Quantcast

The Top 5 Things Inventors Do Wrong

By Gene Quinn on September 19, 2008

 

 

An updated version of this article is available at:

http://www.ipwatchdog.com/2012/08/04/27128/id=27128/

 

 

The Author

Gene Quinn

Gene Quinn Gene Quinn is a patent attorney and the founder of IPWatchdog.com. He is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman & Malek.

Gene’s particular specialty as a patent attorney is in the area of strategic patent consulting, patent application drafting and patent prosecution. He has worked with independent inventors and start-up businesses in a variety of different technology fields, but specializes in software, systems and electronics.

is admitted to practice law in New Hampshire, is a Registered Patent Attorney licensed to practice before the United States Patent Office and is also admitted to practice before the United States Court of Appeals for the Federal Circuit.

Gene is a graduate of Franklin Pierce Law Center and holds both a J.D. and an LL.M. Prior to law school he graduated from Rutgers University with a B.S. in Electrical Engineering.

You can contact Gene via e-mail.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 6 Comments comments.

  1. 25978 October 5, 2008 8:51 pm

    Is the provisional patent honored by the western European countries?

  2. Richard (IP & Patent Counsel) March 14, 2010 1:59 pm

    Gene, I know this is an older post, but I couldn’t help but add a no. 6 to the list. This happens frequently and when patent counsel is onboard, no less. A patent/novelty search is performed by a professional outside search company (at my insistence) and perhaps 50 or so “hits” of patent and non-patent prior art are cited in the search report. Although the report does not provide a detailed opinion as to patentability, the search professional states in the report or accompanying email that the first 6 or so cited references appear highly relevant to the disclosed invention. I forward the search report to the client, along with the necessary instructions and required disclaimers, and ask the client to review the search results and provide me with comments for discussion. Inevitably, the response in each case from the client is a simple two-word statement: “Nothing relevant.” That leads me to believe two things: 1) the inventor did not review the search report, or 2) the inventor is clueless. Given that in each case the inventor is highly knowledgeable, analytical, and understands the technology (whatever it may be) at a sophisticated level, I tend to think that it is the former – the inventor simply did not read the report, or only gave it a very cursory review, e.g., only the titles of the cited art were considered. Whatever the case, this is a huge mistake. I know it is tedious, but I need inventor/client input as to prior art for claim drafting strategies. I always encounter resistance as to this important, IMHO, step in the drafting process. Your thoughts? Does this happen to you?

  3. Gene Quinn March 15, 2010 10:16 am

    Richard-

    What you are experiencing is extremely common, at least in my practice. I think inventors frequently don’t read what is sent to them. When I send a search report I always send a letter explaining the next steps, asking them to review the search report, what I need back from them and a link to where they can access the full text of the patents found. In about 75% or more of the cases when I talk with them they ask where they can get the full text of the patents, and it becomes clear the feedback they provided was as a result of the 1 paragraph per patent presented that was illustrative of why it was selected for the report. So it seems they don’t read the letter I send.

    I will likely write about this more this week, but you are not alone on this one.

    -Gene