Texas Women Partner

The Idea

It was the summer of 2004 and the Texas heat was radiating into orbit reminding me it was weather for a great summer tan. For a moment, my mind journeyed back to my teenage years on the front porch step, a skinny sliver of concrete just long enough for my body where I sought the sun’s rays between 11 AM and noon for my weekly burn and peel. Slathered with iodine and baby oil, I turned like a lobster on a spit; my body never really got very brown.

Having finally grown up, I don’t seek to tan that way anymore but there were few options at the time and there was no such thing as a spray tanner. From there, I tried Coppertone in the early days and followed the progression of sunless tanners for years so I know I am a tanning guru.  Sunless tanning formulations have continued to improve and now more than ever, it’s the smart thing to do.  It was an annoyance not to be able to reach the back part of my body so I decided about 4 years ago to solve that problem. Out of my own personal need and the thought that other sunless tanners have the same problem, I had the IDEA!  I began to formulate plans for a plastic injected mold for a wand that would house a spray tanner aerosol to give just enough extension to reach the back side of the body when applying a sunless tan.  The SheerTan Wand and companion Sunless Tanning Aerosol began its existence.

Do you have a novel or technically sound idea you want to develop into an E-business website? From idea creation, there are many steps to final execution to consider and analyze.  In each of the following 12 months, I will discuss subjects you should consider when building your E-Business strategy.  To begin, I will focus on product creation E-Businesses.

• Does your product provide an unmet consumer need?
• Can you make it so the cost can have a number of mark-ups and still be competitive at retail?
• Does it appeal to a broad audience?
• If it is a niche market, do you have the expertise to have ‘a following community’?
• Ideas have no value – execution and proven product salability has value.
• Count on idea to execution costing more than 5 times your first estimate.

The Execution

Begin your strategy by possible IDEA protection, but how?

The information below does not constitute legal advice; seek a competent patent attorney to execute any patent filings.

• Research your idea to see if has already been created. You, of course, can Google your product to see if anyone is selling it, in addition to looking for it at retail locations where your item would be sold.  A handy tool is Google Patents that provides easy access to searching issued patents.  If it hasn’t been patented, then document your idea in a spiral notebook and have two friends or associates you trust witness your idea on the pages following. Keep this notebook safe to ensure your idea and date is validated.
• Only about 50% of patent applications are finally issued. Fewer than 3% of patented inventions every make money.  This is a hard fact you need to consider with great clarity before you spend a penny.
• There are three kinds of patents.  A utility patent, a design patent and plant patent. Use the plant patent if you are working with plants; otherwise, work with utility and design patents.
• The most important part of any patent is the ‘claims’ you provide.  These ‘claims’ are examined closely when comparing prior art by the examiners, are the basis for any court action regarding infringement and are considered to be the ‘what, how and why’ of your invention.

Patent Types

• A Design Patent protects the visual or external appearance of the product but not how the design functions.  The basic product function already exists in the market and you are changing the ornamental design, configuration or decorative appearance.
  • A design patent lasts for 14 years.  The time to issuance is much less complicated and cost is much less expensive than a utility patent.
  • Patent filing fees are $230 with patent attorney fees ranging from $900 – $3500 which includes an average of 8 drawings with E-filing to the US Patent Office.
  • There are no maintenance fees for design patents and can include only one claim.
  • There is no international protection under the Patent Cooperation Treaty (PCT). You have 6 months after the first filing to file for foreign priority in any country subscribing to the Paris Convention.
  • Provisional application and protection is not allowed. A request for continued examination (RCE) in not available.
• A Provisional Patent can be filed in advance of a utility patent and will give you immediate protection with a filing date, at which time your invention will become “patent pending”.
  • You can file this application to protect your invention at a lower cost for a period of 12 months.  This gives the applicant time to determine the profitability and patentability of the invention.
  • It will allow time to shop it around to potential investors or licensees who will possibly assist in paying the higher cost of the Utility Patent.
  • A Provisional Patent gives you a one year extension to the duration of the patent beyond the 20 years because the duration of the 20 years begins with the provisional date, one year prior.
  • Government fees are less since there is no need to file patent claims.
  • Will provide protection if you want to immediately produce and market your invention.
• A Utility Patent protects the way something is made and used.
  • A Utility Patent expires in 20 years.
  • Your application will be published and visible to the public 18 months after filing even though not issued.
  • After publication, inventors can claim reasonable royalties from others who make, use, sell or import the invention who may be infringing.
  • International protection under the Patent Cooperation Treaty (PCT) is available.  Though this does not provide you with an international patent, it delays the expense of filing in other countries, allowing you more time to access the feasibility of selling your invention abroad.  Laws under the PCT allow you to file a single international patent application that will temporarily protect your invention in up to 117 countries for as long as 2 ½ years.
  • $350-$1,000 for filing fees plus attorney fees and foreign filing application fees.  Total fees can average $5,000 to $50,000 and up. My simple construction Wand costs $40,000.
  • Filers can request Continued Examination (RCE).
  • Annual maintenance fees apply after you file your application.  These fees are expensive so be sure to know what they are before you proceed.

Possible Pitfalls

Everyone would love to have 20/20 vision that comes with hind sight when they begin to create a business.  A multitude of errors could be eliminated and the learning curve lessened if that were possible.  The list below is some things I look back on and would change if I could do it all over again.

• If you have an engineer or anyone else that assists you in building or designing your prototype, they must be named as co-owner of the patent. You must have them agree to assign their ownership to you and have that executed before you begin the relationship with them. They must understand that you are hiring them as an independent contractor.  Though they will appear as co-inventors, they seek no monetary or IP claims to the invention.
• Most all inventors are scared that their invention idea will be stolen.  The truth is that most people will not care what you have invented until you reach a point where you have proven its marketability and have made enough money for them to notice.  By that time, you should have decisions of protection in place.
• I would have worried less about my idea being stolen and worked harder to have sought more opinions about the problems that might lie ahead.  Understand that your idea is worth nothing, it’s the execution, management, effort and finances that have worth.
• Understand your sweat equity has no value.
• Be sure to concentrate on capping the costs of your patent. Require that your patent attorney give you an accurate list of anticipated hours and filing fees.
• It pays to hire the patent office to ‘search’ for prior art.  It’s expensive – up to $10,000 – but less expensive than paying for a Utility Patent only to find there are other obscure inventions that, though very different, prevent your patent from being issued. I paid for the simple search $2,000 only to change my final prototype so much that what I searched for was not longer valid.  Remember if your invention has claims that are similar to prior art but the structure is very different, function wins over structure.  So, in my case, I had a claim that centered on pushing the aerosol can up instead of pushing down on the aerosol button to dispense the mist. There ended up being a prior art contraption comprising a 14 foot stick that held an aerosol can at the top and pushed the can up to dispense.  It had nothing to do with tanning or a structure that was 10” long that was a large cylinder instead of a stick.  Because the function was the same (pushing the can up) but the structure was different, the claim was denied.  My attorney led me to believe otherwise.
• Understand that your patent will take approximately 3 ½ to 4 years to even make it to the examiner’s desk, much less be issued.
• Patent attorneys want you to include as many variations of your creation as possible. In my opinion, they increase their fees overall by the number of pages they process.  Each variation must have drawings and explanations which increases the cost.  I would suggest limiting your application to a couple of variations understanding that by the time you finalize your prototype, it will be completely different than your original variations anyway.  This will require you to re-file the Provisional or apply for adjustments to your original Utility application.
• If you hastily file a provisional application and follow to develop your invention without accurately describing how it works in the provisional, you lose its advantage.
• Time passes fast when you wear all the hats.  You will find if you file a provisional patent (even if it covers the final aspects of your invention) you will be scrambling to complete the final design to be able to file the Utility Patent before your deadline.  I would suggest filing a provisional patent only if you want protection to immediately produce and go to market.  By not filing a provisional, you risk someone coming up with the invention before you complete the details and are ready to file a Utility Patent but in most cases, I would say you will probably be very safe with that risk.  A year seems like a long time but when you are trying to cover all bases, you might find it would have been better to wait and not file the provisional giving you time to work out the details and have the final prototype, one that works like you want, one where you have sourced the components and know the cost, etc. which will eventually save you attorney fees on your patent application.

Linda Cooper, Author – Having developed SheerTan Sunless Tanning Products from idea phase through product development, I am your E-business expert.  Experience includes emphasis on international plastic injection mold manufacturing, aerosol development, branding and packaging, logistics and fulfillment, patents, development of pricing strategy, home shopping network and infomercial experience, and building and developing websites.

www.SheerTan.com
linda@SheerTan.com
214.679.3644