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Lesson # 86 A Patent Search Is Not The Holy Grail Invention Submission Companies and Patent Lawyers Want You To Believe It Is

rogerbrown's Avatargold

To often I get contacted by Inventors that have paid for a patent search long before they should have spent any money. They either contacted a Patent Lawyer or an Invention Submission company and were told the first thing they need to do is conduct a patent search. Which of course costs a fee.

The correct action should have been for the Inventor to do their research first which only costs them their time. With free access to the patent office website and other search engines such as google.com/patents you can do a lot of your own research for free.

I am amazed at how many Inventors don’t even do a word or image search in Google to see what shows up… again free. Go to any store and look at how many products you see that are not covered by a patent. These will not show up in a patent search and neither will the PPA’s that could already be filed on your same product idea. Look at the amount of posts/ads you see in any Inventor related sites that push spending your money on patents and patent searches. Why? Because they have nothing to lose. They are not going in debt, you are, so it is easy for them to say go for it. Plus, you are making them richer. Not yourself.

You will find out that in a lot of cases the idea you first come up with and the final product may not even be close to each other by the time you get the final version and is not covered by the patent you filed. Keep in mind your patent is only as good as the Claims you are able to get granted. And most companies prefer utility patents over design patents because design patents are easier to go around.

Ask patent lawyers what percentage of patented items actually make it to market? You will find that the success rate is extremely low. The former head of the USPTO had said in one of his presentations that the rate was around 4% that actually made it to store shelves. So that means 96% wasted their money. Granted some people don’t care if their product makes it to market. They just want to be able to say they have a patent. Which is fine. But If you want to see a return on your investment, not just a piece of paper you can hang on the wall, you will want to do your best to research your idea first.

Stop buying into the hype and fear someone will steal your idea if you don’t pay for a patent search and file for protection right away. Do as much of your due diligence up front for free and make informed decisions.

Ken Hill
Charlie Lumsden
Mark Bartlett
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rogerbrown's Avatargold

Thought I would bring this back up to the front. Got some emails asking about patent searches and how long one is good for. In my opinion a patent search is not good for very long since the day you get one done other patents are being filed that could counter your product. A patent search is a snapshot at that time not a living document that is constantly updated.

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countofmontecristo's Avatargold

Great topic as it sets the course for the rest of ones inventions.

Did an exhausting search, but still found nothing like your widget?  Move ahead 2 spaces.  

Oops..Found all kinds of prior art that looks just like your invention?  Back to square one.

As good or bad as any of us here are at searches, there is always that chance that an application has not published yet, or the inventor paid extra for the application NOT to publish.  

This keeps the details of your patent application largely a secret until the day the actual patent number is issued.  This is a BIG method I see large corporations use.  Company 'x' thinks that just because nothing shows up on their 'radar' it will be smooth sailing.

They also need to use 'sonar' to see what patent applications are lurking below the surface which are a potential threat.  That's why they call them submarine patents, they are there, just below the surface and out of sight until it's too late.

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gizmo's Avatar

Ralph ...what is the cost for non publication ?

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chappy75's Avatargold

https://www.uspto.gov/sites/default/files/web/form...

I am on my phone... Didn't locate the fee schedule.

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countofmontecristo's Avatargold

Gizmo-

That is kind of a loaded question, yes?  Sorry I didn't make my statement very clear.

Non-publication itself carries no fee on the USPTO fee schedule but instead-

The real cost to non-publication is the fact that you forgo foreign patent rights, by certifying on your application that you do not intend to pursue foreign patent rights.

This can have ramifications for inventions that have a bigger scope than the inventor first thought.  He or she may have thought that the U.S. for instance was the biggest market for their widget, when in fact Asia or Europe is the hot spot.

To me, that 'cost' is huge, which also means you HAVE to know your biggest target market before you even file your patent(s). Again, sorry I didn't make that very clear, I need more caffeine apparently.

Gizmo
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chappy75's Avatargold

Well, I guess you give it up but only if you ...

If applicant subsequently files an application directed to the invention disclosed in the attached application in another country, or under a multilateral international agreement, that requires publication of applications eighteen months after filing, the applicant must notify the United States Patent and Trademark Office of such filing within forty-five (45) days after the date of the filing of such foreign or international application. Failure to do so will result in abandonment of this application (35 U.S.C. 122(b)(2)(B)(iii)).

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gizmo's Avatar

Ralph I knew about the non publication use to not have a fee but thought maybe something changed 

. Thanks for clarifying

Ralph Machesky
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rogerbrown's Avatargold

Ralph, great information. Add to the fact the products that are on the market without a patent and you can see why it is important to do as much due diligence as possible. Realizing no matter what you do you may miss something but at least you did your best to narrow down the field.

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gizmo's Avatar

Ralph,

Good points ...I have thought about this subject many times over the yrs and have a question for everyone.

 If you filed a patent application,utility,design,or provisional do you continue to research patent app publications or issued patents? Issued patents post weekly every (Tuesday) .

I would bet that most dont!

Ralph Machesky
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rogerbrown's Avatargold

As I stated above- In my opinion a patent search is not good for very long since the day you get one done other patents are being filed that could counter your product. A patent search is a snapshot at that time not a living document that is constantly updated.

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gizmo's Avatar

Roger the search can be good if you set a google alert for whatever your looking for. :)

You can set a google alert for a string of search words you would use in a normal search 

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rogerbrown's Avatargold

Ralph, you are right it is important to gauge your market as best you can. And you need to find out filing deadlines so you don't miss them. Filings in other countries can get expensive. And on the bad side you can have an Inventor that files for multiple countries only to find there is no interest in those countries. Or that country can have a cultural issue that would make selling your item in their country difficult or non-existent.

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gizmo's Avatar

My personal opinion is filing in the United States is the only place that you need to file in on the majority of products. 

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chappy75's Avatargold

IF, 

 A PATENT SEARCH IS NOT THE HOLY GRAIL INVENTION SUBMISSION COMPANIES AND PATENT LAWYERS WANT YOU TO BELIEVE IT IS

Then, you must be able to say what is... What is it?

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rogerbrown's Avatargold

Chappy, I answered that in the first thread above so instead of reposting it here please read the thread starting at the top.

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countofmontecristo's Avatargold

James-

The *reason* so many of those lawyers and submission companies use that line is pure marketing hook, plain and simple.  The bait is the fact that someone invented something that they think has potential... and no prior art was found during a search, which makes it even more *cough* valuable. 

That simply is not always true or accurate. The other variables not disclosed by those companies is that patents are missed, some are still unpublished applications that precede yours,etc.  

As this lesson (and many others here) has shown, jut because it is patentable, DOES NOT mean it is valuable to the marketplace.

I believe that is the take-away from this lesson.

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chappy75's Avatargold

I agree Ralph,

I have had a local attorney that regularly attends all of the inventor groups approach me several times about my product(s) he wants me to come to his office and discuss "IP strategy". The problem is that he charges $250 for the first consultation. 

He justifies it with the value of his opinion. 

My point is that there is no real "Holy Grail". The ONLY holy grail of product development is a check that is cashed and paid out upon. 

I met a junior in college the other day at FGCU. He is clearly their Superstar from their Engineering degree program. He is the holder of 2 patents. 

All I could think is, "Yeah, But..."

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gizmo's Avatar

Chappy, if the attorney is attending the local groups and he's looking for a fee then he shouldn't be part of the group. All he is doing is trolling for $$$$$

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chappy75's Avatargold

Gizmo,

I know... But he pays to be there so there is no unseating him. Already tried.

Gizmo
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rogerbrown's Avatargold

Ralph, you are correct just because you patent it does not mean cash will soon follow. Many Inventors have fallen into that trap and all they got was debt and no reward. 

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rogerbrown's Avatargold

Jimmy's band, I am not advocating don't ever get a patent search done. I am saying before you do, try the things you can do for free first.  Why pay someone hundreds of dollars to do a simple word search in Google or walk in stores that might carry your type of product and see what is actually on the market and your competition. Again, can be done for free. Then after you have done all you think is possible within your skill level and still haven't found something then go to a professional. If you walk in Target or WalMart and find products you didn't know existed and they are far better than your idea it might be time to take a hard look at proceeding or go to your next idea. All it took was your time. You saved that money to go towards another invention that has better chances.

Consider your car. What is wrong with you checking out your car first on things that are simple like checking your oil level, radiator level, tire pressure? Before you take it to a mechanic. Am I saying tear your transmission apart with no prior knowledge of where it is located, no proper tools, and you have no idea that it is the problem, no. But saving the money on things you can do yourself allows you to put more money to the things you don't.

Most beginning Inventors are not rich and want to get the most out of every dollar they can. And if they have more than one idea they think might have a shot at the market they need as much money as possible. So lets say you have 5 ideas that fall in that grouping and a patent search costs $250 each. You are at $1,250 and you are just doing the search. if you did some of the things you can do for free you might knock three of those off your list. So now your cost is $500. The patent search goes well on those two you now have the $750 you saved left over to file a PPA on each.

Now take a look at people that see the ads on TV or all over the internet when you search for invention help. And look at this statement "The total number of consumers who were offered a Pre-Development agreement (or similar contract for research services) is two hundred ninety four thousand one hundred seventy five (294,175)" I got that number from here. http://www.davison.com/legal/ads1.html  And it does say offered, not accepted. But lets say 50% said yes. That would be 147,087.5. Not sure what they charge now but it used to be around $595 for a patent search. But lets say you got the great price of $250. That would total $36,771,875. Do you see why they are happy to do the patent search for you? And they haven't even discussed doing the patent for you yet.

Now comes the kicker statement "The total number of consumers in the last five years who made more money in royalties than they paid, in total, under any and all agreements with Davison, is five (5). The percentage of Davison’s income that came from royalties paid on licenses of consumers’ products is .001%."

Did you see the number (5)? That is over a 5 year period. and the .001% over the same 5 year period. 

This is one of the reasons I stress doing as much as you can for free before spending any money. I am not saying don't do your best to protect yourself and your idea. I am saying do your best on what you can do for free to see if it is worth protecting or already exists.

One example I like to use is Edible Sneakers. You can pay to have a patent search done, pay for a PPA, pay for a utility patent and maybe get a issued patent. But in the end would anyone buy one?

Ralph Machesky
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chappy75's Avatargold

That is why you should run a proper CMA before you choose to move forward on any idea. I cover that in Sales Lesson # 9 Pricing Subject: Electric Motorcycle CMA.

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gizmo's Avatar

Roger,

You might want to re-think the Edible Sneaker scenario or rephrase it. There are edible sneakers that sell quite well in the baking industry. 

Jimmy,,,I agree,,,, the inventor can use a registered Patent Agent also. The cost is normally cheaper than a Patent Attorney. Either way the inventor should never let the Attorney or Agent file the Application with out fully understanding what is written in the App. If you dont fully understand it have the attorney break it all down in Layman's terms. 

(Layman's Terms Definition:)

To put something in layman's terms is to describe a complex or technical issue using words and terms that the average individual (someone without professional training in the subject area) can understand, so that they may comprehend the issue to some degree.

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rogerbrown's Avatargold

Gizmo, that was pointed out about a year ago. I am familiar with the cakes. They do them in many styles. You can see them here https://www.google.com/search?q=high+heel+cake&esp... Since I am talking about shoes you wear I think it still applies. 

 

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rogerbrown's Avatargold

At what point in the process do you think a paid patent search makes sense?

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countofmontecristo's Avatargold

Just as not everything is patent-able, some inventions absolutely *must* be patented if only to protect the profitable lifespan of the invention.  There is a reason why Google, Microsoft and IBM are all major patent holders (and filers) every year.

Look at what just happened to Facebook-

A jury has awarded game development firm ZeniMax $500 million in its lawsuit against Facebook-owned Oculus.

500 million dollars is big game, I don't care who you are.  

If your invention is paradigm shift, disruptive and future trend setting, then you better know about patents and what they stand for.  I'm not talking about trinkets or the latest i-crap.   An example where this is truly paramount is both the Medical and Pharmaceutical industries.  You will be surprised to see *any* of those items not covered by one or more patents.  I have a major medical invention myself that falls into that category and know I have to play the game right if I'm to succeed. 

Everything is on course so far, so time will tell. : )

Charlie Lumsden
Jimmy's Band
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let-them-fly's Avatar

Speaking of legal actions, it looks like the Federal Trade Commission stepped in and shut down World Patent Marketing!

Charlie Lumsden
Ralph Machesky
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gizmo's Avatar

Search this to watch the video. Absolutely amazing someone would just hand over that kind of money  

nbc 6 Investagators 

Feds Call Miami Beach Patent Operation a Scam

Charlie Lumsden
Ralph Machesky
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inovate's Avataree_badge

My feelings are The Holy Grail is within each and all.   Thanks Frank for the heads up. Can anyone post that link for Giz?

Frank White
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countofmontecristo's Avatargold

Here ya go Gizmo- Sorry Charlie, my bad. I forgot insiders cannot post links. Doh!

Feds Call Miami Beach Patent Operation a Scam

I see Frank posted a link to the FTC report, thanks Frank! You Rock!

Frank White
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gizmo's Avatar

Thanks Ralph,

The inventor gave World Patent Marketing over $380K and got nothing in return. If you go to the USPTO and search complaints you wont find anything on the company.    

Ralph Machesky
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rogerbrown's Avatargold

This again illustrates why I am always saying you need to do as much research as possible for free before using any service. And make sure you need those services at that time. Let me make sure everyone understands I am not saying don't get a PPA, A Patent search done, pay for a utility patent and so on. I am saying do your best to make sure you need one of these services before you start paying. You need to understand what benefits each gives you before you pay for them. 

Having a car to get around is great. But is it a benefit to a person living on an island that is 500 X 500 feet? In my opinion a lot of these companies make it sound like if you don't do this today all is lost and your dream disappears. That is the hard sell most pitch because it works on your fear of losing a million dollar idea. 

Remember a great deal is only a great deal if you can afford it. 

Take the person in the article above that paid them $20,000 to WPM to help patent a receptacle for used chewing gum. Did they do any research to see that this may not be as unique as they thought? Did they bother to put "recycling chewing gum " in Google to see what shows up? Yes, I agree there are people that are just not very good at doing the deep dive into the patent office system or finding prior art, etc. But I would think most people can do a simple word search on the basis of their idea like I did above.

http://www.cnbc.com/2015/12/01/recycle-used-chewin...

And I get at least two Inventors a month approach me with a alarm system for preventing leaving your baby in a locked car. I am not saying they can't come up with something unique in this market, even as flooded as it is already. I am saying those two Inventors will contact me saying there currently does not exist an alarm system for this purpose. Put "Child's car seat alarm" in Google and see how many show up.

So when I see "And a Miramar man who spent $12,000 in a quest to patent and market a child’s car seat alarm." It makes me wonder what kind of research they have done and what they found.

Inventors need to learn and understand "Patentable does not equal Marketable"  And when it comes to companies selling you services no matter the outcome they still made money whether you did or not.

Ralph Machesky
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magurn's Avataren_staff_badge

Hey guys! Just wanted to jump in for a quick second...

I actually disagree that this topic, along with other recent threads, is creating a "panic." 

While we do not provide firm legal guidance with patents and patent work or in the interpretation of our agreements as they relate to the specific needs of innovators, I think it is important for innovators, new and old, to have an understanding of their intellectual property rights, as well as understand the terms and conditions they are agreeing to when they sign up for any service, be it ours or that of another company.

As the Community Manager, I see all too often folks who want to share their ideas, but that are actually stuck in another agreement, have lapsed patents, etc. WIthout the proper information and education, the lack of trust within this industry just grows.

It is my goal here not only to help everyone through the overall EN experience, but to educate and guide our members to learn as much as they can about the inventing process so they make the correct choices that are the best for their products. This often involves answering questions about our process which I am happy to do.

These forums are providing peer-to-peer guidance where inventors can share all types of experiences, from Roger's licensing ideas sans IP to success stories within the EN system to James' securing a patent of his own. Forum visitors, new and old, active and passive, can gather valuable takeaways from these experiences to help them make their own choices on their journey.

I always advocate that ANYONE starting ANYTHING should do their research and have an understanding of what they are agreeing to before signing on the dotted line.

I wish everyone the best!

Mary Gorman
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bobf's Avatargold

If it saves the inexperienced $10K, then they can sub 400 ideas to EN instead.

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bobf's Avatargold

When I was new and some other company tried to get large sums of money from me, I was relieved to find EN. Not sure what would make them paranoid?

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magurn's Avataren_staff_badge

Anyone that is a community member that has any concerns over information they read in the forums is always welcome to message me to share concerns or ask questions. That's why we're here as a team.

Rob F
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countofmontecristo's Avatargold

I see 2 great points made by both Jimmy's Band and Michelle.

Hopefully I can further clarify from an 'experienced' inventor...who is STILL learning.

Yes, Virginia, there are LOTS of SCAM companies out there, always was and probably always will be.  That's a fact of life.  Just as every big city has 'bad' areas you just don't go to, how do you know if you've never been there before?  You research.  You ask questions.  With the internet of things, there is simply no excuse not to do your own research, ask tons of questions and make your own INFORMED decisions.  

To me, any new or potential EN members are doing just that...asking the questions, testing the waters, BEFORE they jump in with both feet. Paranoid? No, that's smart.

The learning curve for everyone is as different as people are- some come up to speed quickly, others not so much.  Again, that's life in the big city.  I know more than most here about the flip side of success... loss.  The surgeon in the story I linked above lost 380k, about the price of a nice Ferrari.  I lost 30 million..try that on for epic loss.   

The takeaway from all of this?   If Edison Nation fell into the bucket of scam companies like so many we read about they wouldn't still be here today.  You, I and others here would have crushed them long ago, because the internet IS a powerful thing and knowledge my friends is powerful.   Shared knowledge, even more so.

Charlie Lumsden
Rob F
Jimmy's Band
Frank White
Michelle Sartori
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bobf's Avatargold

Jim, the type stories in this thread are the very thing that prevented me from spending big money all in one spot. If we didn't harp on these stories, this tread would fade away. The paranoid ones are usually those that were burned elsewhere and then seek out places and stories like these where they can relate.

They soon find out that a patent search will only cost them $25 and if they want to risk bypassing research, that too will only cost them the same. Another great benefit they discover is since the sponsor initiated the LPS, they are craving new ideas, unlike those places that aren't necessarily seeking any.

I know a few parents that are paranoid now that their kids spent a wad in one place. Now we can see how this thread has spawned comments on why they should join EN. LOL 

Frank White
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magurn's Avataren_staff_badge

A quick step in to clarify how members can identify information directly from the EN team. Official threads are marked as such in the forum list and all EN team members have a badge that reads "EN Team."

Now, apologies for derailing the thread a bit Roger...back to the topic at hand on patent searching. 

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let-them-fly's Avatar

Another way members & visitors can identify and distinguished accurate information from ego driven rants, is the ENTeam are quick to step in and confirm, clarify, or reject said information.

Yay Team!

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rogerbrown's Avatargold

Jimmy's Band, you stated "But a lot of what's being proposed here is to "do it yourself at the least cost possible". You may have skipped over the part where I said  This again illustrates why I am always saying you need to do as much research as possible for free before using any service. And make sure you need those services at that time. Let me make sure everyone understands I am not saying don't get a PPA, A Patent search done, pay for a utility patent and so on. I am saying do your best to make sure you need one of these services before you start paying. You need to understand what benefits each gives you before you pay for them."

You seem concerned what I post will run away new EN members. Actually I feel it is quite the opposite. You don't go to EN to pay for a patent search, get a prototype made, file a patent and all the other services you see listed on most invention submission companies. You go to them for the Live Product Searches. In my opinion as soon as you land on the invention submission companies websites they are selling you the above services. They are not as concerned with whether the idea is marketable like EN, they want to run a patent search or build you a presentation package, sell you a coaching package, etc. Why, because this is their bread and butter. If the idea happens to make it to market that is just gravy. The real money is made selling you services.

If all you do is read what some of these companies post on their websites it is all positive and you are going to get rich if you spend your money with them. Inventors are paranoid because of all the ripoffs they read about and lack of REAL LIFE experience from Inventors that have been successful on what pitfalls they can avoid. And not just rainbows and unicorns. Look at how many Inventors here have posted things like I wish I had known this BEFORE I spent money on X. That is where the forums are a great resource to help Inventors learn so they can make informed decisions.

I have been on both sides of the fence as a serial Inventor, a product reviewer and presenting products to companies from both perspectives. Which is information I try and pass on from that real life experience. Will it all be positive, no, but do I feel it is instructive,yes. 

Look at professional sports teams, they will not only watch videos of themselves but the opposing team to see what they each did right, wrong, weaknesses and strengths. They could just watch videos of themselves but then they miss the pieces that make up the entire picture. 

The same can be said with inventing. You learn from your mistakes, your successes as well as the mistakes and successes of others around you. Look when Leo or Elizabeth post something new they learned about building their business. They have posted the good and the bad so others can benefit from their real life experience.

Inventors don't want to be Lemmings going off a cliff. They want to find success. The information you can learn from those that have gone before you can help you avoid disaster and hasten success.

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gizmo's Avatar

I dont see a problem posting warnings about companies and scams.

If you search "World Patent Marketing youtube" its pretty obvious why someone with an idea would contact them. They have marketing videos they made and plaster them all over the web. Its pretty obvious they have fake news they concocted to suck people in. 

Im with Roger to a point about not running out paying for a search,patent app ,etc. But if you learn how to really search you will be searching prior art, not just patents or applications. You will be searching everything,,,,products,patents,applications,publications,,,,,and so on . 

I think the EN Business model is a good safe haven for most. All the info on how the searches work and the contract is on the forums and people still ask questions . I dont think its from being lazy locating the info.

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inovate's Avataree_badge

To all the new folk at EN. 

We have all been paranoid at one time or another. It's just a matter of not being in touch with who we are. The trails of life will give opportunities of thinking of the future, maybe even the past.

Since we've all been there and are still with EN, it speaks in multitudes. 

I have been here since 2010. I knew nothing about the invention to market thing. Now thanks to this community, I am more confident in this arena.

I have thanked The community over and over again, for their wisdom and knowledge.

I must thank Gizmo, another one who has helped me. 

Gizmo, I didn't read much before fifty, but since have changed.

I'm guessing it's because of the ADD I use to have. I don't like to read legalities still, but because of your teaching of searching prior art. Has made research easier. For me pictures are easier to study then words. Thanks again my friend

Aloha Charlie

Michelle Sartori
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rogerbrown's Avatargold

A little bit of paranoia is fine as long as it is backed up with some common sense, a willingness to listen to criticism and learn as much as possible so you can feel confident with your decisions.

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gizmo's Avatar

Charlie thank you for the Compliment. Happy to help

Paranoia is normal for the majority of people with ideas .

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rogerbrown's Avatargold

Got an email yesterday from an Inventor that said she was shocked by the response she got from her patent lawyer. She has been following some of the threads here on EN and asked the Patent lawyer if her idea was marketable. He responded that is not his job to find out, it is hers, he is only working on the patent.

He is correct in his response. The Inventor bares the responsibility to know their market. 

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rogerbrown's Avatargold

Keep in mind when your patent lawyer writes a long list of Claims for your patent that does not mean they will all be approved by the patent office. You will most likely have office actions to respond to before the final decision if your patent is issued or rejected. I have seen Inventors start out with more than 20 Claims but in the end had 3 get approved.

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