Inventor Pitfalls: What is the Patentable Feature?
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Written by Gene Quinn Patent Attorney & Founder of IPWatchdog Zies, Widerman & Malek Blog | Twitter | Facebook | LinkedIn Posted: Aug 4, 2009 @ 11:58 am 
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As you can probably imagine, over the years I have had the opportunity to work with many inventors. In fact, over the years I have worked with or advised literally thousands of inventors, the overwhelming majority of which were first time inventors, or inventors who were for the first time attempting to protect their own invention for their own company. I have found that those who are serious are capable of meaningfully participating in the preparation of their own patent applications. These folks are motivated, but they simply do not know what to do, or exactly how to do it, and they are afraid to mess things up by trying to do something themselves that is over their head, not because they are not smart enough, but rather because this patent stuff is really hard and very complicated. As I tell students in the patent bar review course I teach, you could not – drunk and on a bet – come up with a more screwy patent system than we have in the United States.
The rules at times seem arbitrary, and show little evidence of an overall thoughtful consideration. For example, why would you ever set up a regime where there are different time frames for completing various mandatory responses for free, but also having the ability to obtain automatic extensions of time, which can be purchased in one month increments up to 5 months, but you cannot go beyond six months to do anything other than two things (i.e., responding to a Notice of Missing Parts and filing an Appeal Brief). It almost seems that some rules have been created for the purpose of tripping up users of the system. That being the case, should inventors be going solo and trying to protect their own inventions? No. That would be similar to trying to remove your own appendix. If you can at all get to a hospital you really should not be removing your own appendix, but if you are lost in the woods and you are facing certain death if you don’t act, then act. Similarly, if you have any options you should be pursuing those options and not blissfully filing and prosecuting your own patent application.
All too often inventors feel that the assistance of a patent attorney is really not necessary. That is an opinion shared by many unfortunately. It is not unfortunate for the patent attorney really, but rather it is unfortunate for those who hold the belief because invariably those who represent themselves obtain rights that are so narrow that they are practically useless. Never forget that the Patent Office’s job is to examine what you present, not to help you obtain the broadest protection possible, or even protection that would be at all useful. On top of that, there are many things that can be hopelessly compromised at the outset of the patent application process, which will make it impossible to obtain a patent of any kind, or at the very least force you to file another patent application to correct the deficiencies present. If you do have to re-file you will then be giving up your original filing date, which can prove fatal.
One of the most common mistakes I see deals with the inventor being unable to describe what they feel is the patentable feature and/or unique contribution their invention is making to the relevant technology field. This is why doing a patent search is absolutely essential. Until you understand what is known you have absolutely no way of knowing whether a patent is likely to be obtained, and everything is describes with equal importance when there are almost certainly certain features that deserve greater attention because that is where the patentable invention resides.
Frequently I hear from inventors that they have never seen anything like their invention on the market, so they know there is nothing that could stand in their way of obtaining a patent. While this may seem logical, it is simply not true. There are a good number of reasons why something may have been patented, or a variation that is too close for comfort may have been patented, and still the product not reach the market. For example, many times independent inventors will obtain a patent and then run out of money or lose interest and, therefore, the product never makes it to the market. Then when others come up with the invention themselves, or learn of the now defunct patent, they choose not to pursue it because without being able to protect the invention with a patent as soon as the product comes to market it will be copied by others if it is successful. Due to the laws of nature, and the reality that there are only a finite number of solutions to any particular problem, every generation invents, or re-invents, many of the same things. Thus, it is always wise to do a patent search to start the process. I guarantee a patent search will uncover inventions that you did not know were out there. With over 7.5 million utility patents having been granted in the U.S. and well over 1 million pending patent applications, there is always something that can be found that at least relates in some ways. You are always better off knowing about those related inventions. This allows you to determine whether moving forward makes sense, and it also allows for a patent application to be written to accentuate the positive, and likely patentable, aspects of an invention.
When filing a patent application you should always specifically and explicitly mention that which sets your invention apart and will indeed make the invention patentable. As with everything else in patent law, you do need to be careful. You should stay away from saying things like “the only thing that makes the present invention unique is…” Rather, consider saying something like “one of the things that makes the present invention unique is…” The second alternative is only slightly different, but leaves the door open for you to argue later that there are other aspects that make the invention patentable. The first alternative could be construed as an admission and very difficult, if not impossible, to get around. In essence, if you say something simple, and seemingly harmless, you could be giving the Patent Examiner the ability to use your own words against you.
The moral of the story is to be careful. Getting help from a trained patent professional is the best and safest way to proceed. If you do not have the funds available to seek competent professional advice you should really ask yourself whether you should be pursuing the patent path. We all have dreams, and sometimes we take risks, but the invention to patent to commercial success path can be long, time consuming and expensive. I dream big myself, so I am not about to tell others not to follow their dreams and believe in themselves and their inventions, but it is best to go into the process understanding what lies ahead and pursue moving forward in a financially responsible way.
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About the Author
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Eugene R. Quinn, Jr.
President & Founder of IPWatchdog, Inc. US Patent Attorney (Reg. No. 44,294) Zies, Widerman & Malek B.S. in Electrical Engineering, Rutgers University J.D., Franklin Pierce Law Center L.L.M. in Intellectual Property, Franklin Pierce Law Center Send me an e-mail  |
Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Known by many as “The IPWatchdog,” Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.
I’ve heard that judges sometimes give people a break, especially on minor procedural issues, if they are representing themselves in court.
Do you know whether or not PTO examiners do the same thing? Conversely, are examiners tougher on the inventor when the application is written by a lawyer? Or do get the sense that they pretty much treat every patent application the same, regardless of who is filing?
“Frequently I hear from inventors that they have never seen anything like their invention on the market, so they know there is nothing that could stand in their way of obtaining a patent. While this may seem logical, it is simply not true…”
Right on, Richard! A classic example is the chalcogenide “phase-change” nonvolatile computer memory, also known as the “ovonic” memory in honor of Stanford Ovshinsky.
Around 40 years ago, Ovshinsky noticed that there was nothing like this invention on the market, so he filed a patent application for it, then another, and another and another. Dozens of other engineers have by now filed hundreds, perhaps thousands, of patent applications for ovonic memories, with no marketable version yet available.
Amen, amen and amen! Every newbie inventor should read, and re-read this. It should be required reading in schools, colleges, coffee shops and inventor meetings. Great job!
Adam, the examiner is supposed to treat every applicant equally. The examiner can answer questions about appropriate procedure but will not have the authority to “bend” any of the rules. While you will always hear more about the exceptions rather than the vast majority, examiners are trained to provide appropriate assistance to pro se inventors; however, the examiner must take care not to cross the line into advising the pro se inventor regarding his/her intellectual property rights. One of the main reasons to hire a professional to protect your intellectual property rights is the same reason Gene mentions above: the knowledge required to deal both with the procedure and legal implications of specific actions by the inventor during the prosecution of the application is extensive and difficult, if not impossible, to learn in a short period of time. Another reason is that if you accept bad advice from a person with whom you have no professional, contractual relationship, and you suffer some damage (such as loss of your property rights), you have little or no legal recourse. However, professionals who hold themselves out to the public as persons for hire to provide advice and/or services carry malpractice insurance so that if you receive negligently bad advice from an agent/attorney, you may be able to obtain damages. The examiner has a duty to both the public as well as the applicant and if the examiner advises an applicant on his/her property rights, the examiner now has committed a conflict of interest as well as the inventor has received advice for which there is no recourse. This is not to say that when an examiner identifies patentable subject matter in an application that the examiner is advising the inventor. This is a fine distinction that may not be easily distinguishable on first glance. So you see, just my answer has probably raised more questions than answers and shows you why it is often in an inventor’s best interest to seek professional assistance. I guess I will just finish by saying that intellectual property is no different than personal property to people; you should treat the property in a way based on the value that it has to you. If it is of great value to you, treat it as such and secure the services of a professional.
Gene, I agree with much of what you write. However, I would respectfully disagree with the tone with which you often write. I realize that this is your blog and your opinion and you are entitled to such. However, I would remind you of your recent post where your friend Bob Spar noted that you were not contributing to the solution. Tone matters and yours implied that the patent examiner sits ready to “trap” the inventor. Examiners have a lot of challenges and to be continued to be viewed with the hostility that they get 1) immediately for being a “government employee” and 2) by being a patent examiner serves only to widen the divide.
Jane-
I really don’t know what to say to you because I do not see anywhere in this post that I have any tone problems, or where I criticize patent examiners, or do anything to “widen the divide.” Whether you choose to agree with me or not is up to you, but what I say is exactly right. The patent system is configured so that the inventor or the inventors representative have the ability to describe their invention in their own terms. The examiners review this and then examine the patent. If you say things that make admissions the examiners can and do rely on that to fashion obviousness arguments. I did not suggest or imply that patent examiners trap inventors, but the truth is that examiners can and do use what you say against you. This is not new, it is actually in the MPEP and examiners are not doing anything wrong buy relying on what the applicant says in the application or in any filings. Nevertheless, it is important for inventors to know this. So while you think I am not being helpful, I could and will say that if you are not willing to acknowledge that this happens then you are misleading inventors into thinking they can navigate these extremely complex waters on their own. That is simply not true, it leads to weak rights with unnecessary limitations and that does not serve the independent inventor community.
-Gene
The MPEP instructs Examiners to write a claim for a pro se inventor if the Examiner thinks that there is any patentable subject matter disclosed. I have not heard of any specific case in which an Examiner has actually done that.
My ten years of experience preparing and prosecuting patent applications leads me to believe that a typical Examiner would be unwilling to take the risk of writing such a claim. Additionally, if an Examiner were to do such a thing, I imagine that the Examiner would be overly cautious and that the resulting claim would be so narrow in scope as to be practically worthless to the pro se inventor. In other words, it would likely contain so many unnecessary limitations that a competitor would find it trivial to steal the pro se inventor’s income stream by marketing a product that is nearly identical to that claimed, but that leaves out an unnecessary or optional feature, or replaces that feature with a different feature.
My advice would be to involve an experienced patent professional who knows how to identify the essential elements of the invention and fight for allowance of a claim that contains limitations to only those essential elements. In other words, a good patent prosecutor will “think like an infringer” when preparing and prosecuting the patent application. An Examiner, on the other hand, will think like an Examiner.
Hello…is it possible to patent a marketing strategy that would breathe new life into an existing product? Thank you.