The patent process may be cumbersome, but it protects an invention and paves the way for compensation for your hard work.
In 1985, Liz Fojon, owner of PhenomaNails & Hair in Fair Lawn, N.J., broke a nail while getting ready for a party. With no tools, besides her own ingenuity and a file, she carved the broken nail into a diamond shape and applied some rhinestones to complement her outfit. The result was a hit with the partygoers, so she decided to make the carved tips for her own use and for her clients.
Over the next few years, Fojon put a lot of time into refining her invention, searching for the right plastic and commissioning a special machine to manufacturer the tips. In 1990, Fojon was ready to start selling the tips to the public. The response was favorable and soon she began to notice similar products entering the market.
“I wanted to make sure that I could continue to market my product and keep quality high so that my invention didn’t become a cheap gimmick. 1 decided to make sure that all the carved tips on the market were made well and lasted. It was an issue of quality control,” she explains. So she decided to pursue a design patent on her tips. “It was difficult to start,” she says. “There are plenty of do-it-yourself patent kits. I tried some of those before realizing that if you are serious about getting a patent, you need to get a good patent attorney — someone who will take the time to explain to you what you need to do.”
Fojon filed for a patent less than one year after beginning to manufacture the tips for sale and had the first of 11 design patents on her tips two years later. “It is very time-consuming and very expensive, but it was important to me to go through the process to protect my reputation and my invention.”
Every day nail technicians come up with ideas for products that make their job easier, more ergonomically friendly, or that improve the end results of their service. After making their idea a reality, many become confused or overwhelmed by the patent process. But in a country founded on the entrepreneurial spirit, you can rest assured that there is a way — albeit somewhat intensive — to protect you and your product.
What Is a Patent?
Patents are “grants of a property right by the government to the inventor,” according to the U.S. Patent and Trademark Office (USPTO). Nail technicians or others who “invent or discover any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent.” The term “useful” means that your invention has a purpose and operates as designed. Abstract ideas and machines that don’t perform the intended function are not patentable.
Your invention must also be new. It can’t have been used, patented, or described in a printed publication in the United States or any other country. “If you come up with a great idea, keep it a secret from everyone until your patent is filed,” warns Lin Halpern, director of new product development for NSI (W. Conshohocken, Pa.). “I also recommend that you don’t sell or produce your invention prior to receiving the patent because you can be superseded unless you have documented information that proves you thought of the idea first.”
Receiving a patent on an invention means that the property rights belong to the inventor for 20 years from the date that the patent application is filed with the USPTO. Patents filed in this country protect you and give you the “right to exclude others from making, using, offering for sale or selling” the invention only in the U.S. and its territories. To receive patents from other countries, you must file separately with that specific country.
“Once a product is made public, the inventor has one year to file for a patent or the eligibility expires,” says Joanne Hayes-Rines, editor of Inventor’s Digest magazine and president of United Inventors Association of the USA. “The good news is that the product can’t be patented by anyone else either. Inventors should have an attorney start to draft their application at the end of 10 months.”
Right now, approximately 3,500 patents are granted per week — about 170,000 per year, says Hayes-Rines. If you decide to patent your innovation, it may take as little as six months or as long as several years (the average is two years).
The Role of the Patent Attorney
Most people who have been through the patent process agree that a capable patent attorney is the key to success. “Novices should always get a patent attorney” says Hayes-Rines. “They know, among other things, how to word your patent application so that you will get the widest use of it and what drawings, diagrams, or explanations will be necessary in order to receive your patent as quickly as possible.”
The most important thing that your patent attorney will do for you is make sure that your design and/or utility patent (see sidebar on this page) is filed as completely and correctly as possible. “We hired the best attorneys we could when we decided to get patents on our products,” says Scott Albers, president/CEO of Poshé (Dallas). “They made sure we had the broadest patent possible for our products, which is important because anyone can pay $5 and essentially get a copy of your product’s formulation.” Albers says that the cost for hiring the attorney was worth it. “It allowed me to concentrate on other aspects of our newly developing business,” he remembers.
The wording of your patent is very important and it is up to the attorney to make sure that your invention is described as broadly as possible so that those who would challenge or copy your product are not given an exact blueprint of your invention or the exact mixture that makes up your formulation.
“It isn’t the amount of money that they charge that determines a good patent attorney,” cautions Charles Martens, CEO of Seche, who along with others wrote the first patent the company received for Seche Vite.
“Choose who helps you write your patent by deciding who you want to work with to patent the product and then again when it conies to time to make it or license it,” says Martens.
The Basic Process
Before you start looking for an attorney, do some preliminary research. “I recommend to inventors that they take some steps to make sure their idea is not already in their market before hiring an attorney,” says Hayes-Rines, who says doing a online patent search or research at one of the 80 patent depository libraries across the country is a good way to start (see the sidebar on page 54 for some patent resources). Also, she recommends visiting local beauty supply houses and distributorships, browsing through industry catalogs, and attending trade shows to make sure that your invention is indeed different or unique. “You may also want to talk with sales reps or other industry members, but don’t disclose anything about your own invention,” she advises.
Once you have finished your research and decide to continue with the process, you can take your ideas and any preliminary drawings to a patent attorney. The next step is usually a professional patent search to make sure your product is patentable. “Most of these searches are done by a patent specialist in the Washington area, who looks through USPTO files and conducts a computerized search,” says Joseph N. Hosteny, an intellectual property litigation attorney with the Chicago-based firm of Niro, Scavone, Haller & Niro. He says that a typical search can cost $400-$500. Though you may have already conducted your own searches of patent databases, he recommends that these searches not replace a professional effort. “Once a professional search has been conducted, your attorney can also better estimate your chances of getting a patent,” says Hosteny.
The next step is drafting of the claims. “Claims are a detailed, legal description of your invention,” Hosteny notes. “An application can contain between one and 100 or more claims.” The process can take one to two months to prepare and is mailed along with any drawings and the filing fee to the USPTO.
If questions arise as the USPTO reviews your application and claims, it will communicate in writing with your patent attorney. “Expect to receive these communications (known as office actions) from the patent office,” says Hosteny. “Most applications involve at least two office actions.” Sometimes some claims will be allowed and others will require further investigation by the patent office. You may be asked to submit professional drawings or more information, which can add extra time and charges.
Once the patent is accepted, keep in mind that you will be charged maintenance fees throughout the 20-year period. “The fees escalate with time: $510 at 3.5 years, $1,025 at 7.5 years, and $ 1,540 at 11.5 years, if you file as a solo inventor,” says Hosteny. If you decide to license your product, you may want to consider including these charges in your contract.
The Pros and Cons of Patents
A nail technician with a good idea has a lot to weigh before she decides to patent. On the one hand, it is a way to protect her idea from duplication, and it gives her more bargaining power when it comes to licensing deals or starting her own company.
On the other hand, unless she makes a profitable licensing deal or decides to go into business for herself, she will not make a lot of money as an inventor with a patent. Patenting also leaves her vulnerable. “If you don’t have the money to defend your patent, then don’t patent your product. Keep your formulation or design a trade secret,” advises Martens, whose company been involved in patent defense lawsuits in the past. “It is very expensive to defend a patent.”
Still, Martens encourages nail technicians to follow their dreams, whether that means patenting the product and soliciting venture capital, borrowing money to start their own company (as he did), or licensing their idea to a company they respect.” Choose a company whose products or image you admire and have them sign a confidentiality agreement that they can not take your idea or share it with others before you talk with them about your design,” he says. “If it is something that is patented and will help the company achieve its goals, then it may sell.”
Overall, it takes a lot of time, patience and resources to get your invention patented. It is up to you to decide whether the effort is worth your time and investment. However, many nail technicians and nail companies who have traveled down that road say it is worth it, including Fojon. And she encourages other nail technicians to be like-minded: “If any nail technician has a product idea that can elevate the quality of the products in our industry or can make the quality of the nail business better overall, then she shouldn’t hold back from getting a patent.”