Posts Tagged: "independent inventors"

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 date of invention relates to your conception. This is true whether you are engaging in an interference proceeding seeking to obtain a claim instead of another who is also seeking the claim, or you are attempting to demonstrate that you can get behind a reference used by an examiner because you have an earlier date of invention. The hallmark of a first to invent system is that those who file second can obtain a patent under very strictly limited scenarios. A byproduct of a first to invent system is that if the examiner finds prior art you can “swear behind” the reference using a 131 affidavit to demonstrate that reference is not prior art for your invention. In both the interference context and the 131 affidavit context there needs to be proof of conception that will satisfy the patent laws.

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.

There are three major things that need to intersect to make a licensable product,” Lambert said. “First of all, you have the patentable side. Either it is patented or patentable, because essentially what we are licensing is intellectual property. Second, is the product marketable, meaning people want to buy it? Does it have unique features that people like, or need, or want. Lastly is it commercially feasible? That means that you can sell it, or make and sell it, for certain margins.

It takes time to prepare a detailed written disclosure that will support any number of claims, and there is just no way to rush it. Inventors and entrepreneurs intuitively know this, but they get lured into believing that what they get for $1,400 is just as good as what they would get if they paid $8,000, which is unrealistic of course. You cannot fall for what you want to hear when you deep down know it makes no sense. If you aren’t convinced ask yourself this: when you were in school and you had to write a paper for a grade, was the resulting paper better if you spent more time or less time working on the project? The reality is the more time you have to spend the better the work product.

There are a number of things that you need to know about the invention and patent process that can help you focus your efforts and know what obstacles lay in front of you. Once you conceive (idea + game plan) you will need to be diligent and not let any grass grow under your feet as you move forward toward defining and experimenting with your invention. Generally speaking, conception without diligence can cause the first person who invents to lose the right to the invention assuming someone else invents after you but files their patent application first. So, the moral of the story is once you have your idea and the game plan move swiftly. The law realizes that so-called “garage inventors” cannot quit their day job, but the law will also require proof that you are consistently moving forward and not shelving the invention for periods of time in favor of other endeavors.

In some circles this pilot program has at times been characterized as providing for an extension of a provisional patent application to allow it to remain pending for twenty-four (24) months. That is not technically an accurate way to articulate what the new pilot program will do, and for those who might want to avail themselves of the soon to be announced pilot program it is worth getting a handle on some of the finer details of the proposal. The effect could look like an extension of a provisional patent application, but there are special steps that must be followed.

I was pleasantly surprised to see inventors from all over the country, coming from New Jersey, Georgia, Florida and elsewhere. The Inventors Conference provides a truly unique opportunity for independent inventors to interface with patent examiners, high ranking USPTO officials and many industry experts. The two days are filled with programming that includes some “if I can do it, so can you” talks from successful inventors, even Hall of Fame Inventors, who share their stories of dedication and success. Also featured are substantive learning opportunities for inventors, such as how to write claims, why file a provisional patent application, patent searching, foreign filing and more. There is also ample networking opportunities for inventors, and time slots where inventors can receive free consultations with industry experts.

Like anything in life worth doing, the path of an independent inventor from initial stage idea to making money can be challenging. If it were easy then everyone would be a rich inventor. Luckily for those who have the determination to pursue innovation as a business it is not easy enough for anyone to do, which means that there are opportunities available. One of the keys to successfully making money as an inventor is understanding that those who are successful operate in a business responsible way, and this requires closely monitoring expenditure of funds. While you may want to rush out and build a prototype you need to be careful. There is nothing like the show and tell of a working prototype to lure investors, partners and licensing deals, but inventing is better viewed as a marathon than a 100 yard dash, and preserving capital is absolutely essential if you are going to be successful.

I frequently am told by inventors that they have searched the marketplace and cannot find anything like their invention. I am also frequently told that they have done a patent search and cannot find anything that remotely resembles what they have come up with. While there are many reasons for not finding prior art, just because you do not find prior art does not mean that there is no prior art that needs to be considered. In fact, it would be extremely rare (if not completely impossible) for there to be an invention that does not have any relevant prior art. Said another way, unless you have invented something on the level of an Einstein-type invention there is prior art. Even the greatest American inventor, Thomas Edison, faced prior art for the vast majority of his inventions.

Keeping an invention notebook or other invention record is an extremely wise thing to do, and in fact should be done by every inventor. As with so many things in life, however, there are a number of ways to do it correctly, and any number of ways to do it wrong. Compounding this is the urban myth, propagated by some scam companies over the years, which suggests that sending a description of your invention to yourself through the mail is beneficial to protect your invention. Unfortunately, protecting an invention is not so easy.

In this edition of News, Notes & Announcements, happy birthday wishes to IPWatchdog.com for celebrating our 11th year online and a heartfelt thank you to all our readers. Additionally, the TiVo patent used to sue Echostar, the litigation at question in the en banc review at the Federal Circuit, survives reexamination at the USPTO. Professor Thomas Field (UNH) publishes the 21st edition of his IP casebook, which is now online in royalty free version; the USPTO is hosting the National Trademark Expo this Friday and Saturday on campus in Alexandria; the USPTO is hosting the 15th Annual Independent Inventors Conference on November 4-5, 2010, and I will be there teaching two sessions of patent claim drafting; US Commerce Secretary Gary Locke visits the USPTO and the AIPLA will host is Annual Meeting next week.

I continually preach to inventors the need to follow what I call a “business responsible” approach, which is really just my way of counseling inventors to remember that the goal is to not only invent but to hopefully make some money. Truthfully, the goal is to make more money than what has been invested, which is how the United States Congress defined “success” in the American Inventors Protection Act of 1999. Odds of being successful with one of your inventions increase dramatically if you engage in some simple steps to ensure you are not investing time and money on an invention that has little promise.