Patent Owner Gave Me Permission to License Patent - Now What

[kabaty@mail.com]

Have you ever had a good idea... only to find out it was patented???

I did... but to my suprise it has never been put on the market. I belive it is a very good idea, and will have a very useful application for deaf people.

I have been reading ¨From Patent to Profit¨ by Bob DeMattheis where he tells you how to contact a Marketing Director, Manufacturer, and Distributor once you´ve patented an idea.

My question is... What do I do in my situation? I would basically be a middleman for the patent owner and the end users, wouldn´t I?

I am just trying to figure out the best way to handle this situation and bring the product to fruition. How should I approach this situation?

Any advice would be greatly appreciated

[Mr. Knowitall]

Depending upon how much you think the invention is worth, you may want to try buying it or licensing it from the inventor. But be aware that it's harder to sell an invention than you may think, which may be why the invention is not presently being developed.

[kabaty@mail.com]

Thanks Mr. Knowitall

I have also been thinking about just purchasing the patent from him. I realize that alot of things can go wrong in the process of getting a product on the shelves...

If the patent owner is scared of attempting to get it on the shelves or has been unsuccessful, how much would one generally ask to buy a patent? It usually costs around $10,000 to patent something no? I could offer him that to cut his losses, or maybe less?

[Mr. Knowitall]

I expect it's more a function of what he believes the invention to be worth. Your perceptions matter as well, given that it's your money, but does he think this is a $10K idea or a $10mm idea?

[KeyWestDan]

First, if it has not been marketed, there are probably good reasons.

It is NOT worth 10 mil or anything of the sort.

If it is a product for the deaf, I can speak with some authority on this, as I have developed a number of products for the deaf (though they were not always the actual market) and won 3 SBIR contracts from the US government to develop them. I have been to Crystal City and did my own patent searches.

The fundamental problem is that the deaf community is relatively small and more importantly, generally POOR. You are also looking at a concerted effort to market to them that is very expensive.

The product might be a good idea, but the cost of manufacturing it in relatively small numbers may well price it out of the market. In addition to manufacturing costs, of course there is general overhead and marketing costs which can be substantial.

For example, we went to various meetings, seminars and conventions for the deaf, paid for booth/table space, had employees who were deaf and certified in ASL which we had to transport and put up, etc. Everyone loved our products and told us they were great. But they were too expensive and we didn't sell nearly enough to justify the marketing costs, much less development investment, manufacturing and overhead.

There are also political issues within the deaf community that could affect the marketing of your product.

As I mentioned, you can have a product for the deaf that is not actually sold to the deaf. But then you are selling to an even smaller market of organizations that deal with the deaf, or perhaps businesses that want to accomodate the deaf. That can be an equally hard nut to crack, especially in this economy.

If you are serious about the product, I would offer a minimal amount to purchase the patent, like $2500. The older it is, the less value it has. Also, you can be pretty sure he/she has already tried selling it or licensing it to the handful of companies that make products for the deaf.

Perhaps the patent owner already has tried marketing it to the deaf community. I would research that. And saying "deaf community" is also a misnomer.

There really is more than one and their needs and interests are different.
First, there are people that are pre-lingually deaf. These are usually the most political. Then there are children who have gotten the implant. This is a firestorm for the politicals. Then there are people who became deaf later in life but after they learned to talk, read and write. Finally, there are the people who became deaf late in life, who will have different needs again, and perhaps additional problems (eyesight, movement issues, comprehension, memory) that might affect the use (& learning curve) of the product.

The stuff I invented and developed were all telecom related and this was before the web was around. The internet has rendered them all basicly obsolete. That is another thing to consider, the possible life span of the product.

My final advice: Proceed with caution.

If you'd like to read more about my experiences, go to www.glinn.com/quaterra

[kabaty@mail.com]

Thanks Mr. Knowitall and Resamith. I need to do some market research soon because I really do not know the potential, I'm an engineer who thinks it has alot of potential, but I think I should hire a professional do decide that. I'm on a tight budget however, I don't think I could afford this advice.

As for finding a potential sponsor, I can say that this sort of a device which will aid deaf people alot, but can also be used by regular people. Its a common household device that works in a different manner than normally. What kind of sponsor would I find for this type of device? How do I go about finding one?

I am the type of person who wants to do everything myself, I wanted to contact the manufacturer and get it into production, and set up a website to market it myself, contact website vendors that cater to deaf people and gain customers through that way. But now I realize I will probably need help, it is much more realistic.

Another question, where should I go first for more professional advice? Patent lawyer or Marketing expert?

Thanks for the help,

Eric

[Mr. Knowitall]

If you need help with the legal side - licensing agreements, due diligence on the enforceability of the patent, etc. - it makes sense to speak to a patent lawyer. If you need help figuring out if and how you could market the invention, it makes sense to discuss that with somebody who is experienced with marketing similar products or inventions.