Posts Tagged: "independent inventors"

Patent attorneys darn near need to be magicians when it comes to language, which is the primary tool of our craft. Picking the right word and the right way to say things is critical. Even more critical, perhaps, is not saying the wrong thing, or worse yet saying something that is clear but not what you intended. Today I thought…

It is important to understand what a provisional patent application is, what benefits are provided and perhaps most importantly what a provisional patent application is not. First and foremost, there is no such thing as a provisional patent. It is absolutely critical to understand that a provisional application will never mature into an issued patent! Ultimately, if you are going to want to obtain a patent you will need to file a non-provisional patent application. Thus, a provisional patent application is best viewed as an economical first step on the path to a patent.

While surveying the market is a wise first step, frequently there are patents lurking that have simply not been used to develop commercial products. This can be for a variety of reasons, and makes patent searches critically important. One common reason a patent may exist but the product may not be on the market is because the previous inventor was simply unsuccessful in taking the patent to the market. This can happen for a variety of reasons. Maybe the product was ahead of its time, maybe the inventor ran out of funds and the project became abandoned, perhaps the inventor did not have the right connections or stamina necessary to see the project to conclusion. Whatever the case may be, there can be a variety of reasons why a patent has been applied for or issued on an invention that never made it to the market.

The use of relative terminology, which are short-hand terms that express a certain similarity, are quite common in every day conversation, but are not always appropriate for patent applications, or more specifically for patent claims. This is true because patent claims must particularly pointing out and distinctly claiming the subject matter invented. Therefore, the use of relative terminology in patent claims should be carefully considered. Traps do await the unwary.

One of the biggest mistakes I see inventors make is they spend too much time talking about what the invention does and very little time explaining what the invention is and how it operates to deliver the functionality being described. Many inventors also make the mistake of only very generally describing their invention. If that is you then you are already light on specifics, which is extremely dangerous in and of itself. But the other problem I want to discuss is the flip side of the coin. It is important to be specific, but not just specific.

In short, a concise description of an invention is an inadequate description of an invention, period. The goal has to be to provide a full, clear, exact description of the invention in a way that particularly points out and distinctly identifies what the inventor believes he or she has invented and wants protection to cover. Even knowing what the legal standard is for the description that must be present in a patent application does not ensure that those without training will be able to satisfy the requirement. The blame for this goes to the way most people describe things as they engage in ordinary, everyday communications.

When people say that inventors do not need to start with a patent application and can wait to file I cringe. It is not that this is universally bad advice, but it certainly comes with a lot of risk, even more risk now that the United States is a first to file country with only an infinitesimally small grace period remaining. Today it is imperative that the U.S. first to file laws be interpreted to mean file first before you disclose anything, demonstrate your invention publicly or offer it for sale. The risk of waiting to file a patent application is simply too great and may forever foreclose the ability to obtain a patent.

This so-called adequate description requirement pertains to the level of description that must be included in the ”specification,” which is most typically defined as that part of the patent application that is not a drawing figure and is not a claim. This is the most common definition for the term “specification” because if and when you need to amend an application there are three separate sections for an amendment, one for amendments to the specification, another for amendments to the claims, and a third for amendments to the drawings. When you get to the point of the process where you will need to amend the application (which goes beyond the scope of this article) you will amend anything that is not a claim and not a drawing under amendments to the specification.

One excellent way to make sure you are including an appropriately detailed description that treats a variety of variations and alternatives is to have many professional patent drawings. You should then describe what each drawing shows. The quickest way to explain what you want to do is by way of example. The popular children’s song “Skeleton Bones” explains how all the bones in the body are connected. The leg bone is connected to the knee bone, which is connected to the thigh bone, which is in turn connected to the back bone, which is connected to the neck and so on. Notice that this is a very general overview of how the bones in the body are connected. This is a good first step, but there is a lot more that can and should be written.

Warren Tuttle: ”Good innovation is innovation that consumers respond to and purchase and appreciate, say good things about it and it survives. Bad innovation, you know the 95% of the crap that’s out there is stuff that people just throw up and tried to be creative and it doesn’t have any resonance. At the end of the day the consumer drives things and there’s a whole bunch of ways to approach that consumer but typically it takes a combination of an idea that’s protected, because in the beginning you need to get off the ground and there needs to be financial incentive for someone, and it also needs the entrepreneurship necessary to build the business.”

As Key works with inventors he coaches, who he refers to as students because he teaches them how to do much of the work for themselves, he explained that increasingly he is seeing interest on the part of companies in licensing inventions without a patent attached to the product. ”What we have noticed is that companies say they care about patents, but the bottom line is really about speed to market and how fast they are going to be able to sell them,” Key explained. ”The life cycle for products is so short.”

In order for a patent applicant to satisfy the utility requirement the claimed invention must be “useful” for some purpose either explicitly or implicitly. Utility problems normally arise in one of two scenarios. First, it is not apparent why the invention is “useful,” which can occur when an applicant fails to identify any specific and substantial utility for the invention or fails to disclose enough information about the invention to make its usefulness immediately apparent to those familiar with the technological field of the invention. Second, there are rare instances where an assertion of a specific and substantial utility for an invention is simply not credible.

The engine that made America a greatest economic power was a patent system that led to tremendous innovation by incentivizing entrepreneurial inventors.

The legal determination about whether an invention is obvious seems completely subjective and sometimes even arbitrary. In some technology areas nothing ever seems to be obvious, in other areas virtually everything seems to be obvious. This requires a patent attorney or patent agent to have familiarity with how patent examiners interpret the law of obviousness in a particular innovative area. You might suspect that this would mean that for low-tech gadgets it is more difficult to describe an invention that is non-obvious; while in high tech areas it would be easier to describe an invention as non-obvious. That frequently isn’t the case though, which leads to even greater frustration for inventors.

In the past decade, the patent system has been turned on its head. Inventors are now villainized as cartoon characters called patent trolls simply because they assert their hard-earned patent rights against corporations who steal their inventions. These infringing corporations have cleverly cultivated the myth that all patent owners are patent trolls by engaging high-powered lobbyists and public relations firms to loudly attack inventors. This toxic concoction of myth, media and money has gagged opposing voices effectively creating political cover for the government to make rapid and fundamental changes to patent law that skew the field toward big corporations at the expense of inventors and small innovation companies, including those high tech start-ups that are responsible for creating high paying jobs.