Patent Questions

A thorough patent search for relative prior art can be quite time-consuming and, based on my experience, I would not consider a month excessive. It's also a matter of cost and who and how many are conducting the search; attorney, agent, paralegal, etc. Accelerated time can also mean accelerated cost.

I usually conduct my own search prior to contacting the patent attorney and provide the results to the attorney. Usually saves some legwork.

Patent attorneys and agents are usually employed by firms that specialize in propriety intellectual property (patents and trademarks) or are themselves specialists in those fields. As such they are bound by attorney-client privilege and would not normally be required to sign a confidentiality/non-disclosure agreement.

Attorneys and agents must be registered in order practice before the US Patent and Trademark Office (USPTO) and there are listings of those who are currently registered.

Google "registered patent attorneys".

Thanks for your answer .

I guess I assumed his semi- retirement would allow him more time to spend on my idea.

I did a search myself and presented that information as you had suggested.

I will check a registry as you discussed.

But I think I feel better with what you said , I guess I felt like I handed over my child and I was a little concerned .

Thanks again for your reply

tranditional,

The extent of a patent search can and does vary. one has to make a reasonable effort in the search.

What is a reasonable effort? That the tough question, the more through the better, When you meet with him, ask.

phoenix911

I have found these resources very helpful with patent questions...
Inventors Forum 
InventNET
National Inventor Fraud Center

it all depends on his level of support staff. A retired guy might be able to put a lot of time on it, but he will then want $200/hour, or even more. Has he given you a cost estimate for the prior art search?

I paid him $375

I would suggest to stay away from InventNet. I had a very, very bad experience with them!

I have an update!!!

The patent search was a dud.

I was informed my idea is not unique.

I disagree and what I'm looking at, in previous art, is not what I have, so I have a dilemma I still think I have a viable product.

At this point I really don't care about turning a profit I would simply like to see my great idea be available .

Any thoughts

for the $375 were you at least given a list of the Patent(s) that represented pre-existing information - with this list, you could at least investigate them to see if some elements of your ideas still have patentability - Just as importantly, you need to know that if you proceed, that you aren't infringing on any patents still in force -

and just because your idea isn't patentable doesn't mean that you shouldn't proceed.

Jim

Thanks Jim for encouraging words

I thought to investigate weather previous patent holders have done anything with there patent .I would guess after going through the process inventors may be financially and emotionally drained and never have the energy to push there idea to the market.

Or why the idea was not well received and why.

Maybe it was worth the money to put that idea to bed and move on to the next one.

Although the prospect of suffering through years of advancing a patent sounds like a dismal prospect.

I especially like your last line I have considered that option and appreciate your positive attitude

After many years of advancing patentable (or in the end not) ideas, we did find that as soon as we had an idea fleshed out, some preliminary sketches, perhaps one or more possible prototypes (although they don't have to yet exist) or concepts that looked saleable we proceeded with writing it up and getting provisional patents in place where we knew that within one year we might produce enough prototypes and or product to 'sell' to users - this kept our 'place in line' date(s) valid.

The other nice thing was that we could do this and the information doesn't become public during that year. However, it must stressed that you have a year to move forward or basically abandon this information to the public. Did you check out the patent sites? especially like the Delphion site -

Another good 'next step' then at after the provisional is to generate and issue a tightly written 'confidentiality memorandums' with a select few of your intended best users or customers - in return for their input about the product, it's features, how it should be packaged, distributed, sold etc. they get to be 'innovators' inventors etc. into your product. As you get input (good and bad) always thank them with a taste - perhaps some discounted or free product once you are ready to sell (email me and I'll give you some thoughts about how to get into distribution once you are ready to 'sell') for their efforts and you will create a very strong marketing tool to pull your product through distribution channels.

Keep the faith - new products meeting customer needs is the answer to business long term viability.

Jim

Thanks Eagertask

For some we'll articulated advise .

I plan to take all the good advise and connections and regroup.

If nothing else,I have better insight on how to proceed , in the elusive patent quest .

Thanks to everyone else that offered their insight

INVENTConnect say they do it in about 7 to 14 days, depending on the search and whether it involves wider implications such as PCT or foreign claims...

In Australia, an Independant Patent Attorney is one source for a patent search as well as many Government sponsored agencies can provide very simple searches for a lower fee to begin with and they simply do not provide you with legal opinion or advice.

Check out INVENTConnect www.inventconnect.com.au and INNOVIC www.innovic.com.au as they can both provide such low cost services.

Anyone going the route to patent should be aware of the drawbacks. I submitted a design in February 2000 and the final grant is in process so it has taken over 8 years from start to finish. The costs are astronomic with annual renewal fees, translations etc and we are now faced with the costs of establishing a patent agent in each of the countries we are interested in - this means 20 plus in Europe alone with the same number of translations into each language!

When you submit your patent it is better to use a firm which has experts in several disciplines so that he/she fully understands the principle of your idea. A patent must be very carefully written both in legal and technical terms - you wouldn't expect a patent agent who is an engineer to fully understand a complex electronic theory and vice-versa so mistakes could be made which will render your patent worthless or easy to get round. You will also need to discuss the technical side of your patent and fight off challenges from the patent office so using the same or an equivalent standard agent will be a big help unless you want to go through the explanation all over again. If your agent is semi retired will he be there in 4 years time to fight your case?

I know of some patent applications which could only be understood by someone like Professor Stephen Hawkinge - does your agent fully understand your idea???

During the time your patent application is grinding its way to final grant, technology will be moving on and often your idea will be obsolete by the end of the process so you must continue to develop and grow your initial idea so that it can be taken up by a manufacturer on its own merits. A patented idea isn't worth much unless it it is practical, manufacturable and fills a gap in the things people need.

Sorry to be so negative but Patent application by an individual is a VERY expensive and often traumatic process so think very carefully before you spend the next $350 its a bit like gambling, you get sucked in and might be lucky but ....

I wish you every success - where would the world be without inventors.

Tom

Thanks for your comment Tom

My idea is actually very simple and I have a working model in fact I could go into production but I would like to take it to a supplier that already makes similar products and I'm afraid I won't have any success without a patent application .

I could go ahead and produce it right now but I don't think I would ever overcome the difficulty's in distribution.

I explicitly made it to retrofit widely distributed products and I wish I could simply go ahead and offer it up to a company but I am unable to because they can't talk to me because of legal issues.

I would be happy to risk getting ripped off rather than go down the road you described.

I think I know exactly where you are at right now - its a very tricky situation. If you go to the manufacturer they will probably try and cut you out by saying:

a) they already have that principle/design/idea on their own files which may be true.

b) they would like to work with you to develop the idea further. This might get you success, but they may also drop you from the team after sucking out the last drop of your idea and then go on to develop their own version.

c) their designers might see a possible use for your design, but with their experience in that market will design something slightly different and possibly better and not proceed with your version.

Be very carefull of venture capital organisations too - they will offer you lots of money to develop the idea, but most of this will disappear into their own running costs, advisors, 'experts' etc and your patent will go to them by default when the money runs out! Always, always use a properly drawn up Confidentiality Agreement.

If this agreement is on your computer you can rewrite it for everyone you have to deal with - it shows you mean business and might just keep the predators in line.

With my initial idea I designed several different versions which used every possible way of manufacturing it and hope to rely on the design copyright as much as the patent. This is not a worthless exercise as it adds value to the intellectual property and covers some of the ground that a future manufacturer would have to cover. You will have to go to a manufacturer eventually unless you know a kindly millionaire who loves your idea.

I am now in the position of getting my product marketed with our own Company name and have interest from a big supplier of similar products. Lets hope this baby gets off the ground this year! This process has cost me getting on for $90K and an enormous amount of time, (lost a lot of hair too!!!) but after the first couple of $1K you can't go back or dump it!

If all else fails put your experiences down in writing - who knows your book might make you more money than the initial idea ever would.

Tom

Thanks Tom

It is a quagmire that has kept me from doing anything for years on any of my ideas I would rather take them to the grave rather than getting ripped off, but one day a couple of weeks ago I decided to risk all the perils and went ahead and jumped off the cliff.

I posted a disscussion a while back that explored a dream I've had. a invention development company that would be run by inventors rather than sharks .

The day I have the money ,or other people that have, come forward I would be thrilled to help myself and others avoid the pitfalls of inventing and be able to get down to the actual work of inventing rather than paperwork and financial gambling.

Trad,

In general, a patent attorney/agent ought to provide an engagement letter before beginning any work, which states the service to be provided, the cost (sometimes fixed, sometimes estimated), the delivery date for the work, and payment and other terms. That is basic good practice.

That being said, 2 - 3 weeks is not that long a time for getting results. I do this full time (I'm a long ways from being retired, semi- or otherwise) and my backlog right now is ~6 - 8 weeks.

The cost you noted in a subsequent post actually sounds very low. I'm not sure what level of searching you will get for that price. There are simple keyword searches, and then there are full class/subclass searches done per the procedure recommended and followed by the US Patent Office. There are also multiple patent databases to search - US, EPO (Europe), WIPO (International), JPO (Japan), etc. (Another reason for an engagement letter - to define the scope of the search.)

In the US, you can find out if he is a registered patent practitioner at this link. You do not really need a non-disclosure agreement if he is an attorney. Attorneys (patent or otherwise) and patent agents (through their oath in the Patent Office) are bound to maintain all information provided by a client or prospective client in confidence forever.

If you are not comfortable or satisfied, you are the client - you can fire him anytime. You can likely expect to be billed for any work done to date (and are entitled to be given the results of that work if you are billed).

Good luck to you.

jhammond

____________________________

www.patent-innovations.com

Thanks for the link J

I would have expected a contract as well

a quick search did not give results but I may need more information to get results .

I may be wise to withdraw as my gut feeling tells me something is wrong but he was local and easy which may in fact be a formula for a problem .

I'm coming up on three weeks so I'll let it ride for now but if I have problems I'll let you know

Go to http://cr4.globalspec.com/thread/20158 and look at this guy. Retrofit idea, millions of applications, and he is giving it away. And he is the winner. Alternatively, follow my route, declare your idea and the process of inventing, manufacturing and selling your idea, to be a work of art. As such you get automatic free copyright because you are an artist and therefore cultured, not some grubby fingered engineer.

I am developing "openhorse" for horse equipment as a concept to rival "open source" for software, and you can see my big idea on my site . I'm not paying lawyers to stop my work being stolen, I am getting it out there, used by customers. It isn't making money yet, but seven years devlopement with customers finding new ways to cock it up, has taught me loads.

And finally, the more ideas you launch out into the world, the more you have. And remember, they may be able to steal the money, and even steal the credit, but they will go to their grave knowing that their fortune was built on theft.

Simon

Saddle dude

That thought has occurred to me but it seems unreasonable that an inventor should be denied an ability to turn a profit .

With all the money that is squandered for so many government programs it seems ridiculous that there is no help for people developing the tools of the future.

I can't understand why Bill Gates or some other entity hasn't seen such a need , or a successful inventor hasn't stepped up.

Why couldn't a pool be established to loan to prospective inventors ,who in turn would repay from the proceeds of their success.

By the way the previous discussion I started was "Philanthropic Invention Corporation" 2/07/2007.

It was interesting but apparently lacking in support.

I am not saying you can't get a profit, but with a rule book written by lawyers, the rules seem to say they get the profits. So why not call it art. And the open source computer guys are making money.

Maybe we need a new definition of engineer (Oh no, not another) which defines an engineer as someone who only works for corporations that acknowledge original ideas and pay the originator. Ethical engineering anyone. And I will look for your link to the pooling resources idea, but i think we need to tie it to an ethical framework because the existing legal one clearly doesn't work.

Simon

Simon

In reply I think it's a reasonable idea to establish a system were inventors are treated fairly.

In other forms of business the adage of a win win situation holds true and in practice there is general fairness in business.

The unique aspect of inventing is the need for secrecy, by eliminating that need everything else falls in line with conventional business .

What's lacking is a structure that pools the resources of many people to have the clout to stand up to any legal and financial challenges .

This is unlikely to happen due to the nature of inventing which is not conducive to sharing ideas better yet resources.

While there are obviously a multitude of services available it is impossible to know who to trust,as they are for profit organizations and have there own interests.

I wonder if it's reasonable to have a philanthropic invention development group that could address these problems?

For what it is worth....and years of dealing with lawyers and the patent office...I will pass on a thought held by some engineering people,i.e... When you write a patent you tell your competition exactly how to replicate your work. After your work is reversed engineered by your competitor, you can hire some legal eagle to fight for your rights. After paying your eagle to help you gain protection you pay him,her or it, (and the patent office)for years to obtain satisfaction. Finally after years of eagle worrk and your idea has proven profitable in the market by your competition, you are advised to settle and learn that you finally get everything the chicken laid except the egg!

Inventorman is absolutely correct. Over my long career in industry many of our most creative, proprietary products and processes were not patented (and we had patent attorneys on staff). Patents can actually benefit potential competitors by shortening their "catch up" time. The burden of proof of infringement, and the associated costs of prosecuting patent infringement, falls on the patent holder.

Provisional patents, which are relatively inexpensive to file, were mentioned and they do provide limited protection for one year.

Since the original poster mentioned that he planned to approach an established manufacturer after ensuring that his invention was protected, another thought is to approach that manufacturer to see if they pay for outside inventions. Many companies actively solicit outside inventions and pay a percentage of sales to the outside inventor if they produce and sell the product.

Thanks for the above input I think in my case a provisional patent might be the appropriate avenue .

I am sure what I have can be easily altered and I refuse to go down a loosing road .

I had a previous patent I backed out on about 20 years ago realising there would be limited use for my specialized devise.So I understand your points .

What I have is an improvement on existing devises so in fact I may be inadvertently infringing on other ideas although I independently worked on my idea since 1990 .

But there is little indication anyone has solved the specific problems that make my

concept readily and cheaply manufactured ,user friendly both in size and construction and ready for the market.

I'll investigate the sites provided and thanks again for the input

From experience - developing your idea is the easy part.

The cost of getting a patent plus the legal loopholes can make you wonder why you even tried.

I do not mean to be so negative but have experienced a few bad attempts.

Unfortunately the patent laws are not in favor of the inventor. There are to many loopholes that make it easy to change your invention a little and steal it from you.

I have found it better to develop the idea and market it without patenting. Let the company with the power get the protection.

If you are not able to market it directly and want to manufacture it yourself then file a provisonal patent application. The protection is about the same as a full patent but a lot easier on the pocket. Even if you do not want to manufacture it yourself you have some protection while you are trying to market it.

There are some companies that will help you without a big expense if you have a good invention. I have worked with one that has given me the honesty and effort expected. The first thing they do is an evaluation for marketing your invention. It can be very helpful to know how your invention fits into the market possibilities before you start spending a lot of money. After the evaluation you can choose how you want to proceed. www.lambertinvent.com Many times (myself included) the invention does not fit the market like the inventor thinks it will. Only 2% of inventions actually make the inventor enough to cover the expenses. Do not let your pride and ego get in the way of commonsense.

If you go with a patent lawyer - be careful. Go with a larger firm and stay away from a retired individual. You will pay more but you will get results. The first time I went with a local reputable lawyer that had handled many patents for people I know. He did a good job writing the application and filing it. Then he past away from a heart attack and had no one to take over. I had to find another lawyer who charged me almost the same to handle the patent application as it cost to get it filed. Of course every problem was blamed on the original application.

Now I file a provisional and market the invention.

Good luck - we inventors are just feed for the volchers.

I would be excited to find a good honest group of inventors that wanted to work together. So far that has been impossible.

Chuck

Spot on Chuck, as they say "There may be a gap in the market, but is there a market in the gap??"

Simon

Since you are talking to a Patent Attorney, let me make a couple of suggestions for you to inquire about -

a) It is VERY important that you establish patent materials BEFORE you sell any of this stuff - particularly in the US and Canada - you may want to take most of your written materials and execute a "Provisional" patent now - this gives you a year in which to do more research, establish sales without disclosing all etc, but drives a "date stake" into the ground - shouldn't be too expensive, just a couple hundred dollars, plus the attny time - versus the thousands of dollars to write up the final patent application, submission and defense of over time that you will eventually do - Downside to the Provisional is that you have to act on it in a year. Generally Provisionals are good in fast moving markets where it is likely that a competitor will beat you to the punch for the date, or where you have low confidence in patentability or more importantly sales abililty

b) you can order a "patentability search" which generally go in the range of $800 to $2500 or more depending on how deep you want to go - Generally after about $1000, the law of declining averages kicks in and you get progressively little more information as the cost goes up. On the other hand, you could look into a patent site - www.freepatentsonline.com or www.Delphion.com to search some for yourself to start with. I personally prefer Delphion since you can download the entire printable patent for $3.00 each as PDF files for your own study - sort of up to you.

so, in general, recommend Provisional Patent first, then a patentability study before spending thousands on the formal patent.

I will also point you to a helpful thread I posted earlier -

http://cr4.globalspec.com/comment/96874

This was in answer to an inquiry where someone needed injection molded and extruded plastic parts to be produced to sell into distribution.

A simple search for trade shows for "insert your product here" etc will lead you to several of the more than 2000 important trade shows each year - a walk through these to see how they 'sell against other similar products' would be of benefit.

Questions, let me know. Good Luck

Jim

thanks Jim I appreciate the input

I'll read up on those sites and move ahead

This entire discussion has been very informative and I appreciate all the help offered .

I am a patent attorney. Let me share some thoughts.

A perfect patent without a good invention is useless. If people don't want to buy it for the price you want to charge, then the whole exercise is going nowhere.

You never patent an article; you patent a feature of the article. And that feature has to be both new and un-obvious. The scope of your patent coverage will never be broader than the feature that meets these qualifications.

The feature has to be new based on world literature; it's not just prior patents that count. If you don't find your feature, then the search is never over. If you do find your feature, then it can't be patented. And the search is over.

People will not buy your product because it's patented. Would you buy a book because it's "copyrighted"?

A perfect patent directed to a feature that people want to buy is not very valuable if there are close substitutes. The value of a patent is the gap that separates it between the feature that is protected and the closest substitute, combined with a feature that people really want.

There is more that could be said, but that is enough for now.

Venturer

My issue is why where other patents issued over previous art.

When I see the minor changes that allowed the patent I don't see why my minor changes or differences don't equal the same .

For instance the hand held calculator over a desk top

The major difference is size as with the generation of the cell phone .

In my case my invention ,that I independently worked on since 1990 ,overcame the issues of size ,portability and low manufacturing cost .

Although similar patents have been issued they are bulkier , complicated , and have inherent drawbacks so they will never see the market place.

I am concerned the examiner failed to see those subtleties and dismissed my idea as prior art cobbled together.

Venturer replies:

It all depends on what you are endeavoring to cover by your patent claim. If your patent claim was:

"I claim a smaller calculator"

then the examiner would most certainly object that this can't qualify as an invention because making something smaller is obvious. The quoted claim is also objectionable because "smaller" is indefinite.

The tragedy of the patent system is that inventors don't make the effort to learn the principles of patenting. Then they complain that they have been unfairly treated. And they later find out that they have been "taken advantage of" by their patent agent who met his promise to obtain a patent for them. But a patent on a triviality is a trivial patent. It is the job of the patent attorney to learn about and understand the invention. But conversely, the inventor should also understand what the patenting process is all about.

I think you may have over simplified my examples

Obviously stating something is smaller wouldn't do it but having a working model of a hand held cell phone would .

See the patent holder for qualcom phones .

I think I understand the differences as is exemplified by the issue of subsequent patents that lead to a more current one .Even a revision of a patent holders invention will be issued a patent for it's new twist.

So thanks again and I'll work on the next one .