Correction: This version of the story corrects the spacing of the JackWrapIt name and notes that JackWrapIt has already secured a patent for its combination jacket and scarf.

An old English proverb tells us “There’s many a slip ‘twixt the cup and the lip.” The adage is especially true for inventors as they attempt to take their idea from concept to prototype to finished product and then to market it successfully – all while protecting their intellectual property from poaching.

Some milestones along the inventor pathway are easier and cheaper to reach than others, but inventors should realize that, overall, the path is long and expensive, said Doug Tarble, director of Cape Fear Community College’s Small Business Center.

“Most people who invent things are tinkerers who don’t have the wherewithal to carry their idea from birth to maturity and need all the help they can get along the way,” he said, adding that the waters surrounding inventors are filled with circling sharks, waiting to take advantage of the unwary.

The sharks include online sites that claim to offer low-cost help getting an inventor’s idea through the protection process and entities that offer to purchase an inventor’s idea and develop it themselves, expert said.

“You have to be very careful,” Tarble said, explaining that an inventor can potentially get nothing for money invested with scam artists or could let an idea go for a small amount of money.

Thomas Varnum, a Wilmington intellectual property attorney with Brooks Pierce, said that inventors who fall prey to online scams or poor quality work can end up paying a lot more than they would have if they started their legal process with a bona fide attorney, because they have to employ an attorney to undo what the online entity did.

“There are also scammers that will comb through filings and send what looks like an invoice” to an applicant for a patent, trademark or copyright, he said. “They will send fake bills for services. We see that internationally.”

Sometimes, online resources can be productive ones.

Area residents Elizabeth Field and Michelle Pare (left), co-creators of the JackWrapIt combination jacket and wrap-around headscarf, found affordable, professional help through online site LegalZoom.

They consulted the site, however, only after consulting an attorney, who explained that the online legal site’s fees were better suited to the team’s budget.

Through LegalZoom, the inventors were directed to a firm in California that works with startups on design patents. Field said the quality of the service she and Pare received was very good and very personal and resulted in their getting a design patent at a fraction of the cost: in the neighborhood of $2,000 rather than $10,000 or more.

Another local inventor, Anne Brewer, who created Potti Pocket, also is navigating the path of idea to market, keeping herself and her device out of the reach of those sharks.

When she realized there might be a need in portable toilets and restaurant bathrooms for cell phone holders, she sketched out her concept: a seemingly simple hard plastic holder that could be securely and permanently mounted on a plastic, wallboard or tile surface that would drain and dry when portable toilets or commercial restrooms were powerwashed.

Brewer found a Georgia manufacturer that would make several copies of her prototype and connected with Mitzi Kincaid, whose Wilmington-based firm does intellectual property law.
Kincaid said that her firm focuses on two aspects of intellectual property protection up front.

“A – We want to make sure our clients can do it,” she said, adding that she and her associates provide an early reality check. “And B – we want to make sure they don’t get sued. When Katy Perry danced with the sharks at the Super Bowl, one guy made some stuffed sharks and was selling them on the Internet. Lawyers shut him down the next day because Katy Perry owns the design rights for those dancing sharks.”

Kincaid liked Brewer’s idea for the Potti Pocket. She told Brewer the first step would be to form a legal entity – the two decided on a limited liability company (LLC) – after which they should seek trademark protection for the product concept, two related names: Potti Pocket and Pocket Pal, and the tagline, “I pee hands free.”

With the LLC created, Kincaid’s firm did a trademark clearance search, which did not indicate any competition for either the concept or the name. So the firm applied for trademarks for the concept, the names and the tagline.

Trademark applications are sent to the U.S. Patent and Trademark Office, better known as the USPTO. If federal attorneys find that an applicant’s idea and names have a high likelihood of success, the USPTO will issue trademark registrations, which can be indicated by that familiar encircled R next to a name, logo or tagline. The process, from application to receipt of registration certificate, can take less than a year.

“Once registered, the trademark is good for six years,” Kincaid said. “Anne can renew it for 10-year periods after that. As long as she keeps paying and the product is still being used, she never loses her protection.”

And, when the legal entity owns the trademarks, they can be passed to an inventor’s heirs through a will or sold along with the business.

Getting a patent on the Potti Pocket and the Pocket Pal – a phone holder designed for dry environments like dorm rooms and offices – is a more complex and expensive process. And once Brewer moved from product concept – which can be trademarked – to product function and construction, she entered patent domain.

“A patent covers useful inventions,” Varnum said. “For a patent, you have to disclose your invention to the whole world. It’s a long and expensive process that requires a lot of work and full disclosure.”

Doug Scholer, a Wilmington attorney with Austin, Texas-based Toler Law Firm, said entrepreneurs can do some spade work themselves.

“When you come up with your great new idea, you should see if it can be patented. There’s information on the process on the USPTO website, and it’s free to the public,” he said.
After that, however, he recommends even do-it-yourself types seek the help of an experienced patent professional. And timing is essential.

“It’s important to file a patent application before disclosing the invention to others,” Scholer said, “or you can risk compromising your rights in the invention.”