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The Top 5 Things Inventors Do Wrong


Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog, Inc.
Principal Lecturer, PLI Patent Bar Review Course
Posted: September 19, 2008 @ 5:06 pm

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An updated version of this article is available at:

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

 

 

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Posted in: Educational Information for Inventors, Inventors Information, IPWatchdog.com Articles

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

6 comments
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  1. Is the provisional patent honored by the western European countries?

  2. 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. 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

  4. […] a comment was added to an older article titled The Top 5 Things Inventors Do Wrong, which said the following: Gene, I know this is an older post, but I couldn’t help but add a no. […]

  5. […] The Top 5 Things Inventors Do Wrong […]

  6. […] in order to try and explain to inventors what it is that they need to know before they make an enormously costly mistake.  For better or for worse, there is a popular conception that patent attorneys and patent agents […]