I am frequently told by inventors that they have done a patent search and cannot find anything that remotely resembles what they have come up with. While there are many reasons for not finding prior art, just because you do not find prior art does not mean that there is no prior art to be found. In fact, it would be extremely rare (if not completely impossible) for there to be an invention that does not have any relevant prior art. Said another way, unless you have invented something on the level of an Einstein-type invention there is prior art, you just haven’t found it.
Prior art is probably best understood as information that can be used by the patent examiner to reject claims in a patent application. This information is most commonly prior publications, such as technical articles, issued patents or published patent applications. It is also possible for prior art to consist of actions, such as a sale or public use prior to a patent application being file. But for the sake of this article let’s assume that the prior art we are talking about are issued patents and published patent applications.
It is absolutely critical to understand that a reference, such as an issued patent or published patent application, does not need to be identical to an invention in order for the reference to qualify as prior art. A reference can be used as prior art for whatever the reference explains. For example, if you design 5-wheel transportation device you are going to have to distinguish all other wheeled transportation devices, regardless of whether they are identical. So if a patent examiner finds a 4-wheeled transportation device that will be used against you as prior art. It will be up to you to explain why your 5-wheel device is not obvious in light of the 4-wheel device. The critical question will be this: Why wouldn’t it have simply been obvious to simply add another wheel?
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. Such inventors are highly motivated, but they just don’t know what to do, or exactly how to do it. Frequently 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 quite complicated.
The patent rules at times seem arbitrary (because they are) 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 of varying length? For example, you will have 3 months to respond to an Office Action issued by an examiner, but that can be extended for another 3 months. But if you get a Notice of Missing Parts you will get 2 months to respond, but that could be extended up to 5 months. Talk about arbitrary lunacy! How is an independent inventor supposed to navigate such a mindless maze?
For most inventors a patent search should be the first step in the patent application process. The reason is simple. A patent search is used to determine whether the time and expense of moving forward with a patent application is a worthwhile endeavor. The patent process can be expensive, so the last thing you want to do is spend a lot of time and money preparing and filing an application when there is easy to find prior art that will likely prevent a patent from issuing. Likewise, a patent search can give you a good idea about the likely scope of any patent claim that you may be able to anticipate. If it looks like you will only get an extremely narrow claim it might not be in your best interest to invest in the patent application. You can then move on to your next invention, and inventors always have a next invention.
Still further, a patent search will 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.
Between the legacy issue of bad patents, patent auctions and the many who purchase patents, what has started to happen is that the patent system rewards those who have the finances and ability to game the system. But the problem is extraordinarily complex. What is clear, however, is that the enforcement of bad patents is a problem within the patent and innovation industry.
But at the same time it would really be GREAT if the media and anti-patent community would get a clue and understand that the problem with bad patents is largely a legacy issue. Those that say that the United States Patent and Trademark Office continues to hand out dubious patents like candy are flat wrong. The bad patents that we witness being used in unsavory shake-downs have not been granted over the last few years, but rather were granted many years ago, under a different patent regime and when there was little findable prior art for patent examiners to use.
Those that pretend that bad patents issue today by the dozen and for a dime are living in a fantasy world that does not approximate reality. Yet the misinformation continues, undaunted by reality. So if reality doesn’t support the mountains of misinformation about the patent system and how it operates today, what is going on?
Whether you are an independent inventor, an fledgling entrepreneur or a seasoned inventor who is going out on your own for the first time, the best thing you can do for yourself is to become familiar with the concepts and procedure associated with protecting your inventions. Obtaining patents is not easy for the uninitiated, and without some familiarity you will be wandering aimlessly and wholly incapable of making sound business decisions. Simply stated: Inventors who are completely unfamiliar with the patent process also won’t be able to help in any meaningful way with the patent process. This is far more tragic than you might suspect.
Sure, if you can afford to you should hire a patent attorney to assist you. The patent attorney is there to, among other things, drag information about your invention out of you and translate it into the archaic legalese used in patent applications. The job of the patent attorney is to present your invention in a way that is most likely to accentuate the positive — namely the core uniqueness of your invention that will most probably lend itself to being determined to be patentably distinct compared with other inventions.
Even when hiring a patent attorney inventors still need to be engaged in order to give the patent attorney the best information available about the invention. This seems simple enough, but so many inventors fail to understand what information is important and why it is necessary. If you don’t understand the “why” you will you will almost never be able to provide all the information necessary.
While I don’t mean to imply that inventors are children, a perfect example of what I’m talking about comes from when parents attempt to teach their children not to touch the stove. Why? Because it is hot, of course. But does the child really understand that? No, not until they touch it anyway and connect “hot” with the pain they experienced. Experiential learning is formative for children, and in my experience the most powerful, formative type of learning — even for adults!
Article One Partners (AOP), a leading crowdsourcing patent research firm, just published a unique call to action on its blog. In an article titled Improve Commercial Agriculture with Seed Sampling, which published on Tuesday, November 20, 2012, AOP says they are looking for “farmers, botanists, and other agricultural professionals” to submit prior art for a research study that will remain open through December 11, 2012. The study in question relates to an automated seed sampler and method of sampling seeds.
While AOP researchers will submit patents and published patent applications for some of the studies, what makes AOP unique is that with over 25,o00 active researchers around the world they have a knack for finding those hard to locate references — so called non-patent literature, or NPL for short. Typically this non-patent literature comes in the form of journal articles or a Ph.D. thesis, for example.
With so many researchers, and more than 50% having advanced degrees, you can start to understand that frequently researchers will have knowledge of an important reference at the ready with little or no searching actually required. So a significant part of the AOP model is to push studies to highly educated individuals who may well have peculiar knowledge related to the technology being searched. That plus a little old fashion research multiplied by 25,000 leads to great results.
Looking for prior art can be a little like looking for a needle in the proverbial haystack. You set out looking for the closest references, which typically comprise patents and various printed publications. But where are you going to look? There are plenty of databases one can access, but each database comes with inherent limitations. You can only find what is within that particular database. While you can string databases together to do a more comprehensive search, no patent search is ever going to be able to search for each and every reference known to exist.
When you are doing a patent search to determine whether it makes sense to spend the time, money and energy to move forward with a patent application you expend an amount of money that is a fraction of the amount you will likely spend on the overall pursuit of the patent. For example, when we do patent searches for software related inventions we charge $2,500, which is roughly 10% of the overall cost of obtaining a software patent from start to finish. Can you find everything for $2,500? No, but you can get a very good sense of what else is out there and whether there is any realistic likelihood that a patent could be obtained.
In any event, and for all to see my diminished powers of prediction, AOP, the world’s largest patent research community, has passed another significant milestone. This time the company has passed the $3 million threshold in financial rewards paid to its global research community. Actually, the milestone was reached at the end of August 2012, but AOP only officially made the announcement last week. In fact, as of the writing of this article the reward calculator found prominently on the AOP homepage shows that some $3,371,500 in reward money has been paid to its community of crowdsourcing researchers.
The announcement that Article One has reached the $3 million milestone comes only six months after reaching the $2 million milestone, which took place at the beginning of February 2012. It took AOP 11 months to the day to reach the $2 million milestone, and since they opened for business in November 2008 it took approximately 27 months to pay out its first million in reward money. What this shows is that AOP is gaining steam, constantly shaving months off the time it takes to reach the next milestone award figure.
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.
Without hesitation I recommend One Simple Idea and think it should be required reading for any motivated inventor. There is so much to like about the book and so much that I think author Stephen Key nails dead on accurate. The book is educational, information and inspirational. For the $14 cover price it is essential reading.
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