I am frequently asked a version of the same question by inventors, which goes something like this: “I have an idea but I am unable to do it myself. I am going to need some help. What should I do to make sure I am protected?”
Patent attorneys and agents reading will likely start to immediately say that ideas cannot be patented and it doesn’t sound like you have anything that could be protected. I too have explained that to many inventors of the years and written about that very topic (see Protecting Ideas and Moving from Idea to Patent). But with this presentation there is no way to know yet whether there is an invention lurking there or whether the individual has merely a raw idea without any knowledge about how to bring it into being. Thus, this question begs the essential inquiry, which is this: At what point does an idea take enough form to be considered an invention that can be protected?
First, it is completely correct to say that ideas cannot be patented. Having said that, it is equally correct to say that every invention starts with an idea. The patent laws in the United States differentiate between a mere idea and conception. When you have a conception you have an invention, and the easiest way to define the term “conception” in lay terms is as an idea plus some knowledge regarding how to bring the idea into being, whether your idea is a compound, a product, a process or unique software.
In many instances the individual presenting the “what do I do?” question will explain that they will need some assistance from an engineer to help them build the device or figure out certain aspects of the invention. In my experience, if the inventor presents knowing that they will need assistance from an engineer they are likely to have something that is more developed than a mere idea, and are struggling with the fact that they know they will need help creating a prototype or preparing engineering drawings, for example. In this case it is likely there is already an invention worth protecting, at least on an initial level.
So how do you decide whether you have a mere idea or a conception that is on the road to a full blown invention? That is a difficult question to answer and one that has few, if any, bright line rules or useful generalizations. What I would say, however, is this: If you can sketch out the invention on paper (in the case of a device) or list the steps (in the case of a process) you likely have something that is tending toward the invention side of the idea-invention continuum. This is because in order to file a patent application you do not have to have ever made the invention or used it, you just need to be able to explain to others how to make and use the invention. So proofs on paper associated with written text explaining the particulars is enough to satisfy the patentability requirements in the United States. So in many, if not most, cases inventors have an invention capable of obtaining protection far earlier than they likely expect.
This is not to say that the endeavor of creating a prototype, even a crude prototype, is not worthwhile. You will learn so much from trying to create a prototype, even a crude one, that you should absolutely endeavor to create a prototype to prove the concept. You don’t need one that costs many tens of thousands of dollars to start, but having some proof that the invention will work makes all the sense in the world, and will undoubtedly provide you with better information than you could have ever come up with when only describing and proving the invention on paper or even in 3D models.
We are starting to get ahead of ourselves though at the moment because in most situations the people asking the “what do I do?” question are not capable of providing detailed sketches of the invention, engineering drawings or modeling the invention in 3D on a computer, all of which are relatively inexpensive and critical. So what you need to do is define the invention you have to the greatest extent possible and file a provisional patent application. Whatever you define in that provisional patent application will start to be the foundation of the overall invention you ultimately file a patent application on, but it will cast in stone that which you have come up with and are the undisputed inventor of prior to seeking help from others.
I always recommend a patent search prior to filing a provisional patent application because it is a waste of time to engage in a project if there is no chance at obtaining a patent, and even if there is a likelihood of obtaining a patent not knowing what to focus on as the most likely unique aspect of the invention means you are describing the invention in a vacuum, and nothing good can come of that. But you can start by doing your own patent search and then if it looks good move on to a professional patent search. For more on doing your own search see Patent Searching 101 and Patent Searching 102.
As you are going through the search phase you will start to see things that are similar and if you actually read the patents, which should be considered essential, you will start to see how others have described their inventions. This will help you focus on the unique aspects of what you have come up with. It will also likely be a surprise to many that patent applications and issued patents are NOT blueprints, but rather generalized discussions of the big ticket aspects of the invention with focus on those things that render the invention worthy of a patent (i.e., those things that are unique). In fact, engineering drawings are almost never used in a nonprovisional patent application, although they can be quite useful in a provisional patent application.
So once you have done a search you will need to start describing what about your idea is unique and how it is unique. When you are at the point where you can describe the uniqueness of your idea in comparison to other patents and pending applications then you are again tilting heavily toward the invention side of the idea-invention continuum. So if you can describe what is unique and why, and you can sketch out what you have, then you certainly have something that is ready for a provisional patent application.
Once you have that provisional patent application filed you will have 12 months within which to file a nonprovisional patent application claiming the benefit of that provisional filing date. This cannot be extended for any reason, so the clock is ticking. But you have in hand something that defines what you have come up with, so the core of the invention is yours.
An effective use of provisional patent applications, particularly when you are going to need help from others, is to secure the first one, seek help, and then as you make progress and the full glory of the invention takes shape file another provisional patent application. You can file as many provisional patent applications as you want over that 12 month period and the priority date of the invention will be whenever that aspect of the invention first showed up in an application at the USPTO. Some Universities use this serial provisional approach regularly because their scientists are working on cutting edge technology and learning more and more all the time. Then within 12 months of the first filed provisional patent application you file a nonprovisional patent application wrapping together all of the provisionals you filed and adding whatever else new you have since the last provisional patent application.
I have been suggesting this serial provisional patent application strategy to inventors for years, and finally now have an inventor who decided to pursue it. This strategy is excellent when you are developing an invention and making progress toward a completed invention. Once complete you can file the nonprovisional patent application. It is also important to know that when you file a nonprovisional patent application you have no additional ability to make additions without filing another nonprovisional patent application, so filing a nonprovisional application during development is frequently not the right choice. Wait until development is complete, and whenever a significant improvement occurs think about another provisional to lock in a new priority date with respect to that new, significant improvement.
Once you get that first provisional patent application filed you are ready to approach others for assistance. You have a measure of protection, but never forget you have no exclusive rights until the patent ultimately issues. You should also still get a confidentiality agreement signed by anyone who provides assistance to you. While the clock in the US is ticking to file the nonprovisional, the real important significance of confidentiality agreements after a provisional filing is so that those who assist you will not run off with your invention on their own. With this in mind, it is ABSOLUTELY CRITICAL that you get an assignment of rights with respect to any protectable aspects provided by those giving you assistance. You essentially want to set it up so that you pay them for help and in exchange they agree to help you with your invention, agree to keep it confidential and they agree to assign any rights over to you because, after all, it is your invention. You should also put into the agreement they sign something about them agreeing to cooperate with a patent application because they may need to be named as a co-inventor.
Thus, the moral of the story is that just because you will need assistance doesn’t mean you do not have an invention worth protecting. Virtually all inventors will need assistance of varying kinds, from patent attorneys or agents, from industrial design engineers, from those who can create engineering drawings and/or CAD drawings and from those who can help with respect to manufacturing and distribution. The key is that you need to take responsible steps as early as practical to understand what you have, know what others have related inventions and then define your idea so that the core uniqueness can be appreciated. When you can do that it is safe to say you no longer have an idea, but rather you have an invention.
Join the Discussion
79 comments so far.
patent litigationMay 28, 2012 02:11 pm
It will be interesting to see whether the introduction of 3D printers will lead to a resurgence of inventor prototypes. It would be pretty cool if that happened.
MaxDreiMay 25, 2012 08:00 am
Pleasant as it is, this discourse must stop otherwise folks might complain to Gene that it is off the point. Mind you, I didn’t know that the USPTO was setting up in Seattle. Sounds good.
One sees plenty of new Triumph bikes on the roads these days, but no Nortons. Shame.
Stan E. DeloMay 25, 2012 06:06 am
I once had a very wonderful girlfriend Stephanie, who told me of returning to her roots, booming up through the Austrian Alps in a rented BMW, with Mozart and other classics turned up very loud on the radio. Ausgeseignet! A local fellow named Rick Steves has done some very remarkable travel shows all over Europe and beyond, and the photography is always very stunning when viewed on my high definition big screen 53 inch television. I would also like to see Switzerland, Scotland and Ireland in person, as they all are a part of my heritage.
Another very sweet lady friend of mine’s sister Nancy told me of living in Florence, Italy, where your normal flat might be in a stone building that was over 400 years old. The oldest thing I know of around here is when my great grandparents homesteaded on Vashon-Maury Island circa the 1860’s or so, or Seattle and Port Townsend, which were both settled in about 1854 or so. When the train lines finally came out West, they went to Seattle and Tacoma, instead of going all the way around the Puget Sound, and PT became a minor player once shipping by boat was superseded by rail and highway transportation. Port Townsend is still one of the oldest Victorian era towns left on the West coast though, since most of Seattle burned to the ground in about 1903 or so. David Pressman who wrote Patent It Yourself happens to live in San Francisco, which was also partially destroyed by fire about then, but much of it survived. He lives near the Russian Hill region, which is a classic Victorian era example of early Americana.
I should probably dust off my old 1972 Norton 750 Commando motorcycle this summer, and go down and visit Dave while I still have a little free time available. Highway 101 following the Pacific coast is still reasonably safe and sane, but the freeways out here have gotten pretty frantic lately.
Curiously enough, Seattle has apparently been selected as the site for a new branch office of the USPTO, probably opening in about a year or so, after the new Detroit branch opens in early July of this year.
MaxDreiMay 25, 2012 03:17 am
Hi Stan. Hamburg is attractive, yes, but more than 500 miles away from where I live. These days, it’s full of container ships. I used to suppose they were all arriving full from China and sailing back empty but now i gather they sail back full to the mast-top with German capital goods. It surely helps that the Euro is so low, burdened down by all those Member States not as good as Germany at making the goods that the whole world wants. Why are they so indebted? Because they borrowed too much from the German banks, thinking there was no downside risk. Why did the banks lend? Because they knew it was 100% safe and that it would create loads more customers for high quality German exports (armaments, in the case of Greece).
Imagine the Euro fails and Germany goes back to the Deutschmark. Suddenly German goods would be double their present price, and Hamburg would not then be so busy or so rich.
The restored Arequipa is surely a great joy for all who see her. If you visit the Hansastadt, it must be for the joyous celebration of its “Hafengeburtstag” in May each year. Then go downstream to Wedel and watch, sipping a cold beer as the national anthem of the country of registration greets each ship goes by, sailing upstream.
Stan E. DeloMay 24, 2012 07:08 pm
Come to think of it, I think they were Caterpillar diesels, with very mercifully soft engine mounts. A very old wooden boat doesn’t need to be jostled any more than is neccesary in most cases.
Hasta la vista-
Stan E. DeloMay 24, 2012 06:20 pm
If you ever go near Hamburg, try to look for a large motor yacht on the large lake there, named Arequipa that I helped to restore for about a year. She was built in 1927 in California, sixty-five feet in length, that was designed as a very high speed yacht ala a Rum-Runner style, and she is absolutely lovely, like a very pretty lady on a warm spring day.
The client was/is a prominent architect from Hamburg, who I hope is enjoying his *new* yacht a lot right about now. I replaced the whole transom framing and the transom planking, as well as some tired hull planking, and replacing all of the after 42 feet of solid Teak decking that came out even better than I had hoped. A really great guy that used to fly over to Port Townsend about every 4 months or so to check things out and make decisions. His agent Peter Baum became a very good friend of mine by the end of the project.
They shipped it to Germany using a barge, and a very good time was had by all. Lots of good food and laughter, so what else do you need? He ended up having to replace the worn out old 671 GMC motors near the end, replacing them with Cummins diesels if I recall it correctly. I was amazed when I came back later to *inspect*, and when they started up the new engines it sounded about like starting up a 10KW generator or something. Smooth and very quiet. He wound up spending about 2 million, but you can’t spend any money in Heaven, as far as I know. You can’t take that with you at the end of the day.
Tell him Stan says hello!
Stan E. DeloMay 24, 2012 05:16 pm
Actually to my way of thinking, the SCOTUS *common sense* decision in Mayo vs Prometheus is far and away more profound and corrosive of US patent rights, and Yes I am a selfish inventor. Hopefully the new Director of the USPTO David Kappos and his very talented team will suggest a technical amendment to the America Invents Act before too long, which will trump whatever any particular *judges* happen to think if Congress ratifies the proposed amendment. Also the new P-TAB program should cut most of the cases off at the pass, so that the Supremes won’t get a chance to muck things up further in the future.
MaxDreiMay 24, 2012 05:14 pm
Writing anonymously, one can be as rude as one pleases.
Rudeness begets rudeness, nicht wahr, and so it grows. And BTW, it’s (of course) never me that starts it.
If in our exchanges I don’t get rude, the credit for that belongs to you Stan.
Stan E. DeloMay 24, 2012 04:59 pm
And probably not even Legal according to the US Constitution. First do no harm, nicht whar? The Hippocratic oath that medical doctors all over the world have sworn to uphold as their first principle for centuries. What a difference a venue makes Max, as you seem to display a much more friendly and considered presence here than elsewhere. Attitude makes a huge difference.
Aufwiedersehen mi compadre`
MaxDreiMay 24, 2012 04:57 pm
Understood Stan. You are by no means the only one to write “reign in”. As to Plasmart, the situation is worse, far worse, than you suppose. For this is not a SCOTUS but a CAFC decision. Into the care of the CAFC is entrusted the care, maintenance, nourishment, development and general welfare of the patent law of the USA. Unlike the SCOTUS Justices, CAFC Justice Alan Lourie, the author of Plasberg, is supposed to be an out and out patent law expert. I wonder, is he using the Plasmart case to expose to the interested circles the poverty of reasoning on obviousness within the SCOTUS KSR decision?
Stan E. DeloMay 24, 2012 04:44 pm
Otherwise known as legislating from the bench.
Stan E. DeloMay 24, 2012 04:35 pm
The main problem here is that Supreme Court Justices cannot be de-elected for bad judgment, unless they decide to step down when they start realizing that their decisions are getting a bit addled, as in confused. The US Congress will have to step in on the issue, but I will bet you dimes to donuts that they will not do so in the forseeable future.
Hence my irritation when they get things goofed up so badly.
Stan E. DeloMay 24, 2012 04:23 pm
Exactly the same conclusion I came to Max. Pardon me if I seem to be a bit frisky at times, but sometimes my faithful steed gets a burr or something under her saddle. BTW- Reign was a sort of Freudian slip on my part, and I will try not to let it happen again.
Inventors need an ostensibly objective standard to meet, and Not what some Federal Judge happens to decide what will constitute patentability on an uninformed whim.
MaxDreiMay 24, 2012 04:06 pm
Step, I’ve just read Plasmart. Accustomed as I am to the EPO’s rigorous TSM approach, which never varies, I’m appalled by the conclusory and superficial subjective treatment of obviousness, and the absence of the specific TSM reasoning which has characterized EPO jurisprudence these past 20+ years. It is obvious because I say it is obvious strikes me as a poor way to adjudicate patent disputes. The litigants are not children. They deserve better.
By the way, a consequence of an EPO-TSM regime on obviousness is that claim drafting standards rise.
Stan E. DeloMay 24, 2012 04:02 pm
AC writes in toto:
Max, next time you are in Abilene, please stop by and we’ll have a couple of cold brews and a chinwag about evolution.
If Max were to come by for a visit and a few beers, it would seem as if he might just qualify for a Darwin Award. http://www.darwinawards.com/darwin/darwin2010-09.html
Stan E. DeloMay 24, 2012 02:15 pm
I am reminded of the Internet, which pretty much knows all, but it has no judgement or *common sense* at all. It is also not creative like a person can be to varying degrees. I learned in the 6 grade or so that *common sense* is not to be trusted. Common Sense for whom? Law is supposed to be specific, so deciding that common sense should prevail seems like a very bad joke to me.
AnonMay 24, 2012 01:06 pm
MaxDrei comments “but I’m uneasy about obviousness being decided on common sense”
Max, that is the primary gist coming out of the KSR decision.
This is not news (or shouldn’t be) to anyone in the patent field.
I am uneasy that you are not yet uneasy on a major case that was decided over five years ago.
step backMay 24, 2012 12:10 pm
In the USA, after KSR; PHOSITA is no longer an “automaton”, but rather a “person” of ordinary creativity.
Only a fictional automaton can know “everything”.
MaxDreiMay 24, 2012 10:25 am
Ha! We know that the PHOSITA has i) access to ALL the art but ii) not one scintilla of inventive activity in his head. For me, that would seem to establish that he also lacks even a vanishingly small quantum of the quality we refer to as “common sense”. The PHOSITA is necessarily unlike any real human being, because nobody can know all the art (and those that know the most are to some extent inventive).
Still haven’t read Plasmart but I’m uneasy about obviousness being decided on common sense.
In England, the mental furniture of the PHOSITA is an issue of fact, to be settled before turning to obviousness, which is ultimately a question of law.
American CowboyMay 24, 2012 09:49 am
Rain on, Max!
The above discussion prompted a question in my mind: Would determining what “common sense” is be a finding of fact or a question of law?
MaxDreiMay 24, 2012 02:46 am
And Stan there was I, thinking that cowboys are experts at reigning things in (rather than themselves being reigned in).
Mind you , I’m actually thinking more about a rein and what a modern cowbody does with it. You might yourself enjoy that more than fantasising about a reign, and what the present king of feudal Europe can do with it.
Somebody on Patently-O asked for a Link to the Plasmart case. Thanks to SB for providing the one above. I must now read the decision, because the reasoning underpinning decisions on obviousness is one of my special interests.
Stan E. DeloMay 24, 2012 01:34 am
As in reigning in the various cowboys.
Stan E. DeloMay 24, 2012 01:21 am
Usually the inventor has to give up a fair amount of their IP rights. Sorry if that sounds a bit jaded, but I think it is most likely true. The Ratchet Effect.
step backMay 23, 2012 08:00 pm
Talking toxic about Pat(ty)-O is one thing.
But what I was concerned about is that the CAFC has jurisdiction only to review the “final” agency action:
However, in this case, the CAFC is also reviewing the “non-final” conclusion of the Examiner and deciding it likes that one better. What gives?
Stan E. DeloMay 23, 2012 05:58 pm
Toxic is as toxic does EG, to paraphrase Forrest Gump. That is why I almost never try to comment on Patently-O posts. I have been insulted by accomplished experts in the past, but being insulted by drive-by anonymous shootists tends to raise my hackles just a bit. At the end of the day, 6K and his ilk will not have to answer for proffering Bad Advice, but wait- they are anonomous so that they can’t be held accountable for anything!
Apologies to BD, SB and Anon for my upstart opinions.
step backMay 23, 2012 05:50 pm
EG, thanks for the pointer. I stay away from Pat-O for the same reason.
Stan E. DeloMay 23, 2012 04:58 pm
I think the dog ate my last post or something like that.
Best wishes and condolences to Gene during a very difficult time. I had a very similar experience myself. Dorothy bounced right back for about 5 years after her treatments, but then it came back very quickly. I think it is very safe to say that she went to Heaven to be with my dad Ted. She mentioned that several times towards the end.
Thanks for this forum Gene-
EGMay 23, 2012 04:14 pm
Interesting you should ask that question. There’s been an interesting “debate” on the Plasmart v. Kappos case on Patently-O (one I won’t enter on that blog because of the “toxic atmosphere” present there) about whether the Federal Circuit panel’s reversal is based on “obviousness” being strictly a “legal question” or whether the Federal Circuit substituted its own “findings of fact” and “common sense.” Let me say that the panel’s justification for reversal of the BPAI ruling is pretty nebulous (the claimed invention represented “minor differences” over the art with little/no explanation why).
step backMay 23, 2012 02:16 pm
CAFC substitutes its own “common sense” in place of findings of fact made by the BPAI:
Is it just me, or does anyone else see something fundamentally wrong with this decision?
American CowboyMay 23, 2012 09:12 am
Max, next time you are in Abilene, please stop by and we’ll have a couple of cold brews and a chinwag about evolution.
Stan E. DeloMay 23, 2012 05:13 am
I would pretty much have to guess a bit, nicht whar? Therein lies the wizardry of being a very good patent attorney, or agent as they are known as overseas. While the patent is still pending, things still remain somewhat risky, waiting for possible prior art to emerge. Pharma over there is much easier than here, where approval for a new medication might take 5 years to get accepted by the US Food and Drug Administration. (FDA) Very safe and all like that, but meanwhile folks are suffereing for the wont of a useful cure.
MaxDreiMay 23, 2012 04:49 am
Stan, my simple point was the degree of difficulty (and therefore uncertainty) of establishing what is the last day of the patent term, as extended by the PTA.
In pharma cases, millions of dollars can hang on it. Even in everyday cases though, business needs to know what is the first day they can launch without infringing.
How would you fix the last date, if you needed to know it?
Stan E. DeloMay 23, 2012 04:21 am
A US patent is valid for 20 years after it has been filed as a Formal US application. Since the US patent office has been so buried lately in new and pending applications, they often grant a Patent Term Adjustments for up to 3 years beyond that limit. Some software applications might take about 6 or 8 years to issue. I like to think of it as being practical, instead of being cynical.
MaxDreiMay 23, 2012 04:07 am
Stan the German for journeyman is Wandergeselle.
Is there anybody here from a US law firm, that could explain to Stan how journeymen do the work and partners claim the credit. Nothing changes.
Then again, as I train young people in my firm to get their European Patent Attorney Meisterbrief, I tell them all the advantages they have, and announce our shared goal, that in ten years’ time they shall be doing my client service job better than I myself can do it today, It is ten years of hard work for them, but also for me and, together, but withouit it the future of the firm is at risk.
Look at the Pass Rate for that Meisterbrief, Stan. Of the sizeable EPO countries, UK is top, with about 50%. Compare the work product of those with a Meisterbrief with that of those that don’t have one. Then tell me whoi you want to handle your patent work in Europe.
I’m sorry you are so cynical.
Stan E. DeloMay 23, 2012 03:17 am
As I seem to recall, most of the Sistene Chapel was built by journeymen. The masters then came in a bit later and embellished and blessed it.
Stan E. DeloMay 22, 2012 05:05 pm
Is a Wandergeselle perhaps a wandering worker? I only studied Deutches for 2 years am hoch schulen. (Sp.Ck)
MaxDreiMay 22, 2012 04:55 pm
Good that you mention the journeyman concept Stan. Like a Wandergeselle, right? Bit like “the knowledge” that you need to get a licence to be a London black cab driver? But I like it, that when you get in a taxi in London, the driver will always know exactly how to get you where you want to go, by the fastest route. Course, today, it is all rendered obsolete by GPS navi systems in every road vehicle. The last journeyman wandered the earth about the same time as the dinosaurs, as far as i know.
MaxDreiMay 22, 2012 04:50 pm
Unfathomable Stan? Can you, for example, confidently fathom precisely when the term of any particular US patent comes to an end? Because i can’t. Must it be like that?
Stan E. DeloMay 22, 2012 04:50 pm
Do you know what the term journeyman means? It means that an apprentice has spent more than 5 years learning their trade, as has done business in at least 5 different countries, including how to speak fluently in at least 3 different languages. All during this time, they are only promised to be fed and adequately clothed for their aspirations and efforts to learn.
At some later point they are eligible to submit a *masterpiece* to the Masters of the Guild, wherein if the sitting Masters deem it to be worthy, they might grant a Masters status for the former *journeyman*. Sorta sounds a lot like the Good Old Boys syndicate to me though, where creative thinking is perhaps dangerous to their very existence.
MaxDreiMay 22, 2012 04:48 pm
Well Stan, thanks for reminding me that I am still a serf, in feudal Europe. I had forgotten that, again.
But you know what? Over here I feel free to debate politics or (say) Darwinian evolution. With visiting Chinese, you know what, I don’t go anywhere politics. What I find bizarre and scary though is that visiting American patent attorneys just can’t go anywhere near evolution.
So I feel more free here than I would there, thank you very much.
Stan E. DeloMay 22, 2012 01:45 pm
Unfathomable to whom Max? A German patent attorney? Much like Australia, the US is a rebel upstart former British colony, that became independent and free. As such, we tend a have a somewhat different view of our rights than has historically been the case in most of Europe for hundreds of years. No fiefdoms with their serfs and vassals and servants, and no Guild type of system.
MaxDreiMay 22, 2012 11:38 am
I bow to your judgement on that. Your decision of course, whether or not to stay with First to Invent.
US patent law is totally unfathomable. This gives home players an advantage. I suspect many Asian economies have noticed and copied that game plan. As usual, Europe has not even noticed yet.
Naively, I think patents should go to the party that is first to bring to the public some new and useful contribution to technology. I find First to File compatible with that public policy objective, and to Promote the Progress of Useful Arts, while First to Invent is a system that rewards parties other than that. The USA has for decades been the world’s leading software innovator but that is despite its patent system not because of it.
American CowboyMay 22, 2012 11:18 am
Thanks, Max. Yet another reason why the USA should not have adopted first to file.
MaxDreiMay 22, 2012 11:05 am
Sure. Alone among Patent Offices world-wide the EPO Examiners are examining in a language (English) that is not their native tongue. This leaves EPO Examiners hesitant and short of the confidence needed to admit prosecution amendments in a First to File jurisdiction. They reason that either the amendment is introducing new technical teaching, or it ain’t. If it is, well then it ain’t admissible. If it isn’t adding teaching, it isn’t serving any useful purpose, is it, so declining to admit it does no harm to the Applicant.
First to File raises the stakes for prosecution amendments. Rival corporate Applicants routinely try to capture by prosecution amendment the invention they have just seen in the A publication of a rival’s pat appln that was filed shortly after they filed their own but failed to see at the time the “real” invention now the subject of their rival’s slightly later filing. If they can capture it, they are in the driving seat, with the earlier filing date, even though in truth they were not first to file for that specific valuable invention.
Imagine yourself as an Examiner at the (say) Finnish Patent Office and Applicant wants to make such a prosecution amendment. Can you be sure your admitting it will not promote the second filer to first? Better to play safe? Might that explain EPO behaviour for you?
Beware amending an independent claim in prosecution at the EPO. Find out about the Art 123(2)/(3) fatal inescapable trap.(Perhaps it is Google-able).
Not all wheels have spokes. Spoked wheels have technical performance that unspoked wheels lack. If the invention is something where the technical effect (think non-obviousness at the EPO) needs spokes, and you didn’t specify spokes on your filing date but some other party did in its independent pat appln filed one day later than you, on the same invention, then that other was First to File and NOT you and you ought not to be permtted by prosecution amendment to misappropriate his First to File status to yourself.
How’s that for starters?
American CowboyMay 22, 2012 09:52 am
Max, can you explain for me why the EPO won’t accept amendments to claims that use words that did not appear in the original spec? If the applicant’s drawing shows a wheel with spokes but the original spec and claims only said wheel, you can’t add “spokes” to the claim. Why, from a public policy perspective, would they choose such a freedom-denying, constipated view?
MaxDreiMay 22, 2012 08:15 am
I can’t follow that Stan. Sorry. Nice story though.
Stan E. DeloMay 22, 2012 07:50 am
Interesting discourse Max. Your remark about Germans not settling for stifling patent laws is perhaps why a Yankee like myself doth protest so much when Congress is compromising my patent rights for no good reasons that I have been able to discern. My father told me once of returning from France towards England in his P-47D Thunderbolt, out of both ammunition and fuel. Nervous situation, as you might imagine, and sure enough, some small specks in his rear view mirror turned into a flight of ME-262’s approaching them from behind at a great rate of speed… (262’s were the first operational twin engine jet aircraft at the time)
Fortunately for my father and the flight he was in, the 262’s were apparently also out of fuel and ammo, and he said they flew by them going about 50MPH faster, with both their wheels and flaps down !?! They waved when they went by. I still have a great picture of my dad sitting in his first P-47, with Darling Dorothy painted on it, in honor of my mother, Dorothy J. Wiberg, nee Delo. They both lived to be 80 years old, and I still sometimes miss them very much, as they both became my very best friends once I grew up a bit and was wise enough to recognize it.
I like to think that my father Theodore Earl is flying a running weave above me, covering my 6 o’clock high, with my mom as his co-pilot. During the war, Dorothy was a Rosie the Riveter, assembling and soldering up electrical panels for Boeing B-17’s at their Seattle facility. Ted later went on to work at the Boeing wind tunnel model shop, building structural scale flutter models there until he retired. He told me they let him watch the final test of the 707- based AWACS flutter model that had about a 6-foot wing span, while they just kept spooling up the transonic wind tunnel until something broke. He said that just before the end, the wings were flexing about 180 degrees, and they figured that the two outer engine nacelles had collided during a down flap. The next time it flapped up, a motor was gone, but strangely enough, it didn’t break until it flapped down again. Boom! Gone in the blink of an eye, and they then went down and picked the rubble out of the big screen at the end of the tunnel to see if they could discover what might have gone wrong.
Stan E. Delo
MaxDreiMay 22, 2012 02:27 am
Hi Stan. Here’s the thing. Prior to 1978, Germany had the same patent law traditions as Japan, while England had much in common with the patent law of the USA. Both relatively complex, but in different ways. Then England and Germany decided to fuse their respective patent laws to create the European Patent Convention and Office. They needed definitions for novelty, obviousness, enablement, priority and claim construction that were acceptable to both countries.
Then there was the problem that England had English Common Law, binding precedent, discovery and cross-examination while Germany had Roman Civil law, no binding precedent or equity.
You as a designer will agree that design elegance comes from leaving things out rather than adding more and more stuff. Well, in the EPC, most everything that Germany thought indispensible, or England thought indispensible, had to be left out because the other country thought it unnecessary and could say why. Result: the only stuff you find in the EPC is the irreducible minimum. Is it elegant? I believe the results over this past 30 years speak for themselves. Is it useful? Well, from their conduct and patent law reforms you can see that most every country in the world thinks so.
Mind you, many German patent lawyers have difficulties with the notion that Europe might dare to depart in any way from the German way. I suspect some American patent lawyers are puzzled why the rest of the world doesn’t just stop trying to re-invent the American legal wheel.
But German patent law does allow small German companies to innoivate and grow. Germans would not tolerate anything else, for they are very proud of their power to innovate.
Mark you, I’m talking only about the substantive law of patent validity. There is no common European court for patent infringement yet (and i doubt there ever will be).
Stan E. DeloMay 21, 2012 05:45 pm
MD and EG–
Perhaps this resulted from the old hide the pea shell game that seemed neccesary to be able to switch from the First to Invent to a First Inventor to File patent system. Patrick and whomever else seemed to be a bit lost in how to create new laws that actually work as intended, with as little collateral damage as possible. There also seems to be a *Superior* sort of attitude coming from SCOTUS, who don’t especially even care whether they got things *right* or not. Somewhat like throwing a gauntlet down, and seeing who dares to challenge them. Sounds much more reasonable and considered in Germany than here in the US these days.
MaxDreiMay 21, 2012 05:21 pm
Ah, so if the wording of the statute changes then normally the earlier meaning becomes forbidden ground and one MUST switch to a meaning different from “disclosed”.
The way I see it i) one files a provisional to establish a PTO filing date , ii) there is no requirement in Paris that a priority document shall feature one or more claims iii) the Paris test for priority is whether the priority document is an application for protection of the “same invention” and iv) you look to the Statements of Invention in the specification of the priority document to see whether the invention stated there is the “same” as the invention of the claim in view, in the patent (or application) that declares the priority.
So I find it difficult to imagine even an unwilling Justice Breyer coming up with something other than that.
EGMay 21, 2012 05:06 pm
“I’m still puzzled why, for those with a mind willing to understand, there is still a need to clarify by adding ‘disclosure of.'”
Has all to do with the canons of statutory construction, MD, Pre-AIA, the “effective filing date” (see, for example, current 35 USC 120) was based on the invention “disclosure” in the application. But the AIA now bases the “effective filing date” on the “claimed invention” (unless you fall within 100(i)(1)(B)). Because of this difference in wording between pre-AIA and AIA, the canons of statutory construction normally mandate a different meaning/effect. The courts might still read in “disclosure of” before “claimed invention” for priority purposes, but it gets more difficult/murky to do so. Remember also we’re dealing with SCOTUS Justices like Breyer who can’t even get basic patent claim terminology right or will be governed by how the current patent stuatues read, so you can’t assume a “mind willing to understand” in this context.
MaxDreiMay 21, 2012 04:28 pm
Thanks EG. I see from AIA Sec. 3 that an invention is defined by a claim. I see that the claim defines “subject matter”. I see that the date of the claim is tied to the earliest date on which that subject matter was filed at the PTO.
I’m still puzzled why, for those with a mind willing to understand, there is still a need to clarify by adding “disclosure of”.
EGMay 21, 2012 01:01 pm
“Is there not in the AIA some provision or other that urges on any court tasked with construing Section 3 the duty to conform if possible with the provisions of the Paris Convention?”
No, but 100(i)(1)(B), if interpreted correctly, should comply with the Paris Convention. What I’m referring to is the odd language in 100(i)(1)(A) that makes the “claimed invention” define what the “effective filing date” is with reference to. What Ron K. suggested was that “disclosure of” should be inserted in front of “claimed invention” in 100(i)(1)(A); that would have kept priority the same as pre-AIA for all applications.
Randy LandreneauMay 21, 2012 12:02 pm
Gene – One thing you didn’t mention is protection of one’s conception prior to vs. after enactment of First-to-File. After March of 2013, your suggested method of using Provisional applications early and often is the ONLY way to protect oneself prior to filing a Regular Patent Application. NDAs will provide little real protection regarding patentable features that are not already covered by a Provisional. Unless the person who actually signed the NDA files the infringing application, winning a Derivation Proceeding in a real-world scenario will be extremely difficult because the injured party doesn’t have any subpoena power to use in discovery. So, any period of time where a patentable element has been conceived but not yet included in a Provisional or Regular application is a period of risk. If individuals other than the inventor are aware of such an element, the risk is greatly magnified. For this reason, under First-to-File, the only complete protection is for the inventor to be able to do everything without involving anyone else. Look how well that has worked for Europe.
MaxDreiMay 21, 2012 11:32 am
I’m baffled. How exactly is AIA Section 3 not in conformity with the Paris Convention? Is there not in the AIA some provision or other that urges on any court tasked with construing Section 3 the duty to conform if possible with the provisions of the Paris Convention? What’s to stop it doing so?
EGMay 21, 2012 08:28 am
“I was just pointing out though that there are portions of the new AIA that are not as dire as posted.”
Hopefully true. I’m just pessimistic that Section 3 of the AIA will be anything more than a trap for the unwary.
As Ron Katznelson astutely pointed out, more careful drafting of this portion of the AIA could have avoided such ambiguity. As Ron suggested, we should be talking about the “disclosure” of the claimed invention to be consistent with the pre-AIA basis for determining priority, as well as the Paris Convention. But then the Goliaths wanted all this “first to file” nonsense in the AIA, so that they got most the attention in drafting Section 3.
EGMay 21, 2012 08:14 am
“On a side note, it is so deplorable that some in politics want to remove patent coverage from medicine; as if people; out of pure altruism, would toil long hours in search of a cure for the many different kinds of cancers that might lurk within our bodies.”
I read Stiglitz’s article. He may be a Nobel laureate in economics, but he needs to get a grip on reality when it comes to drug development. Drug development, like money, doesn’t grow on trees.
Stiglitz makes the case that such drug develpment comes primarily from government sponsored-research. That’s simply not true, and he certainly points to no data to support it. While basic drug research does rely to a certain extent upon government funding, drug development and getting drugs to market is the domain of private enterprise.
A far greater impediment to drug development is the regulatory gauntlet that each drug must pass through to be approved. And having a sufficiently stringent regulatory process is absolutely necessary to minimize a “bad drug” getting into commerce. But Stiglitz makes no mention of that aspect of the drug development process.
step backMay 20, 2012 11:33 pm
Gene– so sorry for your loss.
We sometimes take our parents for granted while they live, only to regret that we didn’t spend more time with them while we could have.
On a side note, it is so deplorable that some in politics want to remove patent coverage from medicine; as if people; out of pure altruism, would toil long hours in search of a cure for the many different kinds of cancers that might lurk within our bodies. See: http://www.project-syndicate.org/commentary/a-breakthrough-opportunity-for-global-health
Stan E. DeloMay 20, 2012 11:14 pm
Very well said Paul. I once dreamed up about 5 ways to do what I wanted to do, but after having to actually build a few very small Working models, I discovered that I only seemed to have one and a half concepts.
I then went on to do a very extensive patent search, to avoid the ouch factor of trying to go where others had already been before.
During the search that I did personally, I found that little bits from 1873 or whenever sometimes filled in the missing pieces of my puzzle, so to speak. I chased wind turbine patents here in the US back to before the patent office existed (X-patents) and was somewhat astounded at how much had gone before.
Know the history, or you might be doomed to repeat it to no avail perhaps.
MaxDreiMay 20, 2012 05:19 am
Nice post Paul. Reminds me of John Cleese in Clockwise:
“It’s not the despair, Laura. I can take the despair. It’s the hope I can’t stand.”
Paul ColeMay 19, 2012 06:14 pm
Years ago the firm I worked with had a cartoon in its front office. It showed an early 19th century steam engine and a man in the tail coat of the period carrying a rail on his shoulder. And he remarked to his colleague as he passed: “It’s not the inventing, its carrying the rails I hate!”
If the idea has not progressed to a workable prototype, or at least the plans for a workable prototype, then I am not sure that patenting is the best way forward. The inventing team is insufficiently formed, and you need to get others on board and convince them that this is a viable product, and it will lead to products, or at least ideas, worth selling. So confidentiality agreements and further research may be better than starting the patent process rolling.
But I agree a patent search is not a bad idea. It will show what others have done and provide valuable ideas to go into the inventive pot.
Stan E. DeloMay 19, 2012 12:15 am
That would be Dr. David Kiewit, hailing from Florida currently. I think he has a doctorate in computer science if I recall it correctly, as well as a physics degree and a few other things. Also a Very funny and fatalistic kinda guy to talk to on the phone, which is a great help just for encouragment factor if nothing else. I have looked at thousands of patents searching, and what he wrote for me made most of them seem confusing and somewhat obtuse by comparison.
step backMay 18, 2012 11:18 pm
Who is Uncle Dave?
Stan E. DeloMay 18, 2012 07:39 pm
Good point EG-
That is why I had my first agent write claims for the PPA, to make very certain that the language in the specification matched the terminology used in the claims. Actually that is sort of backwards in my opinion though, as many practitioners prefer to write the claims first, and then build the specification to suit and set the stage for the claims. After seeing what uncle Dave wrote for me in the formal app, I think I am a big fan of the latter approach.
Hope is also sort of an invisible raiment, like the Emperors new finery, that will rarely deflect very real slings and arrows.
AnonMay 18, 2012 05:45 pm
Thanks EG, not bad advice, considering “hope” makes a lousy suit of armor.
I was just pointing out though that there are portions of the new AIA that are not as dire as posted.
EGMay 18, 2012 02:50 pm
“I believe that “such invention” must be read in context, that is, along with the right of priority under items.”
That’s the Hope (Best Case) but I can also see the Dread (Worst Case) scenario with new 100(i)(1) of the AIA like SB warns. For that reason, putting claims into a provisional is a good idea and will also give you the further benefit of providing a “disclosure” in the event it’s missing from the provisional spec (which can happen given that provisionals are all too frequently filed at the 11lth hour).
Stan E. DeloMay 18, 2012 02:42 pm
No worries here, and this discussion seems to be a good example of how goofed up and confusing the language of the AIA actually is. Hopefully Kappos and et al will present a tech amendment to Congress to try to make things clearer and less ambiguous.
Stan E. DeloMay 18, 2012 02:03 pm
Yes I believe I am catching the drift. Also, while preparing my PPA we treated it just like a formal app, including a full set of claims. When my agent filed it, we just didn’t include the claims. We waited the whole year before filing the fromal app, which gave me time to keep checking for prior art in emerging publications or non-published issued patents.
I hope I don’t have any nasty surprises before my patent issues about 2 years from now, but ‘ya pays yer money, and ya takes yer chances’…
AnonMay 18, 2012 11:03 am
I believe that “such invention” must be read in context, that is, along with the right of priority under items.
As these right of priority under items have not changed due to AIA, so too, the effective filing date does not change.
I have faith that Stan can follow along.
step backMay 18, 2012 10:28 am
“—(i)(1)(B) may soothe some anxiety.”
What is a “such invention”?
(Apologies to Stan-the-man: Sorry about this, a bunch of lawyers starting to dissect the actual statutory language in the America Invents (Not) Act of 2011.)
AnonMay 18, 2012 09:59 am
To shine a little more light, from H.R. 1249 as pased:
‘‘(i)(1) The term ‘effective filing date’ for a claimed invention in a patent or application for patent means—
‘‘(A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or
‘‘(B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section 120, 121, or 365(c).
‘‘(2) The effective filing date for a claimed invention in an application for reissue or reissued patent shall be determined by deeming the claim to the invention to have been contained in the patent for which reissue was sought.
‘‘(j) The term ‘claimed invention’ means the subject matter defined by a claim in a patent or an application for a patent.’’.
(i)(1)(B) may soothe some anxiety.
AnonMay 18, 2012 09:49 am
Mixed emotions on this.
I have always noted the ease of getting into difficulties to my clients with provisional applications, as there is a general inclination to view these as cheap, dirty and quick. But cheap dirty and quick exemplifies the adage of you get what you pay for, and I attempt to instruct my clients that a provisional should be treated just as diligently as a non-provisional if you want it to have any substantive value or if you think you are going to actually depend on that item.
step backMay 18, 2012 07:44 am
No claims to examine?
Bubble bubble, toils and troubles
The ides of March approach:
(Section 3 –
Amends federal patent law to define the “effective filing date” of a claimed invention as the actual filing date of the patent or the application for patent containing a claim to the invention)
MaxDreiMay 18, 2012 03:10 am
Stan thanks for that, but:
Businesses being disrupted? Submarine patents per se a good thing? I’m not as sure of that as you are.
Or is all that out-of-the-blue disruption of investment in established, reputable, vigilant, doing-the-best-I-can, play-by-the-book, American-owned businesses and employers sorry just the price that they have to pay?
I guess ROW is just not yet convinced of that.
Actually, nor am I (but then, I’m not an inventor).
Stan E. DeloMay 17, 2012 11:01 pm
Also just filing in the US allows inventors to use a continuous stream of Provisional applications while the tech is being developed. Refer to all prior apps, and just keep going until a Formal app seems to be warranted. Many of the earlier permutations might be easy for others to avoid, but there are no claims to *examine* at all.
Won’t they be so suprised when a patent issues about 4 years later that is *disruptive* of their business model? That is the Quid pro quo here in the US, and if others don’t like it that is not my fault.
Stan E. DeloMay 17, 2012 06:43 pm
I think this is the clearest exploration of this subject that I have ever read. I have been attending a few *Inventors* forums for about 10 years, and there has always been a steady stream of “inventors” that just seem to have an arm-waving sort of idea about what they have to offer and how wildly successful it will be.
Upon further inquiry into where they might need some help, it often becomes evident that they have not even done a rudimentary patent search on their own, much less a market search to find products that are not patented that might make a patent application worse than useless.
Sage advice, as while the US economy is a bit depressed right now, it is still arguably the richest market in the world. Once Americans have to start looking at gasoline prices upwards of $6 per gallon, it might give them pause to consider alternative sources of energy for a change, instead of just buying old dinosaur energy that is by it’s very nature extinct. Coal is way too tempting, as there is so much left, but it is almost All carbon.
I heard from my local meteorologist here that in the US, temperature records have been broken 14,000 times in only one year in various locations. (Usually large cities.)
Blind DogmaMay 17, 2012 09:57 am
Great advice MaxDrei. I of course would add the step that all such filings include a second review before the Paris year of priority lapses to see if the small inventor has changed their mind (for whatever reason).
MaxDreiMay 17, 2012 08:46 am
Excellent advice to inventors, all of it. I would add only one suggestion, and it’s this. Do not even think of filing outside the USA. Leave that to the corporate filers. You, as an entrepreneur/innovator/pioneer, can’t afford it that an enabling disclosure of your precious invention gets published in English, for all the world to read, just 18 months after your earliest filing date.
Instead, until that glorious day when you sell out to investors, spend all your available funds on the first priority, protection in your home territory, the richest in the world. Do also what Stan Delo counsels, though, and make sure the USPTO does not publish at the 18 month stage.
step backMay 17, 2012 08:26 am
I would simplify the problem by first dividing the world into two kinds of “I have an idea/dream” people:
1) Those who want something for nothing (in other words they contribute nothing more than a rough sketch idea involving minimal work and expect huge rewards in return); and
2) Those who understand they are going to have to put in (i.e. substantial investments) before they can expect to get anything of value (return on investment) out of the process.