Edison, Bell, Morse and the Wright brothers all arrived at their greatest ‘Eureka’ moments when working alone. But these days stories of beleaguered individuals fighting against large conglomerates have become so commonplace, that it is difficult to picture the lone inventor doing anything but struggling against unequal odds. Three experts examine the problems and ask what can be done to overcome them.
Unequal odds: myth or reality?
Paul Ambridge, President of the Institute of Patentees and Inventors, looks at the dangers – real and imaginary – faced by lone inventors and offers some helpful tips to get them started.
Some lone inventors are paranoid about being ripped off to the extent that some have a reality-bypass!
A few years ago I spoke with an inventor and told him that I thought that I knew of a company that could be interested in his invention. ‘That’s great,’ said he, ‘but I don’t want to speak to any company until they deposit £1M in an escrow account, in case they try to rip me off.’
Other lone inventors implicitly trust anyone who tells them that their idea is good and should make them a fortune. Obviously the lone inventor shouldn’t be paranoid or innocently trusting, but should have a healthy awareness of commercial realities.
The first action of a lone inventor must be to determine whether their idea is actually new. It is surprising how many people invent a ‘new’ solution to a problem that has been resolved many times in the past. Even if that solution is not on the market, it could have been patented or protected in some way.
To improve their chances of getting their invention to market, the lone inventor must also strive to understand the statistics relating to their intended marketplace. What is the size and value of the marketplace? Is it increasing or decreasing? Who are the main players?
The lone inventor won’t be successful if they pitch an idea to a company as being worth £20M of sales when the company knows that the marketplace is saturated and in decline! If that inventor informed the company that they had an idea that might increase the company’s market share, then their reaction could be very different.
It is very easy for a lone inventor to get carried away with optimistic aspirations for their invention. A long, hard and realistic look at the potential for their idea can save a lot of money and heartbreak in the future.
If an inventor has a new idea that can be protected, can see a realistic market and understands the mechanics of that market, then they should consider embarking on exploiting their invention. The first thing should be to protect their invention by patent or other form of IP Right (IPR). I continually remind inventors that companies will not license an idea, but will license the exclusive right to use that idea. This exclusivity can usually only come via agreed IPR.
It is at this point where many inventors fall prey to companies that purport to help inventors get their inventions to market, but in fact make their money from the inventor rather than via the success of the invention. These companies often offer ‘market surveys’ to show how terrific the potential market for the idea might be. The survey produced is usually generic and out of date, and yet companies charge many thousands of pounds for these worthless documents. Experience has shown that if an inventor goes to one of these companies with an unrealistic idea, then, rather than telling the inventor the truth about their idea, they will often pander to the inventor’s enthusiasm. They will say that the idea is excellent, but that a survey needs to be carried out to determine the full market size, sales documents need to be prepared, patents need to be obtained – or any other excuse to charge an often considerable amount of money.
The UK Patent Office has published some excellent advice on their website
(www.patent.gov.uk/patent/howtoapply/ ipromoters.htm) regarding invention brokers. Any lone inventor should take heed of the advice given. The Institute of Patentees and Inventors has, in the past, campaigned for all invention brokerage firms operating in the UK to comply with a code of practice. But, as many of the firms are based offshore, it would be almost impossible to take action against any miscreants. Unfortunately it is a case of caveat emptor or, more literally, inventor emptor.
Navigating the industry
The road to success can be rocky, warns David Bunting, chief executive of Trevor Baylis Brands plc. But if you thoroughly research and protect your idea, you should come through unscathed.
While many worthwhile and valuable ideas never achieve their deserved status, we must also remember that much time and money is wasted on ideas that have no hope of success. A successful inventor needs to be able to abandon or adapt ideas, and to concentrate their efforts on those that show real promise. They also need to acknowledge from the outset the need to protect and defend their IPR.
Often inventors can demonstrate that a market does exist for technically sound ideas, yet still fail to attract support. Unfortunately, the few that do succeed will often have their IP infringed. One thinks of James Dyson and his vacuum cleaner, or Mandy Haberman and her Anywayup cup. Such inventors, however, are the lucky ones. Cases that come to court are unusual indeed, and the UK Patent Office estimates that litigation only occurs for about 10 to 12 patents per year in the UK.
Little can be done by the inventor except recourse to the law in the case of wilful theft. And while courts in the US are starting to apply punitive damages for wilful action, others are yet to follow suit. More difficult are the cases where infringement is based on a genuine belief of rights. Pursuing a case where the apparent infringer has a genuine belief that they have competing or even superior rights will necessarily involve large costs with an uncertain outcome. The best protection for the inventor is evidence of good title to the IP, and this starts right at the outset. Ideas should not be disclosed to anyone without confidentiality agreements in place, and careful records kept. But the inventor should also challenge and thoroughly research their own ideas. At Baylis Brands plc, at least 30% of the ideas we see have been done before. Another 20% would require patents to be so narrowly drawn that they would have no commercial value.
From our experience, less than 5% of new ideas are likely to have any commercial value, and only 1% will produce significant rewards. Yet many businesses encourage inventors to pursue non-commercial ideas. Some of them are charlatans and some of them are well-meaning, but incompetent. Some of them do it to fill employment quotas, and some of them provide an unquestioning service for the fees. Inventors compound this by ignoring good advice.
Getting an idea to market can be a long and difficult process. It is my view that the vast majority of inventors would be best served by licensing or selling their IPR to a commercial enterprise that has the resources to take the idea to market and defend the IPR.
The lesson from inventors that have succeeded is to be rigorous in filtering out poor ideas and to devote the available resources of time and energy to those things that have a real chance of success. To do this the lone inventor must not only have the courage to risk failure, but the wisdom to benefit from the experience and good advice, and the perseverance to achieve their goal.
Trevor Baylis Brands plc is a commercial service for inventors, backed by Trevor Baylis, inventor of the clockwork radio
Defending Your Rights
David can beat Goliath says independent inventor and business woman, Mandy Haberman. But you need to be prepared to stand up for your rights whatever the odds.
To be successful as a lone inventor you have to have an idea with commercial potential, determination, nerves of steel and a lot of luck. However, being an inventor is, in my opinion, one of the most exciting and rewarding careers there is. Nothing compares to the buzz of achievement you feel when you find a unique and elegant solution to a problem, or to the satisfaction of seeing your product displayed in shops. For creative, lateral thinkers, the process of invention is relatively easy. The hard part is bringing the resulting product to market.
With my invention, the Anywayup cup (a trainer cup that automatically seals between sips) I approached 18 companies in the nursery industry. Despite their apparent keen interest, none were prepared to pay for a licence. This typifies the response that many inventors receive, regardless of the commercial viability of their technologies. I found this dichotomy puzzling but, over time, I have come to understand it. Rather than risking the cost involved in being first to market with a new invention, many companies prefer the relative safety of ‘me too’ products.
Without a licensee I faced a stark choice: either give up, or do it myself. I was certain that the Anywayup cup was destined to be a success. So I assembled my team and set up the Haberman Company Ltd. We began production in 1996.
To achieve volume sales, we needed supermarkets to take the cup. However, on principle, they would not do business with a ‘one-product company’. We overcame this by sending one of the chief buyers an Anywayup cup, filled with concentrated blackcurrant juice, through the post! Fortunately, it arrived without spilling and she was so impressed, that she decided to take it. The other supermarkets soon followed suit.
Rapidly, we achieved over 40% market share in the UK and 75% in Germany. This hit our competitors hard and, in August 1998, Jackel International Plc (to whom I had offered a licence in 1992) launched an infringing ‘Tommee Tippee’ product. Jackel had signed my confidentiality agreement and they knew that I had patents but they assumed that I, like most inventors, could not afford the prohibitive cost of UK litigation to enforce my rights.
Sadly, our fledgling brand could not remain viable in the market alongside such a well-established name, and so granting Jackel a licence to sell their product was out of the question. If we did not take action and set a precedent, all our other competitors would infringe. We needed an injunction to stop them. With the aid of a little bit of insurance and at huge personal financial risk we litigated and, to my great relief, we won. Jackel eventually settled out of court, a few days before their appeal. Anywayup went on to become a household name and my David and Goliath story has become famous.
Achieving success with an invention goes against all the odds, but it is possible to improve your chances by: comprehensively researching to check your idea is new; taking a realistic view regarding its commercial potential; assuming that everyone is going to copy you and taking precautionary action; building a strong team of experts around you; using all aspects of IPR to strengthen your position (do not rely solely on patent rights, which can be volatile); and buying IPR legal costs insurance. In short, be perceived as a force to be reckoned with, in the eyes of your competitors.
My case proves that it is possible for a lone inventor to survive and triumph, even through the patent litigation system. Fortunately, thanks to the Streamlined Procedure recently introduced in UK Courts to reduce the cost of enforcement, much is now being done in the UK to help level the playing field and to make patent enforcement more accessible. You can now also request ‘Opinions’ on validity and infringement from the UK Patent Office, which may help avoid litigation altogether. All this means that ‘going it alone’ should become a little easier for lone inventors of the future.
CAN YOU MAKE IT ALONE?
Every year thousands of lone inventors try to develop their ideas and market them commercially, but very few achieve any success. Our experts propose eight key steps you should follow when you opt to set out alone
- Thoroughly check that your idea is new and unpatented by running a prior art search through existing patents, technical journals and publications.
- Be realistic about your product’s commercial potential before you start spending money. If you believe your idea is marketable, do the market research and prepare a marketing plan and competitive analysis.
- Keep extensive records tracking the development of your idea and your efforts to acquire IPR. This will prove indispensable should you ever need to fight infringement.
- Do not disclose the details of your invention to anyone without a prior confidentiality agreement.
- Use a qualified patent attorney to help you apply for a patent. Subtle variations in the wordings of an application may greatly increase or diminish the protection afforded by your patent.
- If you choose to license your IPR, demonstrate the value of your invention to a prospective licensee by showing the competitive advantage of your product over what already exists.
- Stick to your marketing plan if you opt to continue alone.
- Take immediate action when you discover infringement.
This article first appeared in IP Review, issue 10