Posts Tagged: "patent applications"

For example, does a hair dryer with integrated radio, beer bottle opener, shaving cream dispenser that floats sound marketable? Perhaps as a gag gift maybe, but the addition of random features for the sake of obtaining a patent is not usually wise. I’ve seen terribly broad disclosures filed for an inventor with one extraordinarily specific embodiment. Right away I can tell what is happening. The patent attorney (or patent agent) is drafting the disclosure so that at least one claim, no matter how narrow, can be obtained. Unfortunately, it does not typically make sense to layer on specifics unless those specifics contribute to marketability, and in most cases layer after layer of detailed specifics only makes the claim narrow and less valuable. So if you are going to try and get around prior art to obtain a patent make sure the specifics added will provide an advantage.

It is also very important to explain with as much detail as possible, paying particular attention to unobvious or counter-intuitive steps, connections or limitations, paying particular attention to any preparations that may be necessary prior to beginning the making or using process. Perhaps you should try and describe your invention in words in a way that would convey meaning to someone who is blind. This is a tough task no doubt, but the goal of the written disclosure is to provide verbal description that is much like a step by step how to manual. If you are trying to describe your invention to someone who cannot see then you will invariably find creative and enlightening ways to verbally get your message across. This is the type of detail that should be in an application.

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.

There is a terrible injustice done by those non-attorney and/or non-agent services, and it amazes me that individuals are so ready to believe inventors and scientists who have a handful of patents and haven’t read many (if any) cases. You go to an experiences accountant for tax issues, when you feel sick you go to an experienced doctor, if your car breaks down you want an experienced mechanic, yet when you have an innovation that you dream could be worth many thousands, or millions, of dollars you go to an inventor who has little or no experience drafting a patent application? At which point exactly does that start to sound like a good idea? After your third martini at lunch?

The back bone, however, is made up of many smaller bones. For example, there are seven cervical vertebrae in the necks of all mammals, and these bones together make up a portion of the back bone. Therefore, a more complete description of the backbone would point out that the neck is a part of the backbone. An even more complete description might include saying cervical vertebrae 1 (i.e., C1, which is a part of the neck) is connected to cervical vertebrae 2 (i.e., C2) and so on. The point is that the more description you provide the better, but you absolutely must have at least the big picture overview of how everything fits together, and how to make and use the invention. Therefore, be sure that you have disclosed with as much detail as possible how all the pieces of your invention connect, work together, function and interrelate.

Some patent applications are difficult to get agreement on. The examiner won’t allow and the applicant won’t abandon. The net result is that office actions and responses go back and forth with no apparent resolution in sight. We propose that progress with these difficult patent applications can be tracked by looking at two separate but interrelated metrics, “applicant effectiveness” and “examiner effectiveness”. These two metrics can then be used to diagnose and correct problems in patent prosecution and examination.

The initial Peer To Patent pilot program, which began in 2007, opened the patent examination process to public participation in the belief that such participation would accelerate the examination process and improve the quality of patents. Yesterday the United States Patent and Trademark Office announced a sequel to the initial pilot program and will begin a second Peer To Patent pilot program, again in coordination with New York Law School’s Center for Patent Innovations (CPI). This new Peer To Patent program will run for a one year term and will commence on October 25, 2010. This second Peer To Patent pilot program will expand on scope of the previous pilot program. You may recall that the first Peer To Patent pilot was limited to software and business methods applications, but this new pilot program will also include applications in the fields of biotechnology, bioinformatics, telecommunications and speech recognition.

I am frequently asked if it is a good idea for inventors to file their own patent applications, and every time I am asked that question I suspect the person doing the asking already knows the answer, but is hoping that they might find someone who will tell them what they want to hear. You have probably seen the commercial where the guy is sitting at his kitchen table and is on the phone with the surgeon who is telling him where to cut to take out his appendix while using a butter knife. The guy asks: “shouldn’t you be doing this?” Well, writing your own patent application is a little like taking out your own appendix.

The United States Patent and Trademark Office is seeking public comment on a major new patent examination initiative that would provide applicants greater control over the speed with which their applications are examined and promote greater efficiency in the patent examination process. This newly proposed Three-Track program aims to provide applicants with the ability to go faster or slower through the patent process, which will in turn hopefully reduce the pendency of those patent applications that are the most time sensitive. Under Track I applications will be expedited, under Track III they can be slowed at the applicants request.

The Wall Street Journal Online just published an article titled Why Technologists Want Fewer Patents, which will apparently appear in the June 15, 2009, edition of the paper on page A13, under the heading “Opinion.”  The article discusses the US Supreme Court agreeing to hear Bilski v. Doll, which will decide the fate of at least some business method patents,…