Posts Tagged: "famous inventors"

If you think the title only raises a wild possibility, consider what happened in a recent case decided by the Federal Circuit. After being sued for infringement, the defendant had the ex-wife of the inventor of the patent-in-suit sell to it any interest she had in that patent. The defendant argued that as a result there could be no infringement, both because plaintiff lacked standing and because the defendant had acquired an undivided interest in the patent. It almost worked.

It is certainly true that once you file a nonprovisional patent application your ability to make additions to the application has largely ceased. Even if you are filing a provisional patent application, while you could always file another provisional patent application to correct mistakes, the first filing is only as good as what is disclosed. Taking the first filed patent application seriously and making sure it has all the necessary disclosure is absolutely critical. Therefore, having a professional review your patent application before you file is definitely wise. The question, however, is when do you seek the assistance? Frequently many inventors wait too long before they seek help, which means much of what they have done is unusable and various levels of difficult (or impossible) to work with.

The best thing to do is explain why your invention solves problems and/or is important for the relevant consumer audience. In order to accomplish this you do not explain what else available to consumers and why it is inferior, missing functionality or missing parts. Remember, the focus of the application MUST be on your invention. It can be extremely helpful to create a comparison chart or write text comparing the prior art you know about with your invention, but this should be used by you or provided to your patent attorney or agent. It will be exceptionally helpful to have this information, and I ask my clients to provide it to me whenever they are willing to be so involved. This information informs how you describe the invention, and will be helpful later during prosecution, but it is not appropriate in a patent application.

One thing that many individuals and professional inventors employed by corporations (i.e., “kept inventors”) have in common is that they frequently do not perceive what they have come up with as worth patenting. So many have the idea that a patent is something that gets awarded to breakthrough innovations, when in fact it is far more common to have a patent awarded to an improvement on an existing product. If you can improve upon something , there is already a market in existence for the underlying product and consumers will perceive your improvement as worth paying for then you very well may have a winning invention. Certainly, you are much farther along the path to success with that trifecta.

If (B) gives a blanket exclusion to subject matter, which cannot be used as prior art after a disclosure by an inventor, that would lead to nearly ridiculous results. Imagine for example that an inventor discloses a specific embodiment of a coffee cup and then subsequently another who did not derive independently comes up with and discloses a coffee cup with a lid. If (B) does more than relate to a personal grace-period the subsequent disclosure could not be used against the first to publish inventor as prior art because it relates to the same “subject matter.” That would mean that the inventor could incorporate the cup and the lid into his/her patent application and obtain claims. You might be tempted to say that is impossible, but if the cup with the lid is not prior art then under what rationale could an examiner issue a good rejection? This would lead to results that turn the patent system upside down, and was clear evidence to me that those arguing that 102(b)(1)(B) excluded out subsequent independently disclosed inventions was fanciful at best.

The canonical story of the lone genius inventor is largely a myth. Edison didn’t invent the light bulb; he found a bamboo fiber that worked better as a filament in the light bulb developed by Sawyer and Man, who in turn built on lighting work done by others. Bell filed for his telephone patent on the very same day as an independent inventor, Elisha Gray; the case ultimately went to the U.S. Supreme Court, which filled an entire volume of U.S. Reports resolving the question of whether Bell could have a patent despite the fact that he hadn’t actually gotten the invention to work at the time he filed. The Wright Brothers were the first to fly at Kitty Hawk, but their plane didn’t work very well, and was quickly surpassed by aircraft built by Glenn Curtis and others – planes that the Wrights delayed by over a decade with patent lawsuits.

If you are a serious inventor you need to go to this Conference. Last year there were inventors who came to the USPTO campus for the two-day event from all over the East Coast, and those that I talked to thought it was well worth their time and money. Where else are you going to be able to meet Senior USPTO officials and talk to them one-on-one? There will be patent examiners and trademark examining attorneys present to answer your questions. Local intellectual property attorneys will give their time to participate in teaching sessions, as well as giving free consultations to attendees to answer questions. Even if you have to travel to California and stay in a hotel for a couple nights you will get far more out of the Conference than you will spend. I understand money is tight, but serious inventors, whether they are newbies or old pros, will gain a tremendous amount of valuable information and personal connections by attending the Conference.

Louis Foreman, the producer of the Emmy Award winning PBS television show Everyday Edisons and the publisher of Inventors Digest, announced in April 2011 that he was launching of a $25 million Innovation Fund. Phase 1 of the search for inventions for the Fund to invest in was completed in mid-June 2011. Phase 2 of the search for inventions and ideas has just begun and will run through Monday, September 12th, 2011. He tells me that the Fund is off to a great start and has received some very innovative technologies as part of the first wave.

The effort to shoehorn foreign patent priority concepts and torture a well-developed 200 year-old American patent system that has a proven record as the best in the world into foreign structures that are inconsistent with the American Constitution and its laws is a futile effort that would likely be met with successful challenge on constitutional grounds. The illusory “harmonization” goal with no demonstrated tangible benefits compared to the existing system does not justify embarking on a risky legal adventure that will destabilize the American patent system and will doom it to decades of economically taxing legal uncertainty.

In a bit of a twist this year, the party nominating the National Inventor of the Year will also be recognized. Most nominations come from patent attorneys, so this is a great way for the IPO to recognize the team behind the inventor, as well as honoring the inventor. The nomination deadline is June 1, 2011, so now is your chance attorneys and agents to nominate those inventors you work with for their innovative contributions. I can’t think of a more worthwhile endeavor for our industry than to recognize remarkable innovators, so I encourage everyone to go through their client rosters and nominate those outstanding inventors who deserve recognition.

To help what might be the best ideas and inventions percolate to the top Foreman has created what he refers to as a “Patent Attorney Referral Program.” This program is designed to benefit patent attorneys and patent agents whose clients submit innovative ideas and concepts. This isn’t one of those unethical referral programs though, so no worries there. If a client of a patent attorney or patent agent is selected and accepts the offer of assistance from the Innovation Fund then the patent attorney or patent agent representing that inventor will be retained by the Innovation Fund to provide the legal services required to pursue patent rights.

It would have done Members of Congress good to see the stories of these extraordinary individuals who researched, developed, innovated and succeeded beyond the wildest dreams of what anyone could ever reasonably hope to accomplish. It is this innovation that has lead to life saving treatments, a better way of life, and countless American jobs. It was an inspiring, non-political evening that should have been celebrated at the highest levels in our government. This is who we want our children to become. These are the role models. We all need to work toward making math, science, engineering and innovation the sexy career path it should be. These thirty-nine inductees, and the other 421 previous inductees, together create perhaps the most exclusive society anywhere in the globe. They are no less than heroes of invention.

Method or process claims will include active steps to achieve a certain result. In method claims the transition is typically either “comprising” or “comprising the steps of.” While legally there may be some distinction between these two different transitions, both are acceptable. It is also important to understand that each of the steps in a method or process claims use gerunds, which are a form of a verb that ends in “ing” and operates to direct the action that is to take place. Said another way, you must use “ing” words in method claims. You cannot define a method or process in the past tense.

One of the problems created by true newbies, particularly those who have not done any reading or tried to at least bring themselves up to speed to some extent, is that they present in a way that makes established patent attorneys and law firms want to run and hide. Whether it is unrealistic expectations, wanting a confidentiality agreement signed because they want to be able to sue you if things go bad, or wanting representation on a contingency basis, these things scream PROBLEM to most patent attorneys, thereby foreclosing a possible representation relationship in many cases.