Steve Jobs exhibit at the USPTO, which opened 11/16/2011.
An exhibition showing the intellectual property behind Steve Jobs’ innovations opens to the public at WIPO today and will run through to World Intellectual Property Day on April 26, 2012. The exhibition ties in with this year’s World Intellectual Property Daytheme – Visionary Innovators.
“A visionary innovator is measured by the extent of transformation that their innovation achieves in society and the economy,” said WIPO Director General Francis Gurry. “Steve Jobs certainly had vision – his ambition to make digital technology simple and accessible gave rise to a new paradigm for the delivery of entertainment.”
Inventors and entrepreneurs who are looking to cut costs frequently want to do their own search. This is a wise first move, but you really need to be careful. It is quite common for inventors to search and find nothing even when there are things that could and would be found by a professional searcher. So while it makes sense to do your own search first, be careful relying on your own search to justify spending the thousands of dollars you will need to spend to ultimately obtain a patent. In other words, nothing in this article should be interpreted as me suggesting that inventors can or should forgo a professional patent search. There is simply no comparison between an inventor done patent search and a patent search done by a pro. Having said that, every inventor should spend time searching and looking if for no other reason than to familiarize themselves with the prior art. Of course, if you can find something that is too close on your own you save time and money and can move on to whatever invention/project is next. For more on patent searches generally see US Patent Search FAQs and Patent Searching 102: Using Public PAIR.
If you are going to do your own searching and find relevant patents you are going to need to learn some strategies, and also about the free tools that are available to you. If you are going to do your own preliminary patent searching you will want to take a look at the United States Patent Office patent search page. A lot of information can be found free, and the system is not terribly difficult to use. There is also an excellent Help Section on the Patent Office website to educate inventors on how to use the online search features. There is also another excellent (and free) site that you should use when searching – Free Patents Online. Whenever I search I always use both the USPTO and Free Patents Online. Perhaps the best thing about Free Patents Online is that they provide copies of the actual PDF documents, which contain all the images. Using the images on the USPTO website to obtain these full text PDF documents that contain the images is cumbersome to say the least.
Lately I have received a lot of requests from independent inventors who have drafted their own patent application and want me to review it prior to them filing it with the United States Patent and Trademark Office. The reason for having an attorney review a patent application drafted by an inventor are obvious — they want to make sure that they did everything properly.
The requests I have received lately go something like this: “I have drafted a patent application that is 30+ pages of text, plus claims and 10+ drawings. I would like to have you review the application before I submit it to make sure I haven’t made any mistakes. I also hope this review doesn’t take you more than 1 hour to complete.”One hour to complete? I don’t even believe it is possible to carefully and critically read and absorb an application of that length in 1 hour or less. This is an unrealistic request and one that is sure to turn off an experienced patent attorney who might otherwise be willing to help.
Washington – In celebration of its mission to recognize and foster invention, the National Inventors Hall of Fame has announced its 2012 Inductees. The inventors to be honored this year created remarkable innovations that include the now ubiquitous laser printer commonly found in the workplace, the thin-film head technology that has contributed to the success of the disk drive industry, and the first statin which pioneered the class of drugs targeted at lowering cholesterol.
This year’s Induction ceremony, sponsored in part by the United States Patent and Trademark Office, will take place on May 2 at the historic Patent Office Building, now the Smithsonian American Art Museum and the National Portrait Gallery, in Washington, D.C. At that time, the 2012 Inductees will be recognized for work such as the carbon dioxide laser which is widely used across diverse fields, the design of computer programming languages, and solar thermal storage innovations.
Lately I have been getting a lot of inquiries again from inventors who are interested in contingency fee representation. There is no such thing as contingency representation for purpose of preparing, filing and ultimately obtaining a patent. Patent attorneys and agents just don’t take contingency clients when the matter is patent procurement.
I write on this topic with some frequency, the last time being the spring of 2011. Please don’t take offense, this is a “tough love” article that may come across as a lecture. I have always believed that the overwhelming majority of inventors want to hear it straight and are looking for a road-map to get from point A to point B. The thing I preach all the time, and the theme of this article, is understanding the industry. The more you understand about what you should do, when you should do it and the economic realities facing the various players you will come in contact with the better off you will be to safely and successfully navigate the difficult waters of going from invention to money.
Rebecca (left) watches President Obama sign the America Invents Act into law.
On September 17, 2011, I attended the Signing ofthe America Invents Act at Thomas Jefferson High School for Science and Technology. A young lady named Rebecca Hyndman, who is a senior at the high school, introduced President Obama, which took place immediately prior to his signing the Act into law. Rebecca was chosen for this honor because at the age of just 14 she acquired a patent for her own innovation. Recently, I ran into her father, Kelly Hyndman, at another IP event. While discussing the AIA signing ceremony, I asked Mr. Hyndman if he would mind my interviewing his daughter for our blog. With his blessing I conducted the following Interview via email, which I received back from Rebecca at the end of November. Unfortunately, as many of you know, I had to have emergency spinal fusion surgery and was unable to publish her interview prior to now.
So (as Gene likes to say) without further ado, here is my interview with Rebecca.
The goal of a patent application is to teach others how to make and use the invention. But why would an inventor want to describe their invention to the point where others could simply copy them? The simple reason is that the US patent laws require such a description. The more complete answer is that such a description is required because in order for the government to grant a patent Congress has said that you must describe your invention so that others will be able to benefit from it, learn from it and advance it moving forward. The only way to do this is by describing your invention with great care and detail.
When you file a patent application it is always necessary to file an application that completely and clearly describes the invention so that others would be able to understand the invention. For many, particularly new inventors, business executives and newbie patent attorneys or agents, it is difficult to understand the so-called description requirement to patentability. It seems easy enough to comprehend as a general matter, but it is overly simplistic to merely say that a patent application must describe the invention. Those who fall down with respect to this adequate description requirement do so because they do not have a full conceptualization of what it is that they have as a protectable invention.
As we rapidly move forward toward Christmas the holiday season is more and more on my mind. As I started contemplating what to write my mind wandered to a topic I have wanted to write about for a while, and which seems particularly appropriate at this time of year. Board games. I have so many good memories of receiving various board games as gifts over the years, particularly at Christmas. Santa Claus always knew that I enjoyed playing board games, so every year there was at least one under the tree.
It might come as a surprise to some that board games are patentable, but they are indeed. Processes have always been patentable and at its core a board game is just a method of playing by a predetermined set of rules. The goal is to crown a winner and sequential and repeatable steps are engaged by two or more players. Board games are definitely patentable, provided of course they are unique. I won’t spend time discussing whether a board game is unique, but rather will assume that to be the case. It is, however, always wise to first do some kind of a patent search to verify that you are not wasting your time and money following a path that will not likely lead to a patent being granted. For more information on patent searches see Patent Search FAQs, Patent Searching 101and Patent Searching 102.
You can see my herniation right in the middle of this image of my MRI.
Last week I learned that, after unsuccessful treatments of physical therapy, chiropractic care, massage therapy and steroids, I am going to need to have neck surgery, which is scheduled for Thursday, December 15. The surgery, called Anterior Cervical Discectomy with Arthrodesis, is necessary to correct advanced Cervical Spondylosis, severe disc herniation, significant spinal compression, moderate bilateral C6 Foraminal Stenosis and severe Osteoarthritis. So for us non spinal surgeons and doctors what that means is I have advanced herniation of my disc at the C6 level which has caused significant compression of my spine and a moderate pinching of my nerve. So why am I sharing this personal challenge with the readers of IPWatchdog?
After meeting with my doctor, discussing the results of my tests, reading through all of the documentation and talking to my mother who had a similar surgery in 2000, I realized that there have been so many medical breakthroughs over the years. These medical breakthroughs make surgeries like this possible and in many cases with far better outcomes than in years passed. So I thought I would write about some of those revolutionary technologies and the Hall of Fame inventors who were responsible for them.
There is a great misunderstanding among many inventors and entrepreneurs regarding what many simply refer to as a “provisional patent.” The first thing that needs to be said is that there is no such thing as a “provisional patent.” Instead, what you file is called a provisional patent application. Like any other patent application it is effective to stop the clock relative to so-called statutory bars and immediately upon filing a provisional patent application you can say you have a “patent pending.”
A provisional patent application must be understood as nothing more than the first step toward receiving a patent. Ultimately you will need to file a nonprovisional patent application in order to obtain a patent in the United States. Still, there are substantial benefits to beginning with a provisional patent application but, as with most things in life, there are pitfalls that can and do trap the unwary and unknowledgeable.
On Wednesday, November 16, 2011, I will be speaking at the Entrepreneur’s Club of Dubois, Pennsylvania. The topic is Invention Services: Finding Valuable Services & Avoiding Scams. With that in mind, as I prepare my presentation and discussion materials I thought it might be useful to explore the topic with an article.
The unfortunate truth is that many inventors and entrepreneurs have had their share of difficulty with the various invention promotion companies out there. You have probably seen them advertised on television, usually in the extremely late night or extremely early morning hours. They promise free information, and tell you that they will help you patent your idea, make your invention and/or market your product. Many inventors and entrepreneurs have learned the hard way that many of these companies talk big and perform little, but sometimes charge exorbitant fees.
If you think the title only raises a wild possibility, consider what happened in a recent case decided by the Federal Circuit.  After being sued for infringement, the defendant had the ex-wife of the inventor of the patent-in-suit sell to it any interest she had in that patent. The defendant argued that as a result there could be no infringement, both because plaintiff lacked standing and because the defendant had acquired an undivided interest in the patent.
It almost worked.
The Federal Circuit stated that under California law the patent was “presumptively community property in which [the wife] had an undivided half interest.” Fortunately for the accused infringer, however, the wife had not listed the patent as community property when she was divorcing. Accordingly, the court held that res judicata precluded her from arguing that she in fact had an interest in the patent, and so that meant the defendant had acquired nothing from her.
In my experience, the passion to invent is stirred by two things: dissatisfaction with an existing product or service (i.e., too large, too slow, too expensive, too difficult to use), or a dream and desire to create something entirely new, a product or service that will augment humanity’s capability to reach farther, move faster, aggregate and analyze all sorts of data, or bring together pieces and form a whole that is greater than the sum of its parts.
Over my career I have been a named inventor on 147 U.S. patents. Over my career I have developed a process for identifying consumer needs and creating unique, patentable solutions that are relevant in the marketplace. I call this the Eureka Method. The Eureka Method is a mental discipline that can be learned and practiced to help you produce a Eureka! moment. You may call it an epiphany or a flash of insight, brilliance, or creative genius. It’s that moment when an inventive solution finally crystallizes in your imagination. I call this critical event a “Eureka! moment” in reference and tribute to Archimedes who had been wrestling with the problem of certifying a goldsmith’s claim that the crown he had made for the king was of pure gold. Upon solving the problem Archimedes exclaimed, “Eureka!” Translated, the Greek word means “I found it!” He had his solution and I found the title for my book.
Over the past several months I have received a number of inquiries from inventors who set out to draft their own patent applications. The inquiry typically goes something like this: “I have a draft patent application and I would like to get an attorney to review and make any necessary changes before I file.” This is quite a reasonable request, and in fact a very good idea. I have encouraged this myself on numerous occasions, but now find that a bit of clarification might be useful.
It is certainly true that once you file a nonprovisional patent application your ability to make additions to the application has largely ceased (although you can add claims if the original filing describes what you seek to add). Even if you are filing a provisional patent application, while you could always file another provisional patent application to correct mistakes, the first filing is only as good as what is disclosed. Taking the first filed patent application seriously and making sure it has all the necessary disclosure is absolutely critical. Therefore, having a professional review your patent application before you file is definitely wise. The question, however, is when do you seek the assistance? Frequently many inventors wait too long before they seek help, which means much of what they have done is unusable and various levels of difficult (or impossible) to work with.
Periodically I write articles aimed at giving inventors some information about preparing a patent application, such as primers on writing patent claims, writing method claims, describing your invention completely and language difficulties, to name but a few. Every time I do this I cringe a little out of fear that inventors will get the wrong idea. For the typical inventor who might have several inventions over the course of a lifetime. This level of experience makes it unrealistic to believe you can do it yourself without any assistance and do it just as well as a patent attorney or patent agent would or could.
I like drawing an analogy to the commercial where the man is sitting at the table with a butter knife and the surgeon on the phone is telling him how to perform the surgery. He asks: “Shouldn’t you be doing this?” A wise question for sure! Preparing a patent application on your own is a lot like doing surgery on yourself. You are going to make mistakes, it is not a good idea and only in the most extreme of circumstances should it be attempted.
Having said this, if you have no other choice — for whatever reason — you should be armed with the best information you can obtain. For that reason I write these articles, and I also write because I am convinced that the more you know the better you will be as an inventor. So even if you never plan on representing yourself if you understand the common mistakes and likely pitfalls it will make you a better consumer of legal services, and it will make you a better inventor because you will learn what is important and why, thereby giving your patent attorney or patent agent far more useful information than you otherwise would.
How to Write a Patent Application is a must own for patent attorneys, patent agents and law students alike. A crucial hands-on resource that walks you through every aspect of preparing and filing a patent application, from working with an inventor to patent searches, preparing the patent application, drafting claims and more. The treatise is continuously updated to address relevant Federal Circuit and Supreme Court decision impacting patent drafting.
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