Inventor Pitfalls: What is the Patentable Feature?

By Gene Quinn
August 4, 2009

 

 

An updated version of this article is available at:

 

http://www.ipwatchdog.com/2013/08/17/patent-drafting-what-is-the-patentable-feature/id=44713/

 

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 7 Comments comments.

  1. Adam August 4, 2009 3:11 pm

    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?

  2. Tom Dickey August 5, 2009 7:36 am

    “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.

  3. Ron Reardon August 5, 2009 9:21 am

    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!

  4. Jane Doe August 5, 2009 2:34 pm

    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.

  5. Gene Quinn August 6, 2009 12:36 am

    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

  6. broje August 7, 2009 12:05 pm

    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.

  7. Debbie May 8, 2011 12:41 am

    Hello…is it possible to patent a marketing strategy that would breathe new life into an existing product? Thank you.