to choose the right lawyer.
If you are wondering how to move forward with forming the right business structure, THIS. IS. THE. DISCUSSION. FOR. YOU. Check out the video below for all of the amazing-ness that is Carliss Chatman and her expertise.
I’d love to hear your thoughts about this discussion. What’s something you learned that you didn’t know before you listened to it? Are there questions that you still have? Let us know in the comments below.
Inventing stuff is fun and working with inventors is just as great. By and large, the practice of intellectual property law has been my favorite over the years because the clients are typically happy. Usually no one is fighting over anything in court, inventors are pleased to see their brainchild come to life, and everyone is excited about the impact this new innovation will have on the world.
The record scratch in the invention process often comes when it’s time to find a lawyer and go through the United States Patent and Trademark Office (USPTO) process. The USPTO is the government agency tasked with issuing patents in the United States.
Lawyers are hard to choose, and it can take us months or longer to draft an application. Then, the USPTO process takes about two years to get through, not including the staggered fees you have to pay for the next 20-ish years if your invention is approved/issued. All the excitement can start to wane if you’re not careful in picking the right patent attorney.
Warning: I try not to be a doom and gloom type of messenger, but the reality is that finding a good patent lawyer for your invention is tough. It can be even tougher if you’re a woman. Women have a significantly harder time getting patents issued through the patent office. In fact, only 4% of patents issued by the USPTO in the last ten years name a woman inventor.
And, if you’re looking for a female patent attorney, only about 25% of all registered patent attorneys and agents are women, so you may have to dig deep to find us (and let’s not get started on intersectionality).
If you need more proof on these challenges, check out the below talk by Sara Blakely, the now-billionaire founder of Spanx. Sara recounts her experience trying to first find a woman patent attorney, and then any patent attorney, who could help her get her first Spanx patent.
Because of these harsh facts, it is sooooo important that you hire a lawyer you trust and clearly understand.
I hope this article helps you, my inventor sistren, make a series of good, grounded decisions when they are searching for a patent lawyer. There’s no way I can cover everything here, but here are four major considerations if you’re searching for a patent lawyer.
1. Avoid being scammed
There are a number of “invention marketer” or “invention promoter” companies out there who may take your money and leave you with little to show for it. The USPTO has published complaints against companies including Davison Design, Invent Company, Invent Help, Harvey Reese Associates, and World Patent Marketing.
Here are the USPTO warning signs to look for if you get wrangled into a call/discussion that seems sketchy:
For more, check out the below articles on this topic:
Please, please don’t get scammed–not only could you lose thousands upon thousands of dollars, you could also lose the rights in your invention completely.
2. Explore legitimate, low-cost options
The baseline fact is that obtaining a patent is EXPENSIVE. You can expect to spend between $8,000 and $10,000 for a quality utility patent application (the most common type). This will probably not include the cost of what is called the “prosecution” phase, which is a time period where your lawyer will go back and forth with the patent office on your application’s details.
Check out the diagrams below on cost estimations for patent applications–both are a little dated but still provide pretty accurate guidelines:
APPLICATION PHASE COSTS
From IP Watchdog, a very reputable patent law website
PATENT COST DIAGRAM FOR PATENT APPLICATION + PROSECUTION PHASE
From bitlaw.com, a free resource from the Tysver Beck Evans law firm
I know the numbers seem bleak for a lot of people. $10,000 is a lot of money–most of us don’t just have that kind of cash sitting around. Because of, well, life, I want to share three low-cost resources with you that will help you get started if you need a little time to get your money together for a full-blown patent application.
You can always file your patent application yourself–there’s nothing in the law to prevent an inventor from doing this. As I’ve written about elsewhere, however, this process is very complex and convoluted. I’d be weary of going at it alone. If you’re going to try, the hands-down best book to guide you through the process is NOLO’s Patent It Yourself.
The USPTO offers two low-cost/free programs to assist inventors. The first is the Law School Clinic Certification Program,which allows more senior law students to work on patent applications under the strict guidance of a licensed patent lawyer. Law schools don’t typically charge for these kinds of services. You may end up paying a few hundred dollars in USPTO filing fees, etc., but that pales in comparison to law firm fees. The law school may also have a larger pool of diverse students/faculty to pull from. The list of participating law schools is ever-changing, but you can find the full list by clicking here. This is a great opportunity if you’re in the vicinity of one of the participating schools.
The second low-cost/free USPTO program is the Patent Pro Bono Project, which matches inventors with registered patent agents or attorneys who volunteer their time without charging the inventor. You’ll still have to pay USPTO filing fees, but that is probably a few hundred dollars. You can find out if your state/region has a program at this website. This is also a great opportunity if you’re near a good program. My anecdotal observation is that more women volunteer for this kind of thing than men–I don’t have any data or research to back this up though.
For more, you might want to watch some of the below USPTO video–it is dry as all get out (they are known for this), but there’s some great information buried in it about low-cost/free options for cash-strapped inventors:
3. If you can afford it, hire someone
I know it may be uncomfortable to fork over thousands of dollars for a patent application that may or may not be approved by the patent office. This is another reason to carefully choose your patent lawyer. The only thing worse than giving someone $10,000 to file a patent application is giving someone $10,000 to file a patent application that isn’t ultimately approved by the USPTO (or, getting an application approved that isn’t worth the paper its typed on).
This is why I suggest hiring an experienced patent lawyer if you can afford it. To find one, try the following three suggestions, in addition to your obligatory Google searching:
If you know any lawyers, ask them to refer you to someone they trust. Word of mouth can often be the best way to find a trustworthy patent lawyer.
Search your state’s or city’s bar association website for a lawyer directory that lists attorneys by practice. Bar associations are professional organizations for licensed attorneys–the easiest thing to do is perform a Google search using [your city/state] + bar association.
Search the USPTO’s directory of licensed patent agents and attorneys. To represent an inventor at the USPTO, a person must take and pass a special exam and have certain qualifications. Generally speaking, patent agents are people with science/engineering/technical degrees but no law degree, and patent attorneys have a law degree. Both agents and attorneys can represent patent applicants in the USPTO. The USPTO has comprehensive records of this group because of the special exam all parties have to take.
4. Educate Yourself
Understanding the patent application and patent prosecution phase is hard. The USPTO gives a mandatory exam on these topics to every person who wants to file and prosecute patent applications. Even though nearly all test-takers have science/engineering/tech undergraduate and graduate degrees, and in many instances, a law degree, the pass rate still hovers around 50% or so. This just goes to show you how tough it is to really understand all the nuances of patent practice.
If you’re planning to file a patent application, either on your own or with help, take time to read up on the general process so that you’re not surprised later. You will, at minimum, want to understand the basics of what is patentable, what the application includes, and what the process will look like once the application is filed.
NOLO publishes some of the best resources I’ve personally experienced in terms of clear, step-by-step layperson instructions. If you can’t afford to buy all of them, head over to your local library and check them out!
There are other things I could mention in this article, but it is getting pretty long. I’ll explore more later. In the interim, are you thinking of patenting an invention? Already been through the process? Drop a note in the comments section and let me hear about your experience!
As summer is making her exit, I’ve been trying to take full advantage of the last few weeks. I rarely watch television, but I binge-watched a few things recently. Two programs in particular got me thinking a lot about the importance of having a vision.
One was Tiffany Haddish Presents: They Ready, which is on Netflix. They Ready is a set of six female comedians that Tiffany has known over the years in the comedy industry. They all started out on the same grind 10-15 years ago, and Tiffany would always tell them that when she made it she would put them on.
The Netflix series is the manifestation of that promise. Talk about being a good friend.
The other thing I watched was the five-episode Free Meek series on Amazon Prime, which is based on: (1) the rapper Meek Mill’s life in and out of the criminal justice system for more than a decade, and (2) current efforts to support criminal justice reform because of experiences like Meek’s:
These are wildly different types of programs, but one consistent theme stuck out to me about both of them. Both Tiffany Haddish and Meek Mill had and still have a very clear vision of where they are going long before they could see any of it.
All six of Tiffany’s friends from They Ready told similar stories about her–especially about how she would say, years ago, that when she made it big, she would shine a spotlight back on folks who hadn’t made it yet. Today, the things that she envisioned have happened and continue to happen. Tiffany’s rise to stardom from poverty, foster care, and divorce is pretty amazing, and to hear that she had the vision long before she could see any proof of it inspires me each day.
At 9 years old, Tiffany became the primary caregiver for her four younger siblings after her stepfather tried to kill her mother, who was mentally ill. At 12, they were placed in foster care and separated. Her youth included academic delays, sexual assault, and homelessness. Talk about a rough start. Tiffany began working as a comedian in 2005 and just continued to work toward her goal until everyone else knew what she had known all along about her work.
Meek Mill’s family and friends told similar stories about him. They recounted how, as a young kid, he was laser-focused on his vision of becoming a successful rapper. Even with his troubled history with jail, the Drake beef, drug addiction, and everything else, he continues to bounce back some kind of way. He is relentless in the pursuit of his vision and setbacks seem to only be temporary with him.
In 2017, Meek had been on parole for a decade, and he was sentenced to two to four years in prison for violating his parole. While he was in prison, his story garnered national and international attention. He ended up getting support from a number of high profile people, including Michael Rubin (co-owner of the Philadelphia 76ers) and Jay-Z. These efforts helped get Meek released after five months.
After all of this, he released a new album in 2018, Championships, that debuted at number one on the US Billboard 200.
It’s like this dude has 9 lives. No, 90 lives. He seems so focused on his vision that nothing will stop him from pursuing his rap career goals.
These two stories make the importance of vision all the more real for me. Tiffany and Meek created huge platforms for themselves literally from the ground up. Despite what you may think about Tiffany or Meek’s art, comedy, or rap lyrics, there’s no denying the fact that they manifested some huge experiences in their lives.
This reminds me of a quote that I keep on my phone and look at nearly every day – positive thoughts attract positive results.
This philosophy is why I feel so strongly about creating a vision for my life, business and brand, and why I encourage people who follow and work with me to do the same. I wrote my vision down and I read it every day, and at this point I can nearly recite it from memory.
Committing to it, in both memory and practice, has helped me reset countless times when I feel overwhelmed, out of control, or too busy. Nearly every time I feel this way, it is because I’ve gotten too far away from the vision I’ve already set for myself.
I definitely feel overwhelmed trying to fix the problems of other people. I am still reminding myself every day that other people’s emergencies do not have to become my own.
I certainly feel out of control when I’m working on projects and other things that I do not feel passionate about. While I’m not down to zero on this yet, I get better each day about saying “no” to protect my time, energy and vision.
Busyness is something that I’ve wasted a lot of time with. I used to think busy was an indicator of success and something to be proud of, but now I think it is usually the result of poor planning and/or procrastination.
Come on Spongebob, get some help!
When I really look at where I spend my time each day, the times when I feel the most busy is when I’ve clearly been distracted by other things. Or, when I’ve procrastinated entirely too long (which usually means I should have said “no” to start with). So, saying “I’m busy” usually means “I really didn’t want to make time for this so I waited until the last minute” or “this isn’t really my area of interest, passion, or expertise.” For these reasons, I work each day to remove the sentence “I’m so busy!” from my lexicon and tell the truth about why the situation is what it is.
The reason is almost always because that thing is not part of my vision (though it is definitely probably someone else’s!). One of the greatest things about writing my vision down is that it shows me clear paths for when and where I should say yes and no to things.
If you’ve never tried to write your own vision down, here are a few questions you can answer to get started:
What do you want your life to look like?
What do you want your “brand” to look like?
What do you want your company to look like?
What do you want your energy to look like?
When you answer these questions, get outside of your usual location. Go to some quiet, peaceful place and let yourself daydream without being limited by whatever is happening in your life today.
If you’d like more strategies on how to create your vision, consider going through the Create A Vision mini-course. I’ve been doing this for years and it has truly kept me grounded in what I want and un-distracted by everything else. It is free and less than 30 minutes long in total.
Have you created your own vision? If you’d like feedback, I’d love to provide some! And, I know the other folks reading this can learn from your experiences. We are all in this together.
I always say that I’m on a mission to build a nation of good people with dynamic personal brands and successful businesses. We can learn from each other on this journey, particularly when we have accountability partners. This is why I am building a whole nation of them.
Download the app
You can connect to the the private community I’ve created to provide support and encouragement along the journey–online and via app. Check us out at programs.shontavia.com or via the Mighty Networks App.
Download the Mighty Network app by clicking here. Once it downloads, click “Find a Mighty Network” and search for Shontavia Johnson. You’ll find content there that I may not share elsewhere.
Thank you so much for joining me on this roller coaster of an experience. I am eternally grateful that I get to do this work with wonderful people each day.
If you decide that you want to patent your invention, make sure you’re wearing your I’ll-be-patient hat because the entire process includes a number of steps that take a lot of time and energy. From the application drafting phase, through the back and forth with the Patent Office (called “patent prosecution”), into the life of the patent, you’ll do a lot of waiting and have a lot of deadlines to pay attention to.
Secrecy is very important with inventions because inventors have to file a patent application with the Patent Office to prove ownership and priority in that invention. Today in the U.S., the first person to file an application gets priority from the Patent Office, so if someone beats you to the punch with filing, you could lose out on the ability to protect your invention altogether. For this reason, you don’t want to share anything about your invention until you’ve taken all of the necessary steps.
If you need to file something quickly and don’t have time or money to file a full blown utility patent application, a provisional patent application could serve your purpose, though that only holds your place in line, and your priority date, for one year.
If all else fails and you need to tell people about the invention before an application is filed, you should have those parties sign a Confidentiality or Non-Disclosure Agreement. These types of agreements make people promise not to talk about your invention except under whatever restrictions you set. If they break the promise, you could have them on the hook for breach of contract.
Once you’re ready to file the patent application, you and/or your lawyer will need lots of information to give the patent office. Whether you try to go at it alone, or you hire a patent attorney or agent, you still will be intimately involved in the process.
A patent application has several parts, which a lawyer can draft with your input. These parts include:
A title;
An abstract;
A background summary of the field your invention stems from;
A summary of the invention;
Drawings (optional, and will probably require a professional patent illustrator);
A description of any drawings, if you have any; and
Claims.
It can be expensive, in terms of time and money, to obtain a good, quality patent application. The below data from 2015 is a good gauge for what you’ll pay a patent lawyer, though these numbers have probably gone up some since then.
Once you’ve filed a patent application with the Patent Office, that is only the first step in the process.
Your application will be assigned to a person called a Patent Examiner. This person will have a background in the field of your invention, and their job is to read your application to determine whether you meet all of the patent requirements.
In many cases, they will either reject certain parts of your application or ask for further clarification through a letter called an Office Action. While it can be pretty scary to get one of these Office Actions, they are common and do not ruin your changes of getting a patent.
After a few rounds of this, you may need to make changes to your application to get the Examiner to approve it. You may also need to appeal some of the Examiner’s decisions. This process can take anywhere from six months to three years, on average.
And the end of it all, if you’re successful you’ll get a Notice of Allowance from the Patent Office. This means you’ve done everything you need to do and your patent has received all approvals. This will be the final step in what is likely going to be a long and involved process. All that’ll be left is for you to pay the required fees and correct any drawings that might need to be corrected after the back and forth with the Examiner.
If you hire a lawyer, find out up front if their attorney’s fees include any Office Action responses and how you’ll be billed for that. These things can add up pretty quickly, especially if the lawyer is charging by the hour, which is common.
The patent process can be daunting, and frankly, it is becoming so expensive that many new entrepreneurs and startups have trouble affording it. If you’re committed to your invention, you’ll have to be in it for the long haul.
It could very well be worth it in the end.
Have you gone through the patent application process? If so, please share your tips for surviving the process in the comments!
