Getting a US Patent

Actually, you are not even required to do a patent search. (*) If your invention is patentable, the examiner is required by law to write at least one patent Claim for you. (Most people don't know that!)

Although, you can pretty much expect the examiner's claim to be so narrowly written that the resulting patent will have absolutely no value.

The more important reason for conduting the patent search is NOT to see if someone else beat you to it (though that is a consideration), but rather, to discover exactly what it is you have invented!! And you can't determine that, without knowing the prior art.

(*)Note: Not required to search unless you request expedited examination, that is. If expedited, you must affirmatively make your case for each Patent Claim. And note (if you're wondering), the "goal" of an expedited application is to get it processed in 12-14 months!. Not exactly government action on a caffine buzz.

-mpm

A good friend of mine is the best patent claim drafter I've ever met. (He taught me everything I know about it, but I'm nowhere near as good at it as he is.) I tease him that he's like the Borg--he writes claims that seep into all the spaces between the prior art without hitting any of it. It's amazing to watch.

Assuming you've invented something valuable, the difference between a good patent and a worthless one is all in the volume of IP space you can occupy, and the defensive strategy embodied in the chains of dependent claims.

Cheers

Phil Hobbs

Termites, obviously.

-- Many thanks,

Don Lancaster voice phone: (928)428-4073 Synergetics 3860 West First Street Box 809 Thatcher, AZ 85552 rss:

Please visit my GURU's LAIR web site at

Lots of entertainment in this thread. But really, isn't the corporate goal to have a portfolio of patents and just trade patents whenever you get sued for patent infringement?

Depends on how rich you are; might need a few million dollars.. Some BIG Company could make a minor and obvious modification, patent the result and drag you thru court until you have no more money. This has happened in the past. Or the B.C. could just use your idea and not pay a penny and essentially dare you to piss away your money in umpteen courts (deposition requirements "insufficient", appeals courts, etc). This also has happened.

Yes; disclose it in a way that looks complete but leaves out one or two critical items. For example, see the public patent write-ups i did on a high voltage shunt regulator: (1)

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If you leave out a critical item there's no effective disclosure, and you've not established any prior art.

Publishing your ideas as a defense against someone else patenting something just gives your competitors advance warning, for free.

If you don't mind that, go for it.

-- Cheers, James Arthur

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Sorry, you're exactly wrong. If you can prove someone's patent covers something you invented first, you still have the right to use your invention. Such witnessed documentation is one of the best defenses you can have.

(The gold standard is an official bound, glued, serialized inventor's notebook with a series of such signed, witnessed pages documenting the history of your invention from conception through its development.)

a) If Mr. Horde's goal is to prevent his idea being stolen, why on earth would he publish it worldwide so that anyone on the planet could legally take and use it for free?

b) Your strategy makes it trivial for deadbeats to fake a disclosure predating yours, then file as if they invented it. They can do that up to a year after you publish. And you've told them the date they need to beat.

-- Cheers, James Arthur

That's Don's point and you're both right--it's the rare invention that's worth it.

Not at all--if you have the moxie, will, or money, you can. If not, and your patent is truly valuable, you can sell it to one of the infringers' competitors and they'll be only too delighted to enforce it for you.

There's more than one way to skin a cat--I've only mentioned two.

-- Cheers, James Arthur

The search is intended to save patent filing and lawyer's fees in case there is already prior art. It also helps the examiner because, theoretically, he's going to go through the same search. Of course it also helps in writing claims that don't step on prior art.

Examiners don't write claims. It's up to you do identify what you're trying to protect.

It helps to determine what you're trying to protect. You've already done the "invention"/

...for an individual. Corporations have many reasons for patents.

A big stick is good. There's also the prestige factor--when I was at IBM, they prided themselves on filing the most US patents of any company every single year. That made their claim to be a technology company, THE technology company, a bit more substantial-looking. (They dropped that policy last year.)

Having a bit of experience in the patent business, both in prosecution (i.e. obtaining a patent) and litigation, I've seen lots of good ones and even more bad ones. The two things that people most commonly get wrong in drafting patents seem to be:

(1) the invention isn't really original enough to withstand an obviousness test (this has recently got quite a bit harder); and

(2) the inventor didn't work hard enough at generalizing the invention.

My friend Steve the patent guru describes it as "knowing a species, find and claim the genus." Spend time thinking about how to avoid your own patent. Spend time thinking about what an honest competitor would do instead of licensing it from you. And (ideally) find a good distributor who'll go to bat for you if a big bad guy comes along.

You don't need to be a billion-dollar company to win patent suits against the big boys, but you do need a million bucks or so, and a well-developed sense of fairness. Last year I had an expert witness gig helping defend a guy's garage operation who was being unfairly leaned on by a medium size competitor (~10M/year revenue) whose product was inferior.

The guy would certainly have lost due to running out of dough, except that (unbeknownst to the bullies) he had signed a distribution agreement the week before they filed suit. The distributor was rather bigger than the bad guys were, so the case ran long enough for justice to triumph. (The settlement terms weren't announced, but I gather the bullies paid our guy's costs.)

BTW I'm getting ready to file my first couple of US provisionals on my own stick in the next month or two. Wish me luck.

Cheers

Phil Hobbs

I don't think so!

----- IBM leads the pack in patents

In 2007, IBM received 3,125 U.S. patents from the USPTO. This is the fifteenth consecutive year that IBM has received more US patents than any other company in the world.

-----

Right, but (a) last year was 2009, and (b) it takes quite awhile for patents to issue. Look for a big decline around 2011-2012. (This isn't my freelancing, the company announced the policy in public.)

Cheers

Phil Hobbs

Um, no. Not always. And you missed my point entirely.

Examiners do (on occasion) write claims, and if your invention is patentable, they are required to draft at least one claim for you. NOT THAT YOU WOULD EVER WANT THIS. I agee with you. But your statement that "Examiners don't write claims" is indeed false.

For the proof of this, and my original statment, I refer you to section 707.07(j) of the USPTO's official Manual of Patent examining Procedure. Link:

Here is the section, reprinted in its entirety. Enjoy. (And now you can stop dispensing incorrect information.) :)

"When, during the examination of a pro se application it becomes apparent to the examiner that there is patentable subject matter disclosed in the application, the examiner should draft one or more claims for the applicant and indicate in his or her action that such claims would be allowed if incorporated in the application by amendment. This practice will expedite prosecution and offer a service to individual inventors not represented by a registered patent attorney or agent. Although this practice may be desirable and is permissible in any case deemed appropriate by the examiner, it will be expected to be applied in all cases where it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of patent applications."

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Why not spend the few extra dollars (and time) to file non- provisional? In the US system, there is no way to convert a provisional to a non- provisional. You'll have to re-file, and spend that money / time anyway.

My advice: Only go provisional if you're really worried about someone else filing first. Your ultimate non-provisional app will have to very closely match your provisional, or you lose out on your earlier (provisional) filing date. That, IMO, is the biggest reason not to file provisional. I think in some cases, it give the inventor a false sense of security re: their filing date.

However, a provisional (if not morphed into some other invention by the time you file the non-provisional) does allow you to legally claim "patent pending", just as it would with a non-provisional filing. And, it does give you more time to get your invention / application polished up and submitted, and check to see if there are any willing customers, (verify a market), etc... without going whole-hog on a non- provisional.

But aside from all that jibberish --

Good luck on your ideas / patent applications.!! Every now and then, good ideas happen.

- mpm

There is a very recently published book about a group of inventors who basically invented the BIOS. They ended up filing an infringement suit against IBM, and it literally took 20 years to prevail. I'll get the title from a friend of mine and post it. Small book, maybe 100 pages. It might even be self-published, or in very limited edition. I think it was published just last summer. Anyway, it is a "must- read" for anyone involved in patent litigation.

IBM outlasted all of the inventors, so the estate ended up with the money. A very sizeable chunk, but not disclosed as part of the settlement.

If I recall, most of the money came from the group having to sue its own lawyers, who were also representing IBM at the time.

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Thanks. I've written enough patent specifications and done enough drawings to know what they're supposed to look like--but filing a provisional is quite a lot cheaper, and allows me to talk about stuff with others (especially the gov't) without worrying about losing the opportunity to file. Consulting is going very well so far (I've been at it for a year now), but there are always cash flow issues to manage.

The two gizmos are a multimeter for laser beams and a really really cheap (but good) visible/thermal camera system.

Cheers

Phil Hobbs

If you are practicing in arts which might be affected by the Supreme's decision in Bilski (due late this term, probably the second or third week in June), all of a sudden provisionals look a lot more tempting.

Do your normal writeup, drop the claims on the floor, file as a provisional. That preserves your dates and gives you a year to convert to a utility, which means at least a few months to contemplate whatever the Supreme's hand down in Bilski.

(As a patent practitioner, I expect them to gut business method patents. It's more the collateral damage in other areas that concerns me.)