However, I have to agree with Robert when you are dealing with a crowded field and there is art that is close. In these fields, narrow claims can often be very valuable. If you deal with the art in the background, by discussing it and specifically distinguishing it, you can preempt the examiner, and they may agree with your distinguishing points, and hence not even address that art.

You must submit those references anyway in an IDS, so why not try and take them off the table right away?

That being said, I totally agree with you regarding the invention scam companies. Has anyone done a survey to determine whether the clientele of certain patent attorneys and agents comes from these ISCs? I have been through several horror stories with inventors who first went to an invention scam company, and paid 15K or more for a design patent, when their idea could have, and likely should have, been filed as a utility patent.
-Ralph

You are entitled to your opinion, but you are simply wrong on this one. Once you admit something is prior art then it is prior art, end of story. A good patent attorney or agent will never admit anything is prior art or make any representations about other patented inventions unless until it is absolutely necessary in order to distinguish the applicants invention to overcome a rejection by an examiner. You do not have to admit that any particular device or invention is “prior art” in order to distinguish what your client’s invention is. In my opinion, describing in detail what the prior art is and does presents signficant risks without any potential benefits. It has always struck me as the lazy way to draft patent applications.

I am not advocating playing games with examiners, and I do not do that myself. Neverthless, no application should be a blind dissertation on the prior art because there is absolutely no way to know all of the prior art that will be capable of being used against an application. You have to know that applicatons remain secret and unpublished for 18 months, so you can never know what else is lurking that may present problems. The fear is that you will say that invention A is prior art to the invention but that the applicants invention is unique because of limitation K. If the examiner can find limitation K in the prior art, then you have created your own obviousness rejection and it is going to be enormously difficult to get around that type of rejection. So saying that A is prior art without knowing what the examiner has found is reckless.

I know that the book Patent it Yourself says that you should list the prior art and describe what it says, and I know a lot of patent agents do just that and some inexperienced or bad patent attorneys do the same thing. The truth of the matter is that referring to anything as prior art will only create problems and will not at all help the patent applicant. So why do it, particularly when there are all kinds of ways to distinguish the prior art without using the term “prior art.” You see, the trouble is that the term “prior art” is a legal conclusion.

Rather than describing what the prior art is the proper way to draft an application is to explain the problems and insufficiencies of the prior art. The invention subject to the applicaton should directly address these problems and insufficiencies. This leaves the attorney open to make whatever factual arguments are necessary to distinguish the invention over the prior art found by the examiner. There is simply no reason to lock yourself into factual positions before seeing the examiner’s rejections. If you do lock yourself in then you are creating needless problems for your client and potentially narrowing the scope of the patent claims for no reason.

-Gene

I strongly disagree with this comment on Patent Drafting technique. There is nothing wrong with admitting that a Patent with an effective date a decade before yours is “Prior Art”. In fact, there is nothing wrong with admitting things you KNOW to be Prior Art as “Prior Art”. in fact, the Law and the Rules compell you to submit Prior Art to the Patent Office and also not to submit claims directed to Prior Art. So I fail to see the harm in admitting a reference is in fact “prior art” to an application, when in fact, it clearly IS PRIOR ART.

Being cute with the Examiner by not admitting anything could possibly be “Prior Art” to your invention can backfire in a big way – particularly in crowded arts where the standard of novelty is thin. Better to admit up front there is a lot of art out there and THEN distinguish why your invention is better than all that, than to try to argue your invention is totally novel, when the Examiner can see six similar refernces in your own IDS.

The point of the BACKGROUND OF THE INVENTION is to present a survey of the Prior Art to familiarize the Examiner (and later a jury) as to what had been tried before. If you set up this section right, by pointing out the DEFICIENCIES in the Prior Art, then in the SUMMARY section, you can bat it out of the ballpark by showing how your client’s invention overcomes all the deficiencies of the PRIOR ART and thus is NOVEL and NON-OBVIOUS. By telling the story of your client’s invention, you put the Examiner in a mood to allow it and a jury in a mood to uphold it.

This is a FAR BETTER approach than pretending that NOTHING is relevant Prior Art to your invention and then trying to argue that your invention is totally novel. Not only is it disingenuous, it is likley to backfire with the Examiner. ALL inventions are based on improvements over Prior Art refernces – or are a combination of Prior Art devices. (The only exception I can think of is Einstein’s general theory of relativity, but few inventors are Einsteins).

Frankly, your comment illustrates the major problem with the legal system today – lawyers are trained to argue every point, even ones they know to be false or very, very weak. This “scortched earth” approach to legal argument does not sit well with Examiners or Juries, however. If they can see you are lying about some trivial point, then they will not be inclined to agree with you over some more important point. And that more important point is the one that wins your case.

You are better off admitting what is clearly Prior Art (a reference with an effective date more than one year prior to your filing date is “Prior Art” under 35 USC 102(b), whether you admit it or not.) and then arguing the point (or points) of novelty than trying to be coy and pretend your invention is totally novel.

I have no comment on Mr. Kroll or the application in question. If you are shopping for an Attorney, get references. Picking one out of the yellow pages (or from a website) is probably the worst way to go about it.

FWIW.