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Neustel-Zimmer Approach To Successful Inventing
by Michael S. Neustel and Edward Zimmer
The Neustel-Zimmer Approach should only be utilized by inventors that intend to license
or sell their invention to an existing company. This Approach is not designed for inventors
that desire to manufacture their inventions. Michael S. Neustel, a Registered Patent Attorney, and
Edward Zimmer, a marketing expert, developed the Approach. You can visit their respective web sites
at www.patent-ideas.com and
www.tenonline.org.
The Neustel-Zimmer Approach attempts to maximize potential returns to an inventor
intending to license their invention while minimizing the potential risks. While this Approach
does not guarantee success for all inventors, if followed properly it can significantly reduce the
financial risks most inventors incur. Remember . . . less than 2% of inventions ever make money.
Make sure your invention will likely be one of those 2% before spending thousands of dollars on
patents, prototypes, and other services.
STEP #1: PRELIMINARY INVENTION EVALUATION
The first step in the Neustel-Zimmer Approach is to make an objective assessment of your invention.
If you are honest with yourself and your invention at this step, you can possibly avoid spending money
on over 50% of your inventions that have limited value. It is assumed that you have been
maintaining detailed records of your invention as you develop it. You should conduct two types
of research during this step: (1) market research, and (2) patent research. After conducting your
research, you should take an objective marketability test to determine if you should proceed to
Step #2.
A. Market Research
Market research comprises searching for similar products that are currently on the market
or that have been attempted to be marketed. You should conduct your market research in (i) catalogs,
(ii) the Internet, (iii) stores, and (iv) magazines. You should also research companies that make
products similar to your invention to determine if they manufacture products that would directly
compete with your invention or if they have a better product than your invention. Make sure to check
everything since a good percentage of inventions can be eliminated simply by doing some solid market
research.
B. Patent Research
Patent research comprises searching for patents that are issued
for inventions similar to yours. You can search for issued patents on the Internet or at your local
U.S. Patent Depository. There are several free search engines on the Internet, but we suggest
utilizing the IBM Patent Server at www.patents.ibm.com
which you can utilize for free. You should enter various keywords for your invention and print out
all relevant patents. Another excellent location to search is your local U.S. Patent Depository
which has very helpful patent librarians to assist you in your patent search. The USPTO has a
complete list of Patent Depositories at
www.uspto.gov/web/offices/ac/ido/ptdl/ptdlib.htm
that you can utilize.
C. Marketability Test
If a very similar product is not located during the market and patent research, you should then
take an objective marketability test for your invention.
After you are finished conducting your market research, patent research and marketability tests,
you have to make a choice: (i) proceed to Step #2, (ii) stop proceeding with the invention, or (iii)
place the invention on reserve while you consider other inventions. Remember, less than 50% of
inventions should pass Step #1 if done correctly.
STEP #2: PATENTABILITY SEARCH & OPINION
If your invention survives Step #1, you should
have a professional patentability search conducted at the
United States Patent & Trademark Office (USPTO). You should also have your Patent Attorney give you
a patentability opinion based upon the patent search results. You should expect to spend between
$400 to $800 for a good patentability search and legal opinion.
After you receive the patentability opinion and search results, you have to make a choice:
(i) proceed to Step #3, (ii) stop proceeding with the invention, or (iii) place the invention on
reserve while you consider other inventions.
STEP #3: SELF-DRAFT A PROVISIONAL PATENT APPLICATION
If your invention survives Step #2, the next step is to draft your own Provisional Patent Application
(a.k.a. PPA). The PPA is not a true patent application since it only lasts for one-year and it is
not examined by the USPTO. However, the PPA provides a suitable format for inventors to draft
their own patent application and receive up to one-year of patent pending while they determine
if their invention is potentially licensable. It is highly recommended to utilize reputable
commercial materials that explain how to draft a patent application.
It is recommended that you hire your Patent Attorney to review your self-drafted PPA before
mailing to the USPTO. When drafting your PPA, make sure to describe your invention in detail
regarding structure, functionality and use. Make sure to include as many detailed hand sketches
and pictures (if prototype is made) as possible to clearly describe the components and operation
of the invention.
35 U.S.C. §112, first paragraph states that the PPA shall contain a written description of
the invention, and of the manner and process of making and using it, in such full, clear, concise,
and exact terms as to enable any person skilled in the art to which it pertains, or with which it
is most nearly connected, to make and use the same, and shall set forth the best mode contemplated
by the inventor of carrying out his invention. Failure to satisfy 35 U.S.C. §112, first
paragraph can possibly result in lost patent rights. You should consult with your Patent Attorney
if you have any questions about the legal requirements of the PPA.
STEP #4: "LICENSING" RESEARCH
After filing your self-drafted PPA with the USPTO, you should then begin your licensing research.
It is recommended that you hire a licensing agent who specializes with your type of product
(toy licensing agents, etc.). If you are unable to locate a licensing agent who specializes
with your type of product, you can either utilize a general licensing agent or attempt to conduct
the research yourself. Your fees for the licensing agent should be less than $1,000 for all
services rendered.
During the licensing research you should first make a list of 5 - 20 companies that
manufacture products similar to your invention and that may be potentially interested in licensing
or buying your patent rights. You should then try to contact these companies by telephone or mail.
Without describing your invention, you should tell the company that you have an invention which
solves a specific problem or does a special function. You should inform them that you have patent
pending on this unique product. You should then ask the company if they would potentially be
interested in licensing or purchasing the patent rights to your invention. If they request more
information about your invention this is a good indication that your invention is potentially
licensable. If the companies state that they already have a product that adequately solves
the problem or that does the special function, this is an indication that your invention
is not potentially licensable.
After the 5 - 20 companies have been contacted, your licensing agent should make an objective
assessment and recommendation as to the potential of licensing or selling your invention. You then
have to make a choice: (i) proceed to Step #5, (ii) stop proceeding with the invention, or (iii)
place the invention on reserve while you consider other inventions.
STEP #5: HIRE A PATENT ATTORNEY TO DRAFT YOUR PATENT APPLICATION
If you feel that your invention is potentially licensable after conducting your licensing
research in Step #4, you should then hire the Patent Attorney to draft a complete patent application
for your invention. Expect to spend between $3,000 to $5,000 for a quality patent application
from your Patent Attorney.
STEP #6: LICENSE THE PATENT RIGHTS
After your Patent Attorney drafts and files the complete patent application for your invention,
you then should have your licensing expert arrange to disclose your invention to potential licensees.
You should attempt to have Confidentiality Agreements signed with these companies prior
to disclosing your invention to them. Don’t be surprised if many companies will not sign
your Confidentiality Agreement.
STEP #7: FINAL REVIEW
You should reevaluate your position with regard to your invention
every six-months while completing Step #6. As an inventor, you need to objectively
determine when you should terminate all actions in promoting a specific invention.
You should base your decision upon the reactions you receive from the companies when
presented with a full disclosure of your invention. Remember, your time is worth something
so don’t spend it attempting to market an invention that no one wants.
Approximately every six-months you should consider either (1) manufacturing the invention,
or (2) terminating all efforts for the invention. If you have not received a
positive reaction from industry regarding your invention, you are strongly encouraged to
consider the latter choice to avoid creating further hardship for yourself. Do not spend
valuable time pursuing a fruitless dream.
FINAL COMMENTS
We hope that you find the Neustel-Zimmer Approach beneficial to you during the invention process.
The road to success with your inventions requires hard work, dedication, and most significantly
honesty about your invention. We hope that our Approach allows you to quickly identify
the 98% of inventions that are not licensable. Lastly, we hope that you are able to choose
the 2% of your inventions that are potentially licensable so that you proceed further with
them and become a successful inventor!
Best wishes, Michael S. Neustel
www.patent-ideas.com
Edward Zimmer
www.tenonline.org
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