Tips for Patentability Searching

Tips for Patentability Searching

By Frederic M. Douglas

© 2012, Frederic M. Douglas, All Rights Reserved.

Persons new to filing patent applications often have basic questions regarding patent searches. Should an inventor do a patent search? Is a patent search required? Does it matter when a patent search is done? What happens when nothing is found? What should be done when the inventor finds out that the invention is not patentable?

Patent searches are optional. There is no requirement in the U.S. that an inventor perform a patentability search before filing a patent application. Some rookie inventors are confused by the requirement that IF a search is done and relevant prior art is discovered, that relevant prior art should usually be disclosed to the patent examiner or the inventor may be accused of fraud. Note that still, a prior art search is not required, just passing on known relevant prior art from an optional search is required.

Some inventors take the position that they do not want a search so that they don’t find out any bad news. If they find out no bad news, there is nothing withheld from the patent office, as the inventor never had the bad news to reveal. Also, waiting for patent search results and later making needed invention changes, can delay a race to the patent office. Certainly, when the U.S. Patent Office switches to a first-to-file system on March 16, 2013, promptly filing patent applications will become more important.

However, the patent office does do its own patentability searches. So, at some point the inventor may find out the bad news that prior art bars getting a patent issued. By the time that the patent examiner conveys the bad news, the inventor has spent a considerable amount to prepare and file the patent application, waited several years for the first notice from the examiner, and invested funds on manufacturing and marketing the invention with an expectation of exclusivity. By the time that the inventor finds out that no patent will issue, the original patent application issues, telling the inventor’s competitors how to make and use the invention. Once the competitor finds out that no patent will issue, then they can exploit the technology with impunity without paying one dime.

Certainly, an inventor should consider the patentability search as similar to having a mechanic review a used car before purchase. While the mechanic will not guarantee that the car will not break down, you will surely find out if there are any clear mechanical problems before you commit to buying the car, registering it, and maintaining it throughout its lifetime. In the same way, an inventor should want to know if there are any clear defects in the idea of patenting an invention before committing to filing a patent application (registering) and paying thousands of dollars in maintenance fees to maintain the life of the issued patent.

Just like the reviewing mechanic cannot guarantee that the car will last forever, a patent searcher cannot guarantee that no prior art exists that could block getting a patent. The mechanic looks for bad news that can be discovered without taking every bolt and washer apart on the car. The patent searcher can look for prior art, in the searcher’s native language, on computer databases throughout the world. However, the patent searcher is not likely to be aware of a single copy of a Swahili-language doctoral thesis sitting on a library shelf in Tajikistan. Thus, care should be taken to have a very good searcher involved with an understanding that searching must reach as far as feasible but at some point must reach a limit.

Rookie inventors sometimes do their own patent search and claim that they found “nothing like it” regarding their invention. The reality that they are missing is that their search was not competent. While there is no way to find every single piece of prior art throughout the universe, there also is no way to search adequately and not find at least some things that are related to the invention.

Another issue for novice inventors is finding barring prior art after performing an adequate search before filing a patent application. The fact is that a patent searcher can only find what is publicly available. If a search is performed on February 1st and the patent application is filed on April 30th, the patent office examiner may come up with prior art that only published on February 2nd.

Unfortunately, it is rather common that a patentability search comes up with a ton of prior art such that there is no way to get a patent for the invention. The good news is that the bad news is discovered before spending time and money on preparing and filing the patent invention that would have been rejected promptly. The take home message for the inventor losing out on a patent search is that the inventor now has a thorough review of the prior art, which should be helpful to learn further aspects that can be incorporated into improving the invention. The inventor can now brainstorm with a focus on significant novel aspects of the invention above the prior art.

After further consideration of the unforeseen aspects of the prior art, the inventor should focus on noting what aspects are missing from the prior art so that the invention can contain several inventive steps above the general state of the prior art. To put it more bluntly, the inventor needs to get back to the drawing board and put more meat onto the present skeleton. The discovered pieces of prior art will help the inventor make progress.

 

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I Just Met Someone By Accident! What Do I Do Now?

I Just Met Someone By Accident! What Do I Do Now?

© Frederic M. Douglas, 2013. All Rights Reserved

Ages ago when I used to be a cab driver, I clocked over 3,000 miles each month on the streets of Oxnard, California. I never forget one night in which I observed an accident involving two cars. One guy, who I’ll call “Kaptain Krunch,” drove a car right into a car driven by “Krash Gordon.”

Image

     Kee-Runch!

      It didn’t seem that anyone was hurt, although the damage to the two cars was not trivial. I was always impressed on the way that they handled the aftermath.

      Kaptain Krunch and Krash Gordon stayed seated behind the steering wheel, just sitting there in the middle of the intersection. After awhile, Mr. Krunch drove off and left Mr. Gordon hanging there without any exchange of information or even getting out of the car to observe the damage. Then Krash Gordon was trying to restart his car with pieces of his and the other guy’s car sitting in the intersection. Krash eventually got the car started while Kaptain Krunch was still within eyesight and the surrounding streets were almost empty of traffic. As I watched, I thought that Krash Gordon would chase after the Kaptain. Instead, after tentatively getting his jalopy to move forward, Krash Gordon turned in another direction and drove off without going after Kaptain Krunch. My impression was that after the first guy took off, the Krash Gordon must have figured that he did not want to call the cops or bother with an insurance company. Maybe he did not even have insurance and maybe he had warrants out for his arrest. Either way, it seemed that both guys thought that the practical response was to just brush off the dust and forget about the accident, or at least beat it before a cop shows up.

Well, when you meet someone by accident, what do you do? Do you hightail it out of there like Kaptain Krunch and Krash Gordon? Or do you blow your stack and start yelling at the other driver? Perhaps, you do neither, but you still should think practically like those other guys, by putting things in perspective, but hopefully not missing key details.

If the accident involves a death or major injuries, there is no magic solution to that situation. Call 911 and attend to the injured. If alcohol or drugs are involved, you have major problems beyond the scope of this piece. This article is more helpful for those types of accidents known as “fender-benders.”

Before you learn some things to do in case you get in a fender-bender, consider driving safely to minimize your chance of meeting someone by accident. You can avoid accidents by making safety a priority. Perhaps you think that everyone on the road is an idiot and you’re the only smart one out there. That’s fine, but since not everyone else is able to handle driving properly, dumb down the process for them. They get confused when you turn without signaling, cut off people because you don’t want to anticipate lane changes, roll through stop signs, stop over the line in intersections, or do other unexpected maneuvers. Stay with the traffic flow – don’t go too fast and don’t drive too slowly. If you miss your turn, go around the block and get it right next time instead of cutting off the texting driver behind you that will end up rear-ending you.

Do you really need to be at that boring meeting on time? If some idiot crashes into you because you just have to make it to the lousy job on time, you’ll be even more late, have less money, and less enjoyment in your life. Leave earlier.

Now, despite your good efforts, you still meet someone by accident. First, is anyone hurt? Attend to hurt people first, call 911. Next, yell at the other driver, “You idiot! I knows mah rights. You done messed up! Ef you!” That might not calm things down well, but you’ll feel good. By the way, smile, because you will probably be on camera. There are surveillance cameras everywhere and all those texters behind the wheel are snapping video of you acting in your best form. Rest assured that you are making evidence that can be used against you later.

So, stay calm, and think. Don’t sit there and wait like Kaptain Krunch and Krash Gordon. Get out your proof of insurance (you do have insurance, right?), drivers license, and registration. Put your best foot forward. You don’t need to admit anything, but you could say, “I’m sorry that we had an accident.” Maybe your peaceful demeanor will make the other drive calm down.

Do not argue about what happened, such as what color the light was, or who got to the intersection first. There is no need to waste your time and nerves on useless endeavors. The other driver is not likely to say, “Well, you are absolutely correct. I was wrong and I now owe you a million or two for your damages.” Worse, you may say something that can be taken against you.

Now, you want to make sure that you gather the relevant information to help you legally if there is further litigation. Look at the identification. Is that really the person who was driving? People with bad driving records will often carry their brother’s or someone else’s license around and present that one so that no one finds out that they don’t have a valid license.

Does the driver’s name match the registration and the proof of insurance? Perhaps the driver is driving someone else’s car, maybe their boss’s car (kaching!). If so, the true owner of the car could be liable for letting that numbskull drive the car when the owner should have known the driver’s bad record or lack of a license.

Take photos of the documents and the license plate. Take several photos of both cars to get a good record of the respective damages. You want to avoid the other driver later exaggerating the amount of body damage.

One thing to watch out for is when the other driver tells you that they will not report the accident to their insurance company or the DMV. Don’t trust them. Often, they say this and later you receive a notice from their insurance company and a letter from the DMV saying that you were in an accident that you failed to report. Perhaps they went home and friends and family convinced them to report the accident, slap a white collar on their neck, and other things. In California, the DMV can suspend your license for not reporting a traffic accident. You trusted the other driver and now you lose your license because you didn’t fill out a form.

Now, think about the amount of damage to your vehicle and the other vehicle. Is your damage under your insurance deductible? If so, what’s the big deal? I once had a shifty person try to avoid giving proper proof of insurance and he had nonsense excuses that he couldn’t wait for the police to arrive to investigate the accident. Smells funny, right? Yes, it smelled funny, but I was lucky enough that the amount of damage to my vehicle was minimal. I could have run the whole thing up a flagpole and asserted my rights (“Hey, I’m a lawyer! You’re going to get nailed for this!”). I could have made his life miserable, for a while. However, it already is miserable for him. I would need to spend my time to investigate him, pay court fees to file a suit, find his proper address to serve him with a lawsuit, and convince a judge to issue a judgment, all of which costs me more time and money than my deductible. After all of that  time spent chasing after him, I could make more money working on paying cases for clients, or at least spent my time writing lousy articles like this one. My accurate information was exchanged for his questionable information, but I brushed it off and moved on.

Frederic M. Douglas is a solo practitioner specializing in litigation involving intellectual property (patents, trademarks, trade secrets, copyright, and more). Mr. Douglas has been registered with the U.S. Patent and Trademark Office for over 12 years. Before college, he drove a taxi for eight years in Ventura County California.

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Patent, Publish, Or Keep It A Secret?

Patent, Publish, or Keep Secret

A rudimentary flow chart for the types of decisions advisable for figuring out whether to apply for a patent for an idea, keep it confidential as a trade secret, or to publish the idea to block others from patenting the idea. Consultation with an intellectual property attorney is preferred than merely relying on this chart.

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Eight Tips For Inventors Planning To File A Patent Application

Eight Tips For Inventors Planning To File A

Patent Application

© Frederic M. Douglas, 2010. All Rights Reserved

1. When you get your stroke of genius and come up with an idea, WRITE IT DOWN! You need to create a record of your invention before going any further.

You should list:

(a) A full and complete description of your idea;

(b) The date (very important);

(c) Your signature; and

(d) Dates and signatures of at least two people to witness and understand your having invented your invention.

2. Don’t blab about your invention to anyone without a written confidentiality agreement.

3. Keep written records of your progress in developing the invention:

(a) Write down all modifications, experiments, alternatives, and other details.

(b) Keep copies of any emails, notes, letters, text messages or anything documenting discussions with others.

(c) Keep receipts for anything that you buy for your invention, including parts, software,

consultant costs, marketing costs, advertisements, or anything having to do with your invention.

(d) Yes, these records must be in writing and dated.

4. Assess the marketability of your invention.

A suggested rule of thumb to determine whether your invention will sell well is that the total sales will be at least twenty times the cost of inventing and patenting it.

5. Do a patent search:

(a) Is your invention novel?

(b) What is the prior art?

(c) If you are improving on something that has already been patented, is your invention a new physical feature, a combination of prior separate features, or a new use of a prior feature?

(d) If you are improving something that has already been patented, is your invention not

obvious (e.g., does it have an inventive step)?

(e) Does your invention produce a new and unexpected result?

6. Plan on filing your patent application sooner rather than later.

(a) Mostly, there no longer is a one year grace period after public disclosure in U.S. There are some exceptions, but it is too complicated to explain in the limited space here. It is better to operate as if there is no grace period as the U.S. is now on a “first inventor-to-file” system;

(b) Only 6 months in Japan; and

(c) No grace period in Europe.

7. Consider the pros and cons of filing a provisional patent application:

(a) First things first – it is not a “provisional patent.” It is a “provisional patent application.” Do not trust anyone that does not bring up the fact that the provisional patent application never automatically becomes a regular patent application without doing something extra. There is no such thing as a provisional patent. Remember this; the patent office doesn’t even read your provisional application. They just take your money and stamp it with a date;

(b) Pro: Save money and time. Saves your place in line before competitors, while you can work on marketing, developing technology, and deciding whether to expend additional funds. Big companies often file provisional patent applications; and

(c) Con: Why wait? If a competitor files a regular patent application while you have only filed a provisional patent application, then the competitor will probably beat you in getting a patent first. If your place is saved in line, but the other person is ready to buy their ticket now, you’re out of luck. To prepare a quality patent application, you have to spend a great deal of time stressing over many details. If you spend the time to do it right for a provisional, you lose nothing by filing a real application now.

8. Work with an experienced lawyer who is registered with the Patent and Trademark Office and who does patent work for a living.

Frederic M. Douglas is an IP litigator, dedicated to pursuing practical resolution of problems concerning patents, trademarks, copyrights, trade secrets, and other areas of law.
fdouglas@cox.net
(949) 293-0442
http://DouglasPatents.wordpress.com
http://www.linkedin.com/pub/frederic-douglas/17/37b/7a1

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Patent Validity: Offers to Sell an Invention Before Getting a Patent

Patent Validity: Offers to Sell an Invention

Protect Your Ideas
Be careful when selling an invention before filing a patent application.

 By Frederic M. Douglas; douglaspatents.com

© January 14, 2002, Frederic M. Douglas, All Rights Reserved.

                   Q.  When does an offer to sell bar patenting an invention?

                   A.   When a commercial offer of sale is made.

 General Discussion

If a patented invention is sold, or even offered for sale, more than one year before the patent application date, then a U.S. patent is unavailable.  Many foreign countries refuse patents even if the offer to sell occurs only one day before filing for the patent.

While the definition of an actual completed sale of a patent invention is self-explanatory, one needs to determine what type of offer for sale would prevent patenting an invention after one year.  A disqualifying offer for sale would be one ordinarily considered by businesspeople to be an “offer to sell.”  Such an offer would allow the offer recipient to form a binding contract by simply saying, “I accept your offer,” if consideration is involved (usually a price).

Suggestions

Keep negotiations on a preliminary basis regarding selling items, to a third party, until after filing a patent.  Quoting price estimates, quantity estimates, and delivery time estimates should not present a problem so long as the third party clearly should not expect to be able to submit an order for the item immediately.

Provide your patent attorney with sufficient advance notice before offering to sell, as many foreign countries will prevent us from obtaining a patent once an offer to sell is made.  Whenever an offer to sell is provided, contact your patent attorney, on the same day, so that you can intelligently decide to file a patent in the U.S. before the one year deadline.

Examples of language that suggest a legal offer are, “I offer” and “I promise.”  Examples of language that suggest mere preliminary negotiations are, “I quote” and “are you interested.”

Legal Mumbo-Jumbo

The following has been discussed in Linear Technology Corp. v. Micrel, 2001 U.S. App. LEXIS 27386 (Fed. Cir., Dec. 28, 2001) and Group One Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041 (Fed. Cir., June 15, 2001), pet. cert. filed Nov 5, 2001.

Section 102 of Title 35 of the U.S. Code provides in relevant part that “[a] person shall be entitled to a patent unless . . . (b) the invention was . . . on sale in this country, more than one year prior to the date of the application for patent in the United States . . . .” To prevail on an on-sale bar defense, an accused infringer must demonstrate by clear and convincing evidence that “there was a definite sale or offer for sale of the claimed invention prior to the critical date, defined as one year prior to the U.S. filing date to which the application was entitled.” Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1216, 48 USPQ2d 1010, 1018 (Fed. Cir. 1998) (quoting Pfaff v. Wells Elecs., Inc., 124 F.3d 1429, 1433, 43 USPQ2d 1928, 1931 (Fed. Cir. 1997), aff’d, 525 U.S. 55, 142 L. Ed. 2d 261, 119 S. Ct. 304 (1998)).

Under Pfaff’s test, the on-sale clock begins to run when two conditions are met: (1) “the product must be the subject of a commercial offer for sale”; and (2) “the invention must be ready for patenting.” 525 U.S. at 67.

Under Group One, interpretation of Pfaff’s commercial offer-for-sale prong thus requires the application of traditional contract law principles to the facts of the particular case. Because the on-sale bar involves questions of patent law requiring national uniformity, Group One declined to rely on the law of the particular state in which the transaction occurred, instead holding that the existence of an offer for sale should be analyzed “under the law of contracts as generally understood.” Group One, 254 F.3d at 1047, 59 USPQ2d at 1126.  Group One further instructs that the Uniform Commercial Code (“UCC”) should inform the analysis of the contractual issues. Id. (“As a general proposition, we will look to the Uniform Commercial Code (‘UCC’) to define whether, as in this case, a communication or series of communications rises to the level of a commercial offer for sale.”). Of course, the UCC is a model code–it does not itself have the force of law and no body of case law has explored its provisions. Instead, it has been enacted with modifications in the several states. Thus, the body of case law from which we must draw guidance under Group One is that of the state and federal courts interpreting their individual versions of the UCC.

Preparation alone cannot give rise to an on-sale bar under Group One.  As noted in Group One, “contract law traditionally recognizes that mere advertising and promoting of a product may be nothing more than an invitation for offers, while responding to such an invitation may itself be an offer.” Group One, 254 F.3d at 1048, 59 USPQ2d at 1126. Accordingly, “in any given circumstance, who is the offeror, and what constitutes a definite offer, requires looking closely at the language of the proposal itself.” Id.

Frederic M. Douglas (fdouglas@cox.net) is a solo practitioner specializing in litigation involving intellectual property (patents, trademarks, trade secrets, copyright, and more). Mr. Douglas has been a patent attorney registered with the U.S. Patent and Trademark Office for over 11 years.

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Benefits to Getting a Patent

Often, people are unsure as to whether to apply for a patent or to go “naked” into the marketplace. Consider this list of benefits to owning a patent and talk to a registered patent attorney if you have further questions.

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Three Types of Patents

This video describes the different types of patents.

Often, novice inventors are confused as to the various types of patents. This list is a good starting basis for understanding the various types of patents.

fdouglas@cox.net

Copyright 2012, Frederic M. Douglas. All Rights Reserved.

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