Advice For Budding Inventors: Put Your Ideas Into Writing

Great ideas for a new technology or innovation excitedly scribbled on the backs of envelopes or on cocktail napkins may have lots of potential. But that promise will never be realized unless the ideas are transformed from scribbles to effective prose that can convince investors, technology licensing officials, or patent attorneys of their value. Why bother? These lean economic times may seem like the worst time to start trying to sell ideas--especially to investors. Not so, says Len Vernamonti of the Institute for Technology Development in Jackson, Miss. "Usually when times are the worst you can find the best opportunities," says Vernamonti. "[Investors] are looking for opportunities and they're willing to take more risks now because the safe stuff is paying so poorly. If you're inventive and have ideas, now's the time to pounce." And, of course, the technology licensing folks at universities and companies are always pleased to help their faculty or employees develop an idea that might yield a profitable patent and product for both the institution and the inventor. But before seeking evaluation of an idea, patent advice, or funding, inventive scientists must follow a few important guidelines as soon as the idea is born, says Scott Taper, licensing associate for the University of California, Berkeley. He has identified some simple, precautionary steps inventors must take at the outset to protect them from losing the rights to their ideas later on. The first of Taper's pointers is to note the date the idea was first conceived. "The legal profession calls this the `flash of brilliance,' " he says. "Make a note of the date, because that's very important later on in establishing who had the idea first." Next, says Taper, be sure to sign and date ensuing lab notes. "Whenever you start to experiment and home in on the idea itself....sign and date your lab notes with respect to the idea and have someone witness it," he says. Also, Taper suggests describing the idea to a peer in the field who will understand it, providing as much detail as possible. "You can't tell it to your cat. You can't tell it to somebody who has no idea what you're talking about, because they can't later on corroborate whether you had the idea first or not," says Taper. "It's very important that you tell it to somebody who's skilled in the art." Once you reveal the idea to someone he or she should sign your lab notebook as a witness that you are working diligently toward developing the idea, which in legalese is known as "reduction to practice," explains Taper. This is particularly important in case another person has the same idea. Taper describes a situation in which two people have an idea at roughly the same time: "One sits on the idea, works on it every six months or so. The other person goes right into the lab and starts working on it. Every day he comes up with better and better means of doing it." If both file for a patent, "the person who diligently pursued the reduction to practice would be awarded the patent and the other person would lose out," Taper says. It may be daunting to learn that even before writing down a detailed description of the idea for a new invention you risk making mistakes that could later affect your ability to receive a patent on the idea. Does that mean it's best to write down the concept and rush off to a patent attorney immediately? No, say the experts. If you developed the idea on the job and now you're realizing that you may have hit on something good, it's time to approach your technology licensing office. Licensing officers can provide useful guidance through the rest of the process. "Scientists should have a very clear understanding about the rules and the culture in their academic institution for commercialization of their idea before they talk to outsiders," cautions J. Leighton Read, who invests in high-technology ideas and is one of the founders of Palo Alto, Calif.-based Affymax Research Institute. "Otherwise, they'll appear na ve. "Generally, [scientists] will find the office of technology licensing in their university very supportive of work that is legitimately done in the lab. There may also be opportunities to keep work separate from the university's zone of rights. Learning about the rules early creates opportunities for the scientist to develop an independent portfolio of intellectual property." If you are pursuing an idea on your own, before you seek investors or a lawyer, you've still got some work to do that may save you time and money in the long run, says Donald Job, president of the Lexington, Mass.-based Enbede Co., which specializes in technology transfer and product development. First, Job recommends, do a pat-ent search. Find the closest regional patent depository library (there's one in almost every state). The search helps you learn firsthand whether similar patents have been issued, what other approaches have been taken, and whether your idea is really new. "A lot of inventors make the mistake of assuming that if they haven't seen it on the market, it doesn't exist," says Job. "That's a major mistake. More than 90 percent of the patents never get to the market. That's why you don't go to the patent attorney first." Job also suggests searching the relevant technical or scientific literature. Sitting down to use one of the commercial online databases may be a useful supplement to the patent search. "An assumption that scientists might make would be that they're familiar with the literature when in fact they may be familiar with only a narrow segment of the literature," says Job. Inventors should also seek marketing advice, Job says. "Talk to a marketing person to validate or affirm the market," he urges. One way is to go to a local Small Business Development Center (your state Small Business Advocates office can help locate these). A marketing professor or counselor there can help determine the commercial value of your idea. Frequently, says Job, a person will share an idea with family or friends. "The close friends are not going to offend them, so they say, `Yeah, that's a great idea!' But that's not market validation," warns Job, "and to assume so is a major mistake." Problems can arise, cautions Vernamonti, when "you may have a perfectly good idea, but it has absolutely no commercial value." A completely new way to do something that can already be done isn't necessarily economically viable. "Now, on the other hand, you shouldn't necessarily let that deter you up front, because markets were invented. Somebody had to invent the market for the television. Somebody had to invent the market for the telephone. It just adds another hurdle you have to jump over." Opinions vary on when it becomes important to start building a prototype. Job has worked with people who received a patent for an idea but then realized that they couldn't follow through and build the invention. Although this may not be as likely to happen to scientists who are inventors, anyone can learn from the process of building a prototype. In one case, some inventors approached Job before filing a patent application. In the process of helping them build a prototype, Job came up with two additional methods to reduce it to practice--neither of which had been in the original patent application. "They would have wasted $3,000 on that patent" if they hadn't worked through the prototype before filing, says Job. Of course, a prototype may be prohibitively expensive to build, and although it admittedly is helpful, says Taper, it isn't absolutely essential. "The image of people sitting outside the patent office with a working model is no longer real," he says. "The mere filing of a patent is a statutory reduction to practice. Developing a model in the laboratory would be an actual reduction to practice. That's nice because you can show potential funders that you not only have an idea, but you've got a widget that goes with it. That's ideal, but not necessary." Now it's time to put your idea into writing. By keeping a few pointers in mind to avoid common mistakes, experts say, the process is much easier for everyone involved. If you are seeking financial support before applying for a patent, don't reveal the patentable nature of the invention to potential investors, says Job. At this point you risk losing the idea to someone who may have the financial resources to pass you up and pursue the development of it. Job offers clients 10 principles for describing an invention in such cases: * Emphasize the benefits of the invention rather than the features. * Describe what the invention does rather than how it does it. * Compare the invention to one or more current alternatives. * Describe the invention's advantages and disadvantages. * Indicate the market potential for the invention. * Estimate the production costs and methods that will be required. * Estimate the investment required to commercialize the invention. * Consider what other technical, marketing, or distribution resources will be required. * Describe any regulatory or other factors that will be important to commercialization. * State clearly what you are looking for, such as licensing, joint venture, or manufacturing support. "Scientists are usually pretty good at communicating the potential for their inventions," says Affymax's Read, "but usually they need prompting to answer exactly where is it [the idea] today [and] what steps have to be taken to get to the point where the vision can be realized. What are the key experiments or product development activities that would have to take place, and how risky are they?" If you're having trouble figuring out how to structure the presentation of your idea, you might ask your technology licensing office or your patent attorney for an example of what he or she considers a well-written disclosure or description. Patent attorney William Ritchie of Concord, N.H., has developed guidelines for creating a "record of invention" that he claims saves his clients money and frees him from technical writing to do more of the legal work he enjoys. "There's really no magic to it," says Ritchie. "I try to get them to think in terms of a screenwriter's play." He encourages the inventor to identify the theme of the invention--a central idea that unifies the patent application--and to keep that in mind while writing. "In developing the theme, three or four sentences should be sufficient to identify even the most complex invention," Ritchie tells his clients. "This is the most difficult part of the disclosure. However, if done well, the remaining part of the application should flow rather effortlessly." To follow the United States Pat-ent Office's guidelines, the title of the invention should be technically accurate and descriptive, explains Ritchie, and preferably no longer than six words. "Select the words most descriptive of your invention in making certain that the `point of novelty' of the invention is mentioned," he says. Drawings are an essential component of the record of invention, and Ritchie suggests choosing a drawing that most clearly illustrates the critical elements of the invention. "If a prototype exists, a photograph is perfectly acceptable if it clearly shows the invention," Ritchie says. The first figure presented, he explains, "should be the most basic embodiment of the invention. Other views, if necessary, should proceed in a logical manner, from the broad to the specific." Each element of the invention must be appropriately labeled. Next Ritchie asks clients to include a summary section--a single paragraph no longer than 250 words. The "theme," or an expanded version of it, should serve as the summary. A section on "Objects of the Invention" should recite the "problems solved by the invention that cannot be solved by the prior art," listing the most important first, Ritchie says. "This section provides the reason why people should care about your invention; why people should want to buy it," he says. The "heart of the application" is a detailed description of the invention, Ritchie says. "A disclosure that has sufficient detail so as to permit others to practice your invention without an undue amount of experimentation is required by law," he says. "Further, you must provide what you consider to be the best mode of practicing your invention at the time of application." Each of the drawings should be described in this section, all terms must be explained, and a detailed explanation of how the invention works should also be provided. Finally, anyone filing a patent has a "duty to disclose," explains Ritchie, which is "a legal duty to tell the patent office about all prior art that may be considered by a reasonable examiner to be material to the examination of the application." Ritchie developed a course on presenting ideas when he participated in a National Innovation Workshop. Each year, the Department of Energy and the National Institute of Standards and Technology jointly sponsor six of these workshops around the U.S. Now Ritchie, whose first career was in biomedical engineering, takes his program to companies that want their employees to learn what a patentable idea is and how to present it. Although the National Innovation Workshops don't usually attract Ph.D. scientists, Terry Levinson, acting director of the Inventions and Innovation Division of DOE's Office of National Programs, Conservation and Renewable Energy, thinks they should. "I certainly think that any scientist could benefit from [the workshop], because we have found that it is one thing to sell a sponsor on technology--most likely you and that person speak the same language. But when the time comes to sell the technology at a scaled-up level or at a commercial level, you have to change your language." The Institute for Technology Development's Vernamonti helped organize the largest of the National Innovation Workshops last year in Jackson, Miss. He saw hosting a workshop in the area as a great benefit to his nonprofit research corporation, which is using technology as a way to generate economic development. "You can't develop technology unless somebody comes up with the idea," Vernamonti says. "So, you want to help foster those people who have the ability to create these innovative ideas." He offers a few final pointers: * Don't forget to provide enough detail. "The intuitively obvious usually isn't," is a rule of thumb Vernamonti has found many inventors forget. "If you're utterly and totally familiar with a process, a project, or a topic, in describing it to someone else you automatically forget and assume that they have as much background as you do." * Be patient. Sometimes when an audience doesn't immediately understand and appreciate an idea, inventors go away bemoaning how misunderstood they are, Vernamonti says. "The thing they don't recognize is, if it was that easy to understand, somebody else would have done it already.... The fact that nobody thought of it means that they may have a great deal of explaining to do." * Get those ideas off scraps of paper and into writing. "Many creative people become more enamored of the idea than documenting the idea," Vernamonti says. "They'll make a note or a drawing or a formula on the back of napkin, and they've already received their psychic satisfaction. "I met one gentleman who claims he has 10 to 15 ideas a day. They're on the backs of napkins, they're on laundry tickets. But if you ask him, `Where's the full treatise on any given idea, where's your full analysis, explanation, documentation to support your conclusions and findings?', he says, `Oh, I haven't gotten around to that yet.' " If you've got an idea scribbled somewhere, Vernamonti and others say that the best course of action is to find it, date it, and put it in your lab notebook. From there, keep in mind some of the advice offered in this article, and you'll be on your way to becoming an inventor. Laurel Joyce is a freelance science writer based in Stanford, Calif.

Advice For Budding Inventors: Put Your Ideas Into Writing

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