Posts Tagged: "independent inventors"

It can be enormously difficult for inventors to describe their own inventions. This is true not because the inventor doesn’t know what they’ve invented, or even because the inventor is not in the best position to explain the invention. Indeed, the inventor of a new and useful invention is absolutely in the best position to describe the invention… Inventors are very good at describing how their inventions can be used and why their invention is superior from a usability standpoint. The trouble is describing how an invention can be used, while a prerequisite, will not distinguish a tangible invention from the prior art.

Yesterday, a group of dedicated inventors took to the steps of the United States Supreme Court in order to protest the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO). As the Supreme Court heard oral arguments in Oil States Energy Services, LLC v. Green’s Energy Group, LLC, and SAS Institute Inc. v. Matal, the inventors protest focused on the erosion of patent rights and the need for patents to be considered property rights.

The purpose of the written description requirement is broader than to merely explain how to make and use the invention, which is the subject of the enablement requirement. Rather, to satisfy the written description requirement the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention… While the written description is just that – written – having multiple drawings that show the invention and various aspects of the invention from a variety of viewpoints can be extremely helpful. This is because every figure should be described with at lease one paragraph of text, frequently more.

The enablement requirement is specifically aimed at ensuring the claimed invention is described with sufficient detail so the relevant person of skill in the art or technology area will understand both how to make and use what has been actually claimed in the patent… While there is no particularly concrete and useful definition for what specifically constitutes undue experimentation, the requirement generally mandates that the description explain the invention so that it could be made and used without individuals having to go through a trial and error process in order to figure it out for themselves. In other words, the invention must actually teach so the invention can be achieved.

Although there is a popular misconception among inventors new to the field of inventing, the United States Patent and Trademark Office is never going to grant a provisional patent. A “provisional”, as it is sometimes called, is a type of patent application. A provisional application for a patent can be filed at the United States Patent and Trademark Office in order to establish priority of invention, which is critically important given that the United States is now a first to file country. Although the U.S. is not a pure first to file country it is safest for inventors to assume that first to file laws do set up a race to the Patent Office. Therefore, it is essentially in virtually all cases for an inventor to file a patent application first — before anyone else who may also be working on the same invention. This is where a provisional application for a patent can be extremely useful.

The point here is you need to be mindful that patent practitioners are frequently on guard when dealing with independent inventors. As with virtually everything in all walks of life, the more you know in advance the better prepared you can be… The patent attorney or patent agent you hire is there to represent you. They are not the inventor, and they need your assistance. If you really have an invention you know the invention better than anyone. Cooperation is critical. Communication is critical. The opportunity to establish a working relationship starts with the first meeting or contact, hence the need to be prepared.

You absolutely want to file a patent application with a description that is a mile wide — that part is good — but you also need to also drill down far more than one inch deep in order to teach the various nuances of at least the key aspects of the invention. And there are always nuances that can go a mile deep for any and every invention, no matter how simple it may seem to you as the inventor… How do you know how far you need to go? You really should strive to remove doubt and questions from the reader’s mind. While a certain amount of experimentation is allowable, and patents do not need to contain blueprint level detail, ask yourself whether a knowledgeable reader would know from what you’ve written enough to understand your invention without asking additional questions. If answers to additional questions would be necessary to fully comprehend the invention then answer those questions.

The numbers are stark. As recently as 1990, individual inventors were granted 17 percent of all patents. By 2000, they received 12 percent and only 6.8 percent in 2010. In 2015, individual inventors were granted only 5.8 percent of all patents. In sum, if there is any example of a nation squandering its technological seed corn, this systematic weakening of U.S. patent protections for some “guy in the garage” is it. The great irony is that most of the people behind the screen in all this got their start in that same “garage.” They know this all too well, which is why they’re relieved to see the garage all but Closed for Business.

Inventing success for young inventors comes when they are passionate, inspired and dedicated, which is not unlike success in all areas of life… While passion is required, knowledge is also absolutely necessary. A true inventor will learn everything they can about each aspect of the field, from the technology, to the business, to the competition. You must become an expert on your invention and on the field you’ve chosen to pursue.

Brainstorming, whiteboards and a 3D printer constantly humming. The Invention Lab of Enhance Innovations is always a flurry of innovative activity. If you are an invention nerd a trip to Enhance Innovations is an opportunity to really geek-out… For me, the real interesting piece of what Enhance does is their work with concepts. Many times inventors will come to me with more than an idea but less than an invention, which can be a real valley of death for inventors to navigate. So many good ideas get trapped in the uncomfortable space between something more than an idea and something less than a full-blown tangible invention.

Patent searches are excellent learning tools because they give you an opportunity to discover which aspects of your invention are most likely to contribute to patentability, thereby allowing the description in any filed patent application to focus on those aspects most likely to contribute to patentability. Without a patent search you would just be describing all the various aspects of your invention as if they are equally important, which we know won’t be the case… Not only do patent searches allow for focus to be placed on what is different and most likely patentable, but if knock-out prior art is found then the expensive a patent application has been saved.

At the request of the Federal Trade Commission, the United States District Court for the Southern District of Florida has issued a preliminary injunction against World Patent Marketing, an invention promotion company the FTC has charged with being nothing more than a scam. “The record supports a preliminary finding that Defendants devised a fraudulent scheme to use consumer funds to enrich themselves,” concluded United States District Judge Darrin P. Gayles. “Accordingly, the Court finds a preliminary injunction is necessary to maintain the status quo pending a trial on the merits.”

I am frequently asked by inventors whether they should file a patent application before seeking to license their invention. Some even ask whether they should first obtain a patent before they submit the invention to a licensing company… I always tell inventors and entrepreneurs that the best invention to patent is one you will make money with regardless of whether you ultimately obtain a patent. After all, if there is not a market for the invention why would you ever consider spending the time and money to obtain a patent? The goal is to make money and investing in a business or to obtain a patent makes sense only if there is a reason to believe more money will be made than spent.

Patent reformers argue that too many patents can hurt business, and low-quality patents cause problems. Their lobby activities have successfully persuaded the Congress to pass the AIA, with the primary purpose to raise patent quality…. The patent office uses all patent rules in an even-handed manner to all applicants. So, it treats corporate applicants and U.S. individual applicants in the same way: entering frivolous rejections, using one-way bias high patent quality standard, giving the same opportunity to demand inter-party review (by paying $23,000), and affording the same opportunity to defend a challenge to patents (which would consume hundreds of thousands of dollars of attorney fees). Nobody can question those rules.  However, this money-can-buy fairness practices have distorted technological landscape. Frivolous rejections can force individual inventors to abandon their applications, but do not affect giant foreign corporations; outrageous fees and maintenance fees can discourage individual inventors, but will not affect foreign corporations; and the right of harassment can be used by all corporations but not U.S. independent inventors.

Intellectual property is distinguished from “real property” because the property itself exists in our heads and needs to be “created” through a process of description and examination. If approved and granted, your property is described in a proxy form such as a patent, copyright registration, or trademark registration. There is no livery of seisin ceremony. You cannot walk the property line of your patent or plant a garden in your copyright registration. To get a patent, you have to create.