I have a Product Idea!

7/22/2015
I have a Product Idea!
Leslie Johnson Fitzsimmons PT
Necessity Becomes Innovation
A kitchen countertop…
Becomes Parallel Bars
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7/22/2015
Necessity Becomes Innovation
A door…
Assists with Shoulder Exercises
Necessity Becomes Innovation
An IV Pole, Theraband
and wrist splint…
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7/22/2015
Becomes a Deltoid Assist
A Deltoid Assist
Necessity Becomes Innovation
A neck ring, a tumble form piece,
duct tape, baby tights and some foam…
Becomes the Fitz Headrest
The first i2i
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Don’t forget the Duct Tape!
Polling questions
• Have you created a
prototype for an
invention?
• Yes
• Not yet
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Bringing a product to market
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Your idea!
Designing the prototype
Trialing of prototype - Feedback
Modifications??
Is it Potentially marketable?
Should You Patent ?
What type of Patent should you apply for?
Should you get a patent attorney involved or
enlist the help of an Invention Helper
Agency?
Should you consider forming a Limited
Liability Company or liability insurance or
umbrella policy ?
Do you hope to Find a manufacturer or will
you manufacture and market it yourself?
What about non-disclosure forms?
Does your product require registering with
the FDA?
Are you having fun yet?
Steps Taken
Long Road and winding road!
From creation to production
1. 1999-i2i created in –Feedback from co-workers
and caregivers
2. 2002 Custom production
3. 2003 Apply for provisional patent
4. 2003 Website Before/after pics
5. 2003 Trying to find a manufacturer
Lot’s of emails and meetings and letters of
rejection!
6. 2003 My DIY attempt
May 2005 -Mt Hymie Pogir
June 2005 - Inquiries regarding use with
Freedom concepts bike
August 2005 – Trialing of Stealth’s prototype
March 2006 -i2i introduced at ISS in Vancouver
2006 Medtrade
2007 Sold internationally
i2i prototype – Step 1
• Feedback from coworkers
• Signed consent forms
from parents to trial
device
• Signed Releases for
pictures to be taken
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Custom “Fitz headrests”
• Step 2 – Determining is
this product going to be
marketable
My DIY attempt“Fitz Headrest”!
(step 3 –marketable but not manufacturable by me!)
Should you Patent?
Step 4
• Does your invention
have potential to be
marketed?
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Polling Question
• Has anyone applied for
a Patent?
• Yes
• No
Getting professional Help vs. DIY
• http://des.uspto.gov/OEDCI.
www.uspto.gov/inventors
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www.uspto.gov/patent
"Congress shall have power . . . to
promote the progress of science and
useful arts, by securing for limited times
to authors and inventors the exclusive
right to their respective writings and
discoveries.“
Generally, the term of a new patent is 20
years from the date on which the
application for the patent was filed in the
United States
First patent laws enacted in 1790
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Three types of Patents
1) Utility patents
2) Design patents
3) Plant patents
As well as
1.Provisional Patents
2.Non-Provisional Patents
Utility patents
Protects the Function of
an invention
”May be granted to
anyone who invents or
discovers any new and
useful process, machine,
article of manufacture, or
composition of matter, or
any new and useful
improvement thereof; “
Design patents
• “ May be granted to
anyone who invents a new,
original, and ornamental
design for an article of
manufacture;”
• Protects the overall
appearance of an invention
• Good for 14 years from the
date of issuance
• (should only be chosen if
the appearance of the
invention is important)
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7/22/2015
Plant patents
• ”may be granted to
anyone who invents or
discovers and
reproduces any distinct
and new variety of
plant.”
Non-Provisional Patent
Provisional Patent
• A non provisional application for
a patent is made to the Director
of the United States Patent and
Trademark Office and includes:
• (1) A written document which
comprises a specification
(description and claims);
• (2) Drawings (when necessary);
• (3) An oath or declaration; and
• (4) Filing, search, and
examination fees.
• Cost – minimum $400.00
• Invention may be referred as
“patent pending”
• Establishes a priority date for
application
• Written description of invention
required, but not claims or
drawings**
• Provides alternative for inventor
not ready to file for nonprovisional patent
• Cost $65.00
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Since June 8, 1995
What is Not patentable
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Perpetual motion devices
Abstract ideas
Laws of nature
Naturally occurring
substances
• Printed Matter
• ** “An inventor cannot
receive a US patent for an
invention publicly
disclosed more that 12
months ago
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Public Disclosure
• INLUDES
• Sale, offer for sale,
public display, exhibit at
trade show or printing
in a publication, with
only a few exceptions
Benefits of Patenting
• Prevents others from
making, using, or selling
your Invention without your
consent
• Can be sold outright
• License your patent to one
or more parties for a
percentage of the sale price
• You may be exclusive
manufacturer of your
invention.
• (Info from Neustel Law
Offices)
Detailed Record Keeping
• Important as proof of the
conception date of the
invention
• Use a Bound Notebook
• Include explanation of the
manner and process of making
and using the invention
• Computations, sketches
diagrams, test results (good
and bad!)
• All persons involved in the
work and their specific role
• Sign and date entries * if
possible signed and dated by a
witness or Notary Public
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Filing for a Patent
• First inventor to File Patent System as of
March 16, 2013
• (Regardless of the date of invention)
• Prior =patents governed by the first-to-invent
rules
Things may take a while!
• At present, the USPTO
has over 12,000
employees, of whom
about three quarters
are examiners and
others with technical
and legal training.
Patent applications are
received at the rate of
over 500,000 per year.
I Applied for Provisional Patent
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Patent Search
• Though not required before
filing a patent application it
is recommended
• Can be done by
Independent Patent Searcher
Patent Attorney
DIY – using Public Search
Facility of the USPTO, and in
libraries located throughout
the United States that have
been designated as Patent and
Trademark Resource Centers
(PTRCs).
DIY Patent Search
• How to Conduct a Preliminary U.S. Patent Search: A Step
by Step Strategy - Web Based Tutorial (36 minutes)
• The Seven-Step Strategy - Outlines a suggested procedure
for patent searching
– A detailed handout of the Seven Step Strategy with examples
and screen shots.
• University of Texas Libraries - Guide to Patent
Searching(link is external)
• Patent Search requires an understanding of Patent
Classification systems. Learn about the Cooperative Patent
Classification (CPC) effort and the United States Patent
Classification (USPC) system.
• Note: mailing yourself a
sealed letter with your
invention documents
enclosed is not an
accepted method of
proving your invention’s
conception date for the
USPTO
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Inventor Help Agencies
(www.uspto.gov/web/offices/co
m/iip/complaints.htm
• Make sure they are reputable!!
Disclosure statement from
INVENTHELP
• 2012-2014- signed 5,850
Submission Agreements
• 147 clients received license
agreements for their products
• 23 clients received more money
than they paid us for services
Cost- $945.00 for Basic info Pack
$10,900-$15,900 for marketing
Protect yourself!
Limited Liablility Company
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Liability Insurance
Formed in 1977 – by the state of
Wyoming
“Business that wanted to be taxed
and managed like partnerships but
protected from liability like a
corporation”
IRS accepted the arrangement and
every state followed and passed laws
allowing LLC’s
Allows someone to invest in a new
business but not risk unlimited
personal liability
Every state has specific guidelines
and varied fees
www.findlaw.com
www.law.cornell.edu
www.alllaw.com
LLC
• Domestic, Foreign and Professional LLC’s
• Separate Bank Accounts and Tax Forms –Tax ID
numbers required
Initial Registration Fees
• Annual Registration Fees
• Every state has specific guidelines and varied
fees
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Does your product require
FDA Registration?
• “Establishments that are
involved in the production and
distribution of medical devices
intended for commercial
distribution in the United
States (U.S.) are required to
register annually with the FDA.
Most establishments that are
required to register are also
required to list the devices and
the activities performed on
those devices at that
establishment.”
• Cost $3,646.00
• Annual Registration- additional
fee
Prepare your presentation!
• Make a Website!
• Collect data
• Get feedback from
professionals,
therapists, caregivers
and end users
• Pictures before and
after
• Refine your prototype
Finding a Manufacturer
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Meeting with Manufacturer
Non-Disclosure Agreement
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A non-disclosure agreement (NDA), also known as
a confidentiality agreement (CA), confidential
disclosure agreement (CDA), proprietary information
agreement(PIA), or secrecy agreement (SA), is
a legal contract between at least two parties that outlines
confidential material, knowledge, or information that the
parties wish to share with one another for certain
purposes, but wish to restrict access to or by third
parties. It is a contract through which the parties agree
not to disclose information covered by the agreement.
An NDA creates a confidential relationship between the
parties to protect any type of confidential and proprietary
information or trade secrets. As such, an NDA protects
nonpublic business information.
NDAs are commonly signed when
two companies, individuals, or other entities (such as
partnerships, societies, etc.) are considering doing
business and need to understand the processes used in
each other's business for the purpose of evaluating the
potential business relationship. NDAs can be "mutual",
meaning both parties are restricted in their use of the
materials provided, or they can restrict the use of
material by a single party.
Wikipedi
Necessity is the Mother of Invention
• Sometimes it
actually is the
Mother!
Debbie Elnatan with
son Rotem using the
UPSEE Harness that
she created
Upsee
available from Leckey
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7/22/2015
Leckey Products
http://www.hatchthatidea
.com/
Guide you through the
process of submitting your
ideas
Polling Question
• Are you aware of this
website?
• Yes
• No
Kidwalk
• Developed by Christine
Wright Ott OTR
• NIDRR grant through
Children’s Hospital,
Stanford Rehab
Engineering Center.
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Christine Wright Ott
• “A successful inventor has to have a purpose,
passion, patience, perspective, persistent
persona, a pioneering personality, awaress of
the population you hope to serve, practicality
and productivity!”
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7/22/2015
“Never doubt that a small group of committed citizens can change the world.
Indeed, it is the only thing that ever has.”
-Margaret Mead
We may not be able to change the world…
But we can help change a life.
Questions ???
(c) Leslie Fitzsimmons PT ATP
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My Sincerest Thanks,
Leslie Fitzsimmons
Thank you
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Cathy Mullholland
Ginny Paleg
Christine Wright Ott
Debby Elnaton
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