Posts in Inventors Information

Patent Claim Drafting: Improvements and Jepson Claims

But how do you go about patenting an improvement? The first thing you must do is figure out what the advantages are over the prior art. You need to take a critical look at your own invention and identify that which distinguishes it over the prior art. You should absolutely focus on structure, not on the method of use. Differences in the method of use will only come into play if you are claiming a new and nonobvious method of using, which is typically not the case. In the overwhelming majority of cases you want to protect the device or apparatus, which makes use differences irrelevant.

Patent Searching 101: A Patent Search Tutorial

Once you receive manageable results you need to read the patents and see which ones are relevant. Try various search terms to make sure you are covering all possible descriptions of the invention. Along the way, as you read the patents and identify related ones keep track of the numbers and identify the US classification that relates to the type of invention you are searching. Upon identifying several US classifications that seem to relate to your invention, return to the Advanced Search Page and do a classification search. For example, again following our example, you may notice that classification 206/545 seems relevant. As it turns out, this classification relates to special receptacles or packages with an insulating feature. See US Classes by Number & Title. Therefore, it would seem that patents within this classification are potentially highly relevant. So return to the Advanced Search Page text box and enter “CCL/206/545”. This will search for all the patents classified in 206/545, which as of the time the search was conducted resulted in 144 US patents. You can also add to a classification search to narrow. For example, if you search “CCL/206/545 and SPEC/beverage”, you get down to 50 US patents.

Reviewing a Patent Application Drafted by an Inventor

With all of this in mind, like many others I tell inventors that if they are going to do it themselves they should consider getting a patent attorney to review their application before they file. Having said that, it is unrealistic to believe that a patent attorney can review what you have done in 1 hour or less. Furthermore, it is foolish to believe that an application reviewed for 1 hour or less will result in a work product that will be as good as if it were drafted by the patent attorney in the first place. If you want to do it yourself and have a qualified, experienced patent attorney review your work you should budget at least 6 to 10 hours of their time to review everything, critique what you have done and provide feedback and guidance for you to continue to build upon.

Women’s History Month: PTO Women’s Symposium in Shreveport

Later in the month in Shreveport, Louisiana, the USPTO will hold its 2nd Annual Women’s Entrepreneur Symposium. This event will take place from March 25 – 26, 2012, and is co-sponsored by the USPTO, U.S. Senator Mary L. Landrieu and Cedric B. Glover, mayor of the City of Shreveport. The event will take place at the Shreveport Convention Center, and the symposium has blocked rooms at the Hilton Shreveport. Our very own Social Media Diva™, Renee Quinn, will be speaking at the symposium on the topic of building relationships. The full title of Renee’s presentation is From Inventor to Entrepreneur: Developing and Leveraging Relationships to Drive Growth.

Why Patent Attorneys Don’t Work on Contingency

Having spent time as a litigator I know exactly what goes into taking a case on a contingency basis and you only take cases on a contingency when you know beyond a shadow of a doubt that there WILL be money ACTUALLY recovered. That is why it is perfect for personal injury attorneys. They can tell with great certainty, if they are being honest, if money will be recovered. So you need to be 100% sure when you take the case that money will be obtained because as it turns out cases can and do take on a life of their own and even when you are 100% certain at the outset you make mistakes. If you are not 100% certain at the beginning you pretty much never recover anything.

The Law of Recipes: Are Recipes Patentable?

In most cases the typical recipe for a “killer Margarita” or “the best barbeque sauce ever” will not be patentable, but the only way to know for sure is to understand how the Patent Office reaches its conclusions relating to what can and cannot be patented. It is possible to obtain a patent on a recipe or food item if there is a unique aspect to the recipe, there is something counter-intuitive or a problem (such as self live or freshness) is being addressed. The trick will be identifying a uniqueness that is not something one would typically think to try.

Trademark Skullduggery: Lawsuit Challenges Publication Service

Leason Ellis LLP, an intellectual property law firm located in White Plains, New York, recently filed a complaint against USA Trademark Enterprises, Inc. of Sarasota, Florida. The multi-count Complaint alleges that USA Trademark Enterprises has engaged in false advertising and unfair competition by marketing a catalog of trademark registrations, which offers no value because the published information is freely available in the online records of the U.S. Patent and Trademark Office. David Leason, Managing Partner of Leason Ellis, said “by targeting our clients and us, USA Trademark Enterprises has interfered in our business and cast a shadow over the legitimacy of trademark-related communications. In filing suit, we are out to protect our clients, our business, and the integrity of the trademark process from predatory and deceptive marketing.”

Ordinary Plain Meaning: Defining Terms in a Patent Application

The question of whether a term is defined adequately is really a legal question, so the views and opinions of those who are not well versed in the law are hardly probative. Inventors invent and patent attorneys describe those inventions to satisfy the legal requirements. If inventors could describe their inventions to meet the legal requirements they wouldn’t need patent attorneys, but we all know that inventors who represent themselves make numerous errors and always obtain far more narrow protection than they would have been entitled to receive. They just don’t understand the law well enough and are not qualified to offer opinions on matters of law.

5 Simple Steps to Building A Personal Brand Using Social Media

Just like people, all brands have their own personality. Brand personality is defined as a set of human characteristics that are associated with a brand name and is determined by consumer interactions with your brand. It is essentially, how your brand behaves in the public light. Your brand personality is determined mainly by your own personality and identity. There are many influences on brand personality including profession, industry, age, gender and emotional characteristics, to name a few. But your brand personality should also reflect what you want others to think of when they hear your name.

Patent Drafting: Drilling Down on Variations in a Patent Application

One of the challenges that a drafter faces when trying to satisfy the enablement requirement is with respect to describing things that can and will vary depending on the circumstances. What you want to do is follow up by explaining the various permutations to help the reader more readily understand what facts, choices or circumstances will have impact.

Reality Check: Compensation for Patent Practitioners

In Patent Strategy I explained that a reasonable quote for an office action response is $2,000. Certainly it can be more depending upon the technology, but if you were going to poll patent practitioners from patent attorneys to patent agents I suspect you would come out with something close to a $2,000 average. This prompted one patent examiner to comment: “You said in this article that practitioners make $2,000 per response on average. How much do examiners make per response? Probably a fourth or a third of that. I mean I try to do the best job I can but do you really expect all examiners who get paid a fourth or a third of what you make to perform at the level that you do?”

14 Ways to Exploit the Power of Social Media for Business

Thanks to social media everyone has the ability to connect with like-minded individuals all over the world. But if you want to exploit social media you need to have an effective strategy. It doesn’t take an enormous amount of time each day. In fact with only 15 minutes a day, you can really make quite an impact. But like everything you hope to succeed with in life it does take planning and forethought. Here are suggestions on how you might be able to use social media to develop your brand, monitor quality, engage customers, expand upon ideas and connect with others within your industry.

An Introduction to Patent Claims

Why are we talking about this in a claims primer? There is a difference between adding what we call “new matter” and adding patent claims. New matter, which is prohibited, is defined by first viewing whatever is present at the time of the original filing of the patent application. In determining the breadth of what is covered by that initial patent filing you rely not only on the description contained in the specification and any drawings filed but also on the originally filed claims. Thus, new matter is defined in the negative. If it wasn’t there in the specification, drawings or originally filed claims then it is new matter. If it was present somewhere in what you filed it is not new matter.

Patenting Board Games 101

In my experience one of the things that inventors of board games frequently forget is the inclusion of alternative methods of play. Don’t just focus on the preferred method of play and preferred rules, but think about ways that the game can be modified and changed. Let me use an example from the extremely popular game Monopoly. One of the things that keep many people from playing Monopoly is the length of the game. That has lead to any number of various “house rules” to be implemented by those who love the game but want it to be played faster so the game can be completed in a reasonable time frame, or at least before everyone loses interest. So if you invented Monopoly in addition to the traditional rules you should give some thought to rules associated with accelerated play.

Design Patents: The Under Utilized and Overlooked Patent

As the chart below demonstrates, design patent applications have been on the rise since 1975, but still in fiscal year 2011 there were just over 30,000 design patent applications filed. That strikes me as an extraordinarily low number given the number of inventions that could potentially receive a design patent. Design patents must be considered by all inventors because of the backlog at the United States Patent and Trademark Office. It can take 3 or more years, sometimes substantially longer, to obtain a patent. By contrast a design patent can in many instances be awarded in as few as 6 to 8 months. Some patent is better than no patent, so inventors with a gadget or device should ordinarily be seeking design patents as well as utility patents for that reason alone.