I asked Ron Slusky to share some insight from his new book on patent prosecution and claim drafting. The book is titled Invention Analysis and Claiming: A Patent Lawyer’s Guide (American Bar Association 2007). [Currently $51 on Amazon
] Information about the book, including extensive excerpts, can be found at www.claim-drafting.com.
The following are Slusky’s “five prescriptions for effectively analyzing an invention and then claiming it.”
1. Identify the inventive concept by beginning from the problem that the inventor set out to solve and then asking how, broadly and functionally, the inventor solved that problem
The popular alternative approach of drafting a claim of some indeterminate breadth directed to the embodiment(s) and then whittling that claim down will surely result in a broader claim to the embodiment(s) than what one started with. But that approach may still miss the broad invention because if words defining the inventive concept are not present in the original claim—e.g., a new and non-obvious functional interrelationship—such words are unlikely to somehow magically appear during the broadening process.
2. Begin by drafting a problem-solution statement rather than a claim
As just noted, drafting claims should not be the primary vehicle for discovering the invention. The structural formalisms of claim drafting, while perhaps familiar and facilitating, can all too easily mislead us into thinking we have discovered the inventive forest when we have actually only identified some of its trees.
Begin, instead, by drafting a problem-solution statement and use that as the basis for drafting the patent application’s broadest claims A problem-solution statement is a single sentence stating as broadly as possible, but without reading on the prior art, a) the problem the invention solves, and b) the inventor’s solution to that problem. Here, for example, is a problem-solution statement for a seminal invention of rocket pioneer Robert Goddard:
The problem of enabling a rocket to carry a large amount of combustible material while keeping the weight of the rocket as low as possible is solved by successively feeding portions of the material to the combustion chamber from a separate casing containing the supply of combustible material.
This leads directly to the following claim appearing in Goddard’s U.S. patent 1,103,503 issued July 14, 1914:
A rocket apparatus having, in combination, a combustion chamber, a casing containing a supply of combustible material, and means for successively feeding portions of said material to said combustion chamber.
3. Dream Up Alternatives, Including Some Farfetched Ones
A powerful tool for analyzing an inventor’s embodiment to extract the inventive essence is to dream up some alternatives to the inventor’s embodiment(s), including some alternatives that are farfetched. These are embodiments that, while outlandish or “wacky,” would nonetheless solve the problem to at least some extent. The more farfetched the better. The point is not to claim, or even to disclose, these embodiments in the patent application. The point is that even a farfetched embodiment can solve the problem without involving some of the implementational details required by practical embodiments. Thus dreaming up farfetched embodiments is a way of isolating the essence of the invention from its illustrative implementational details. Thus, for example, envisioning that a touch-tone telephone might have miniature trained parrots to whistle the various tones might be the key to realizing that the idea of using tones to signal from a caller’s premises to the telephone network was not limited to the use of oscillators and physical push buttons, neither of which are used in, for example, web-based telephony systems like SkypeTM.
4. Endeavor to discover “What’s Really Going On”
One way of gaining insight into the breadth of an invention is to ask oneself What’s Really Going On? or—more completely—What’s Really Going On to Solve the Problem? The word "really" in this question emphasizes a search for the fundamental problem and the fundamental solution. What is going on really? The exhortation to discover What’s Really Going On? invites us to exercise our technological curiosity; to dig down and discover what the invention is accomplishing at its essence; to understand what is going on at the 50,000-foot level; to see the invention in terms of fundamental causes and ultimate effects, without all the stuff in between. Thus answering What’s Really Going On? means figuring out—and ultimately claiming—what it is that solves the problem in at least a rudimentary way—not what solves the problem in the most elegant, efficient or commercially attractive way. Indeed, competitors may sacrifice a measure of elegance, efficiency or even commercial attractiveness in their products if it means being able to get into the market or avoid paying a patent royalty. Or they may devise their own elegant, efficient or commercially attractive implementations. Try to identify what is common among all of the embodiments, including some “farfetched” embodiments that the inventor and attorney may be able to collaboratively dream up, as described above. Identifying that which is common to all of those embodiments provides a good start to answering the question “What’s Really Going On?”
5. Envision the “Opposing Team”—the potential infringer and his patent attorney
When analyzing an invention and drafting claims based on the analysis, do not focus solely on what the inventor has done. Focus, rather, on what some competitor may do that takes advantage of what the inventor has done while avoiding the claims. The Opposing Team will be poring over the claims after the patent issues, looking for limitations that their product does not meet, or for some way to redesign the product to that end. Thus as each word, phrase and structural element appears on the computer screen, the claim drafter should imagine himself to be the Opposing Team and try to think of a way around that limitation, just like the real-life Opposing Team will do. In short, the patent attorney endeavoring to further his client’s interests is aided in that task by taking on the mindset of a competitor’s attorney endeavoring to further his client’s interests.
Direct link for you guys:
link to law.mercer.edu
Good reading all around. It was by a professor and two students.
They address Solomon v Kimberly-Clark Corp as well.
No, I haven’t read that, but it sure as heck would be a good read. We were discussing all that a few days ago.
Anyone read “Save a Little Room For Me: The Necessity of Naming as Inventors Practitioners Who Conceive of Claimed Subject Matter” by Hricik, Geczi and Thomas?
“E6K has no idea what he is talking about.”
I wouldn’t go that far, I always recommend a continuation. I mean come on, who doesn’t want to extend the opportunity to gobble up more subject matter their attorney can invent for them?
“I have a feeling that “Renegade” is Tom Barniak, Jr.,”
Truly astounding memory anon has today.
I have a feeling that “Renegade” is Tom Barniak, Jr., who, about a year ago, was stoked about his tool invention and his ability to write his own patent application:
link to patentlyo.com
It appears that he’s compounded the initial mistake of drafting his own patent application with a second mistake of prosecuting that application. I hope he doesn’t make a third and fourth mistake by failing to file a continuation and failing to seek professional assistance.
Renegade,
E6K has no idea what he is talking about. If you are serious, I agree with Red Dog. file a continuation before your patent issues because you may not recognize how narrow your claim is.
Renagade – Seriously, Man. File a continuation before you pay your issue fee and have a professional look at your case. There are way too many traps for you to fall into in this field. The examiner does not know how to draft claims for litigation. Hubris will get you burned here. It would be a shame to see your invention stolen because of ego / a dislike for lawyers.
I’m a guy who always looks ahead (almost always in the abstract). Anyone in this cybor blog a contingency fee-based rabid salava-eschewing litigator type? I’m going to need one. 50-50 or 60-40 alright with me. Tool inventors have a pss-poor track record for not getting infringed or outright stolen from- i’ve read the cases- big tool company somehow beats them almost everytime while they rip them off. There’s no doubt this is going to happen to me-don’t want to be USC,without the proverbial paddle. Other pending apps. on usefull entities will most likely be ripped also-possibly in pending period- one of them was published a few weeks ago. New claims capture the essence of the invention, but the fact that it was rewritten gets a potential infringer and its attorney gleeful, i’m sure. Who wants to take on Snap-On, Matco, Lisle, or Mac- maybe all of them? Patent to be granted approx. 2-3 months. BTW, can’t help but notice EK6 is kicking some royal arse lately in this thread.
“PS JD, I do know the difference in aquiring an interest and in co-inventing.”
Clearly you don’t. The rules forbidding an attorney from acquiring an interest in the application (e.g. by way of a security interest or assignment) is a prohibition on a particular fee arrangement between the client and the attorney. That situation is a violatin of the rules of professional conduct.
An attorney who lists himself as a co-inventor, and then signs a Declaration stating that she/he is a co-inventor, when she/he is not a co-inventor under the law, has committed fraud. Very different situation.
You simply don’t understand what you are talking about. It just goes to show you, examiners can read all the case law they want, but without the education to understand what they are reading, it’s all rather pointless.
What, prey tell, do you believe that that I’ve been talking about, other than 112 2nd, for the entirety of the last 30 posts or so? Uncaring eyes because you just got owned in the face by your own citation just like nearly every discussion we have.
Here’s a rundown of the important parts for you. 112 2nd supports my assertion that the inventor is not to invent for the applicant and that only what the applicant regards as his invention may be claimed. The judge recognizes this. He then says that in the case before him the evidence was not clear and convincing enough to invalidate the patent under 112 2nd because when reviewing an issued patent the inventor’s own testimony cannot usually be used as probative evidence. Bottom line is, you’re doing something you shouldn’t be when you claim subject matter the applicant didn’t invent (or at least subject matter the applicant isn’t smart enough to understand even after you tell them about it), and you can get caught easily during prosecution if evidence arises, but it’s very hard to catch you after the application issues. Grats to you for routinely breaking the law in a manner you’ll likely never pay the price for. At least until someone manages to get a case up that will change things.
Were you attempting to make a point in your diatribe? If so, it was lost in the muttering, grunts, moans, and wailing that you call your writing.
I doubt that anybody read that case other than Roger and myself, and I only looked at the part that Roger cited. As such, your wonderful little missive about 112 has fell on uncaring eyes. Next time, try to stay on topic ….
“of my analyze” lol.
Oh, and hey in-house, nah, only deps to subject matter which is common knowledge get the ol’ official notice.
Just perusing the case is amusing.
“A disposable woman’s protective menstrual panty for holding a feminine napkin comprising:
a relatively thick layer of disposable absorbent material; and
”
A “Relative term” that the ordinary artisan has no way of ascertaining the degreee of right in the first line of the claim. Unless this is a rare case where they show what they mean in the spec.
Now for the actual analysis of what the panty liner case tells us about 112 2nd and 102f. Let’s start out near the top. Please do correct any portions of my analyze with which you take issue.
“In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) (citation omitted); see In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969). Thus, in the more fluid environment of patent examination, an inventor’s statements are relevant to determining compliance with the statute.
On the other hand, when a court analyzes whether issued claims comply with section 112, paragraph 2, the evidence considered in that analysis should be more limited. As for the “definiteness” portion of section 112, paragraph 2, our precedent is well-settled that a court will typically limit its inquiry to the way one of skill in the art would interpret the claims in view of the written description portion of the specification. As we stated in Personalized Media:
Although we have not specifically addressed the types of evidence that may be considered in analyzing whether a claim complies with the “which the applicant regards as his invention” portion of that statute, we see no reason for a different standard to apply, as the rationale for reviewing a limited range of evidence under either portion of the statute is the same.
A more limited range of evidence should be considered in evaluating validity as opposed to patentability under either portion of section 112, paragraph 2, because the language of issued claims is generally fixed (subject to the limited possibilities of reissue and reexamination), the claims are no longer construed as broadly as is reasonably possible, and what the patentee subjectively intended his claims to mean is largely irrelevant to the claim’s objective meaning and scope, see Markman v. Westview Instruments, Inc.,
[C]ommonly the claims are drafted by the inventor’s patent solicitor and they may even be drafted by the patent examiner in an examiner’s amendment (subject to the approval of the inventor’s solicitor). While presumably the inventor has approved any changes to the claim scope that have occurred via amendment during the prosecution process, it is not unusual for there to be a significant difference between what an inventor thinks his patented invention is and what the ultimate scope of the claims is after allowance by the PTO.
Markman, 52 F.3d at 985, 34 USPQ2d at 1335 (citation omitted). We find this analysis equally compelling in the present context, as the determination whether a claim complies with section 112, paragraph 2, is “drawn from the court’s performance of its duty as the construer of patent claims.” Personalized Media, 161 F.3d at 705, 48 USPQ2d 1888. Although we recognize that “which the applicant regards as his invention” is subjective language, see Donner, supra, ch. 9.VIII, at 933, once the patent issues, the claims and written description must be viewed objectively, from the standpoint of a person of skill in the art, see Markman, 52 F.3d at 986, 34 USPQ2d at 1335.
”
If your patent is under examination, you’re supposed to get busted for their being evidence against the claims not being what the inventor regards as their invention, but if you get your claims through then a lot of the evidence is thrown out and not considered. So hilarious. Our courts are nearly off the chain with their comedy act. The courts find that inventors are incapable of performing their duty under 112 2nd so they let them off. Hilarious. Almost beyond belief.
In any case, this case proves beyond doubt that if you are shown in litigation to have done what Solomon was accused of having done (though it appears they had evidence of another prototype that showed they invented the whole thing) when there is clear and convincing evidence to back up the accuser then your patent will indeed get shot down under 112 2nd or alternatively 102(f), probably both. This decision states however that inventor testimony should not be the basis of such evidence when considering 112 2nd:
“For the foregoing reasons, we conclude that inventor testimony, obtained in the context of litigation, should not be used to invalidate issued claims under section 112, paragraph 2.(5)”
(Because of the reasoning that the claims have already issued and inventors are too dmb to comply with 112 2nd. and that the evidence is not of probative value)
And 102(f):
“While an inventor’s statements made during the course of litigation might in some circumstances justify a court in concluding that the named inventor “did not himself invent the subject matter sought to be patented,” 35 U.S.C. ? 102(f), it would require much stronger evidence that the named inventor was not the true inventor to justify a conclusion of clear and convincing evidence of invalidity. Despite some vagueness and inconsistency in Solomon’s deposition testimony, she maintained throughout that she invented the claimed subject matter, and she submitted evidence that the DX2 prototype in her patent attorney’s files embodied the claimed invention. Moreover, the DX13 prototype actually supports Solomon’s position, as she has consistently maintained from the outset of the litigation that her invention includes panties and panty liners with a depression of uniform thickness. See Solomon I”
And finally, we get to the portion that PDS et al. like to take out of context:
“As for the suggestion that Solomon’s attorney might be the true inventor, we regard that argument as misguided. An attorney’s professional responsibility is to assist his or her client in defining her invention to obtain, if possible, a valid patent with maximum coverage. An attorney performing that role should not be a competitor of the client, asserting inventorship as a result of representing his client. Cf. Patent and Trademark Office, U.S. Dep’t of Commerce, Manual of Patent Examining Procedure app. R ? 10.64 (7th ed.1998) (“Avoiding acquisition of interest in litigation or proceeding before the [Patent and Trademark] Office”). Thus, to assert that proper performance of the attorney’s role is a ground for invalidating the patent constitutes a failure to understand the proper role of a patent attorney. Accordingly, we conclude that the district court did not err in rejecting Kimberly-Clark’s section 102(f) invalidity defense. We therefore need not assess the remaining evidence presented by Kimberly-Clark, or reach the parties’ arguments relating to 35 U.S.C. ? 256.”
Where the court states that it believes that the attorney’s role is to assist the client in defining their invention and that they should not start taking credit for what the inventor invented. And by that reasoning asserting the practicioner has performed his duties properly is not ground to invalidate the patent. And most notably the court fails utterly to mention any part about the attorney inventing for the client being proper, but that such an assertion of them inventing the invention is not grounds to invalidate a patent (presumably issued). Thus, it would be very difficult to invalidate a patent under 102f for this reason.
Overall I agree, especially with the parts about 112nd, except for the whole ignoring evidence after issue, and I will might cite this case in a case I have before me right now. I can’t issue this thing, at least one claim was invented by the attorney (as evidenced by their statements) and if it makes it to issue then the level of evidence required to invalidate it on the grounds of 112 2nd goes through the roof.
And finally pds, I notice that the DC agreed with me about 112 2nd (the invalidated the patent under 112 2nd at first before appeal). Not to mention, the Fed. Circ. agrees with me as well, but finds certain evidence not admissable after issue. “A more limited range of evidence should be considered in evaluating validity as opposed to patentability under either portion of section 112, paragraph 2, because the language of issued claims is generally fixed (subject to the limited possibilities of reissue and reexamination), the claims are no longer construed as broadly as is reasonably possible, and what the patentee subjectively intended his claims to mean is largely irrelevant to the claim’s objective meaning and scope, see Markman v. Westview Instruments, Inc.,” Where we see specifically that there is an inquiry to be made into either portion of 112 2nd but that admissible evidence after issue is limited and thus they overturned the DC.
So lolzors, I win pretty much the entire argument about 112 2nd. Though I will concede that it would be hard to nail someone for breaking it, especially after issue. But hey, since you have no qualms about breaking it then go right ahead. A case will come up eventually where evidence that is admissible will be found and that particular patent will get shot down after issue.
This has been another issue of “E6k confronts lawyers with the truth, the lawyers fight back with caselaw that supports E6k and fail horribly”. Be sure to tune in next time!
PS JD, I do know the difference in aquiring an interest and in co-inventing. And I also know that there are different ways of acquiring an interest. Can you guess which one I’m interested in for the topic at hand?
Posted by: e6k | Jun 30, 2008 at 02:28 PM – “Tell you what, next time I see an application that I know is an amalgamation of common knowledge I’ll just official notice it with no search and without addressing dependents . . .”
From my read of e6K’s comments on this board, I can’t tell if this would be different than what E6K does normally.
“Help me fletch out my idea ok?”
FYI: The expression is “flesh out my idea.” Expanding on an idea is not comparable to a bad Chevy Chase movie.
I would be happy to help out your relatives. However, they need to have a patentable idea first and enablement (remember that 1st paragraph of 35 USC 112). They come up with that I’ll be more than happy to make a bad Chevy Chase movie out of their idea.
Too funny …
You clearly do not understand the difference between acquiring an interest in the application and being named a co-inventor. They are not the same thing.
So what did your panel of legal experts, er, I mean, group directors, tell “your assoicate” this morning?
You cite a case that cites this:
” A practitioner shall not acquire a proprietary interest in the subject matter of a proceeding before the Office which the practitioner is conducting for a client,
except that the practitioner may:
(1) Acquire a lien granted by law to secure the practitioner’s fee or expenses; or
(2) Contract with a client for a reasonable contingent fee; or
(3) In a patent case, take an interest in the patent as part or all of his or her fee.
(b) While representing a client in connection with a contemplated or pending proceeding before the Office, a practitioner shall not advance or guarantee financial assistance to a client, except that a practitioner may advance or guarantee the expenses of going forward in a proceeding before the Office including fees required by law to be paid to the Office, expenses of investigation, expenses of medical examination, and costs of obtaining and presenting evidence, provided the client remains ultimately liable for such expenses. A practitioner may, however, advance any fee required to prevent or remedy an abandonment of a client’s application by reason of an act or omission attributable to the practitioner and not to the client, whether or not the client is ultimately liable for such fee.”
as the sole (that you showed anyway, I don’t have time to read the case just now) basis for their opinion that patent attorneys are to invent for the inventor.
Beyond ridiculous. The section says that the attorney SHALL NOT acquire a proprietary interest in the subject matter. It does not say that, “while inventing for the client the attorney does not acquire a proprietary interest”. That passage supports my position that the attorney shall not be inventing for the inventor more than it supports the trumped up “An attorney’s professional responsibility is to assist his or her client in defining her invention to obtain, if possible, a valid patent with maximum coverage [by inventing for them]”.
The very TITLE of the section “Avoiding acquisition of interest in litigation or proceeding before the Office.” states in no uncertain terms that acquiring an interest is something that must be AVOIDED and is not merely prohibited.
If you want to cite the misguided bs that courts are trumping up to support an unsupportable position, here, I’ll cite some slightly off base but slightly appropriate things as well. § 10.23 Misconduct (c) (2) (ii). Nobody here will dispute that an inventor signing his name to an invention he did not invent is misleading information.
Maybe you caught the SC decision about the 2nd amendment? I just heard a speech about it on the radio today stating the very things I was thinking. It’s outrageous that reasoned arguments are not given proper weight in the justice system today, Scalia was barely able to pull 4 justices onto his side of a blatantly correct reading of the 2nd amendment, what kind of insanity is going on in our courts these days?
I agree whole heartedly with “An attorney’s professional responsibility is to assist his or her client in defining her invention to obtain, if possible, a valid patent with maximum coverage.” But that has reasonable boundaries, and that is common sense as well. Otherwise, I should get in on this. Which attorneys amongst you have some really good ideas for me a juicy overclaim that will be valid, everyone will be soon infringing, and one of my relatives can take credit for? Give me your phone numbers please, I look forward to retiring on your invention. I can even give you some starting out ideas. A car that flys, is stable in the air, doesn’t use fossil fuels, hauls 4 people, is cheap, is small, and is very safe. Help me fletch out my idea ok? What do I really mean by “a car that flys?” What’s needed to make it work? Give me some specifics! I need some claims already, the market is just starting out! PDS, invent for me man! Don’t hold back, I gave you what I invented, help me fletch out the idea and claim it really good!
Somewhere E6k’s head is exploding after reading that case…
I’ve a dude, when a patent is marked as new invention for 18 years of life or marked as derived for 10 years of life?
Why some derived patents have 18 years of life?
Why foocked 36 or more years for some derived and renewed patents?
I haate wait 18 years for being proohibited to implement an owned thing and another 18, it’s 36, for the same older modified lately.
Roger:
Thanks for the case cite. The full passage is reproduced below:
“As for the suggestion that Solomon’s attorney might be the true inventor, we regard that argument as misguided. An attorney’s professional responsibility is to assist his or her client in defining her invention to obtain, if possible, a valid patent with maximum coverage. An attorney performing that role should not be a competitor of the client, asserting inventorship as a result of representing his client. Cf. Patent and Trademark Office, U.S. Dep’t of Commerce, Manual of Patent Examining Procedure app. R § 10.64 (7th ed.1998) (“Avoiding acquisition of interest in litigation or proceeding before the [Patent and Trademark] Office”). Thus, to assert that proper performance of the attorney’s role is a ground for invalidating the patent constitutes a failure to understand the proper role of a patent attorney. Accordingly, we conclude that the district court did not err in rejecting Kimberly-Clark’s section 102(f) invalidity defense. We therefore need not assess the remaining evidence presented by Kimberly-Clark, or reach the parties’ arguments relating to 35 U.S.C. § 256.”
For those of us that have been practicing patent law since before that decision, what was stated by the Federal Circuit was a matter of common sense. However, it appears common sense eludes certain others.
With respect the patent agent/attorney as an unnamed co-inventor, I am rather surprized no one has mentioned Solomon v. Kimberly-Clark Corp (00-1033, Fed Cir 2000). “An attorney’s professional responsibility is to assist his or her client in defining her invention to obtain, if possible, a valid patent with maximum coverage…Thus, to assert that proper performance of the attorney’s role is a ground for invalidating the patent constitutes a failure to understand the proper role of a patent attorney.”
I thought that I remember the PTO Solicitor mentioning this topic — patent attorneys making co-inventor contributions — in a lecture a few years ago.
Maybe we can get his input on this website.
what type of assistance and advice can a patent attorney/agent give to an inventor?
If the inventor says that he has invented a gizmo (“my invention is this gizmo”)
, can we let him know that patent protection may also be available for methods of making it, methods of using it, subassemblies thereof, etc.?
If we note an enablement problem in the disclosure he provided to us can we mention that to him?
His drawing does not show a power source. What do we do?
He says, referring to a comment elsewhere on this blog, that his invention is ABCDE and the prior art only shows ABC. Can we mention that protection may also be available for ABCD? ABCE? Or maybe ABDC, and so forth?
“Can you think of a better way of asking the question?”
Well, you might want to start by coming up with a formulation that doesn’t already assume an answer to the real question – whether the normal process of writing an application is, in fact, “inventing.”
How about this: “Commissioner Doll, could you please define ‘inventing’ in thirty words or less, so that even I can understand it?”
Or try this one, just for fun: “Commissioner Doll, isn’t it true that Section 112, by its terms, expressly forbids dependent claims?”
I’m looking forward to reading about the answers you get.
“Can you think of a better way of asking the question?”
I’m not really sure I even understand what the point of asking the question is.
TC Directors are PTO lifers. Do any of them even have law degrees? Has any one of them ever interviewed an inventor and drafted an application? From what I’ve seen, including seeing various TC Directors speak at conferences, bar association meetings, etc. and reviewing blog entries regarding presentations TC Directors have made at such conferences that I didn’t personally attend, I can’t think of a single one who even understands what an invention is or what is involved in the process. They all seem to have the same notions that examiners have: the invention is something that can be distilled down to some conclusion along the lines of, “Well, the invention is just…”
Asking a group of people who have zero knowledge of the law, and zero practice experience, what practitioners should do when representing their clients seems like a rather useless exercise. Don’t you think?
No offense, but I’m not about to take advice, or direction, from such people. They don’t know anything.
“Can you think of a better way of asking the question?”
I’m not really sure I even understand what the point of asking the question is.
TC Directors are PTO lifers. Do any of them even have law degrees? Has any one of them ever interviewed an inventor and drafted an application? From what I’ve seen, including seeing various TC Directors speak at conferences, bar association meetings, etc. and reviewing blog entries regarding presentations TC Directors have made at such conferences that I didn’t personally attend, I can’t think of a single one who even understands what an invention is or what is involved in the process. They all seem to have the same notions that examiners have: the invention is something that can be distilled down to some conclusion along the lines of, “Well, the invention is just…”
Asking a group of people who have zero knowledge of the law, and zero practice experience, what practitioners should do when representing their clients seems like a rather useless exercise. Don’t you think?
No offense, but I’m not about to take advice, or direction, from such people. They don’t know anything.
link to accordionguy.blogware.com
:-p
“Or C. it’s more cost and time efficient to pay a competent patent attorney to speak with the inventor for 30 mins, understand the basic inventive core of the invention, and then write it all up, freeing the inventor to go back to his work.
You are about the only person alive who reads 112 like you do. Congress does not agree. The courts do not agree. Heck, even the PTO seems to not agree.”
We don’t have congress’s official word on that and I wager the results might be different than a unanimous aye that things should be done thus. You might get a majority, but by no means anywhere near a unanimous. Why? Because there are many in congress who are “working men” when it comes to understanding the way the laws have morphed and come to mean what they are held to in patent law, and some others are honest.
As to the pto believing x, you must remember the pto has more than one member as well. The official statement of a policy differs wildly from those unofficially held on a huge variety of subjects, this one included.
“What makes you a ‘terrible examiner’ is your complete and utter contempt for the american patent system, inventors, attorneys, and the way it all works. That and the fact that you think your job is to reject.
You have also stated that you will never assistant an applicant with suggestions for an amendment.”
Made that up on the spot did you? I have no contempt for anyone who isn’t just trying to game the system for their own gain and who abides by the spirit and letter of the laws rather than what they’ve managed to get away with. Oh, and applicants who allege total ignorance of their art. Them too. My job is merely to reject that which I have art to reject, come now, surely you don’t think I send out 102’s with no art cited? I assist applicants regularly with suggestions, but I am not, nor do I want to be, obliged to do so in any specific case.
“For some reason, I picture you as an unpopular kid in high school who got beat up a lot. ”
Actually I did most of the beating up in my younger years and was much too fit, fighting capable, and in with the in crowd to have gotten beaten up in highschool. And just because I picture you as the sniveling conniving little wimps that I was beating doesn’t make much of a difference, we’re adults now so I’ll spare you the insult. Reminiscing can be fun though, I remember one time in hs a guy from one of my sports teams kept kicking at my feet from behind to trip me up. I choked him against a locker until we reached an agreement. Good times back then 🙂
“Now, you have some measure of ‘authority’ and you love to flex it because, for once, your word means something and somebody has to listen to it.”
Nobody has to listen to what I say professionaly unless it’s true. Applicants routinely ignore what I say and just because they have to file an RCE later doesn’t mean they aren’t free to ignore what I said. In fact, they can ignore it entirely, never respond, and we both go our own ways. What “authority” and “weight” you feel like I believe I have and am improperly throwing around is totally foreign to me. The only authority I even have is to make sure that a claim to a contribution in the art is properly claimed and that formalities are adhered to.
“that’s what half-ass engineers who went to law school (ie. patent attorneys) are for.”
Lol I know right?
“”b. it’s not important.”
Or C. it’s more cost and time efficient to pay a competent patent attorney to speak with the inventor for 30 mins, understand the basic inventive core of the invention, and then write it all up, freeing the inventor to go back to his work.”
So C. it’s more cost and time efficient to not have to do what the law says, so we don’t do it and instead do something that resembles what the law requires so much that nobody can prove that we didn’t do what the law requires in a court of law. I agree. Tell you what, next time I see an application that I know is an amalgamation of common knowledge I’ll just official notice it with no search and without addressing dependents, I will include a search report that reads “google”, and write “As to claims 2-100 the prior art officially notice above shows [copy/paste of claim language]”. It’s more cost and time efficient. Oh, what’s that? The search/deps are critical? Well so is us hearing what the inventor invented.
We’ve been over all of the above (except hs), you just refuse to read what I’m typing.
I know you’re lurking JD, directors are coming to a breakfast for a workgroup tomorrow morning 8-10 am for socializing. An associate of mine will address the following question to them: “Should patent attorneys be engaging in inventing the subject matter of an application without being a co-inventor and further, is it allowed? If it is allowed and they should, is it in the public’s best interests to award a patent to an inventor with claims that include subject matter invented by the attorney?” Can you think of a better way of asking the question?
“I came from precisely the environment you describe and have seen it first hand, and have been one of those people who don’t have time for this mess and actually have something worth doing to do.”
The inventors don’t consider the patent process to be worthless — they WANT their inventions patented, they WANT their company to be protected. They just don’t want to have to deal with the process because that’s what half-ass engineers who went to law school (ie. patent attorneys) are for.
“Hutz- terrible examiner? What does anything I said in this thread have to do with any of that? Is the attorney above who practices just what I’m preaching a terrible practicioner? I doubt it. You guys are just fluffed because you don’t like to be called out on not doing your job properly instead of engaging in your usual routine tea and crumpets of saying examiners don’t do theirs. Noticably, we see that you’re doing what you feel reality demands of you. Hmmmm, I wonder why examiners are doing such a “poor” job. Maybe the same reason?”
What makes you a ‘terrible examiner’ is your complete and utter contempt for the american patent system, inventors, attorneys, and the way it all works. That and the fact that you think your job is to reject.
You have also stated that you will never assistant an applicant with suggestions for an amendment. That also makes you a ‘terrible examiner.’ If you see an amendment that would define over the prior art, call the attorney on the phone and suggest it. I’ve had examiners do this before. It’s helpful.
Your job is to be part of the system, to facilitate the issuing of patents AND the rejection of applications that contain no patentable subject matter.
If I hated my job like you do, I’d walk out that door right now.
For some reason, I picture you as an unpopular kid in high school who got beat up a lot. Now, you have some measure of ‘authority’ and you love to flex it because, for once, your word means something and somebody has to listen to it. Perhaps a career in law enforcement would be appropriate for you..
“if the “invention” is not important enough for the person who made it to take a week or so out of their life to deal with it then a. it’s obvious or b. it’s not important.”
Or C. it’s more cost and time efficient to pay a competent patent attorney to speak with the inventor for 30 mins, understand the basic inventive core of the invention, and then write it all up, freeing the inventor to go back to his work.
You are about the only person alive who reads 112 like you do. Congress does not agree. The courts do not agree. Heck, even the PTO seems to not agree.
“once again, you don’t understand the reality of practice. most of my work is for big companies. the inventors are engineers who really don’t care about the patent process and see it as an annoyance. they want their ideas to be patented, but they want their role to be to merely fill out a little disclosure form then not be bothered about it ever again. these guys wouldn’t take the time to learn to think ‘properly’ about their inventions if you offered it to the company free of charge. they’re busy and they don’t want to deal with it. likewise, their employers don’t want them to sit around for hours thinking their inventions through ‘properly.’ they want them doing their work.”
Actually I’m all too well aware of this phenomena. I came from precisely the environment you describe and have seen it first hand, and have been one of those people who don’t have time for this mess and actually have something worth doing to do. I see that as an inherent limitation on the amount of government granted “monopolies” that should not be side stepped. Most importantly, it should not be side stepped because if the “invention” is not important enough for the person who made it to take a week or so out of their life to deal with it then a. it’s obvious or b. it’s not important. You can argue a. all you like, but you’ll never get around the fact that if it’s important then it’s worth spending time on. If it’s not worth spending time on, then it’s just not important.
The government has yet to sign into law any legislation allowing for inventors who do not want to actually disclose, and decide what should be claimed about, their invention in the necessary detail to obtain a patent to obtain one. There are currently specific bars against this practice. 112 1st and 112 2nd. They should be rigourously adhered to, to prevent the wholesale abuse of the system which we find ourselves mired in right now.
Hutz- terrible examiner? What does anything I said in this thread have to do with any of that? Is the attorney above who practices just what I’m preaching a terrible practicioner? I doubt it. You guys are just fluffed because you don’t like to be called out on not doing your job properly instead of engaging in your usual routine tea and crumpets of saying examiners don’t do theirs. Noticably, we see that you’re doing what you feel reality demands of you. Hmmmm, I wonder why examiners are doing such a “poor” job. Maybe the same reason?
E6K,
Wow. Just Wow. Your comments in this thread show that you are a terrible examiner, let alone if you ever attempt to practice as a prosecutor, you will be fired so fast your head will spin.
e6k,
once again, you don’t understand the reality of practice. most of my work is for big companies. the inventors are engineers who really don’t care about the patent process and see it as an annoyance. they want their ideas to be patented, but they want their role to be to merely fill out a little disclosure form then not be bothered about it ever again. these guys wouldn’t take the time to learn to think ‘properly’ about their inventions if you offered it to the company free of charge. they’re busy and they don’t want to deal with it. likewise, their employers don’t want them to sit around for hours thinking their inventions through ‘properly.’ they want them doing their work.
by the way, i’d love to see an attorney try to get an inventor to say on the stand that he didn’t think of something in the patent application. the inventors typically take credit for the entire application as though they wrote it (even the background).
e6k – Your method is fine if you are writing for the same inventors over and over because it may be worth the time to teach them how to think about their invention. For big companies, maybe 60% of inventors are on their first patent, and probably won’t have another come around for a few years.
“even they didn’t come up with the cockamamie ideas that you have.”
They probably did, the judges just decided a different way one day.
“My guess is pretty poor.”
I’m not about to say that it may or may not have been because I don’t remember. I will say that ignorance and lack of ability on day one which you are bringing up is precisely why I feel the way I do about 112 2nd, 101, 103, 121, etc. It’s not hard to understand what the law says, what it’s hard to understand is the cockamamy ways it has been interpreted. That is why I spout off about clarification in all of those laws.
“let him learn on his own … he doesn’t need a coach.”
I never said that, what I said was, BE THE COACH and don’t PLAY FOR HIM like you are. Do you understand?
“Ages player”
Age of Empires? Meh, played a few back in the day, but they pale in comparison to SC etc. SC2 out soon, I might play through the single player, but I don’t have time to get sucked into multi anymore. D3 also out soon, they just announced it.
http://www.blizzard.com
Not sure if it’s really my cup of tea anymore.
“You say “oh well” that’s what the text of the law says (which I don’t concede but I can see how you think that). You ignore how inventions are created, and how patents are litigated and licensed. Basically, you’re saying that inventors (or their attorneys) should just throw themselves onto their swords in the name of a more intellectually pure universe. A lot of pieces have to be moved around to make room for the inventor that just wants a single, inventor-led claim without having that inventor be crushed under the system.”
Be that as it may, I see it as a failing of the judiciary to set the system down properly through their interpretations and not let it turn into the cluster fck it is now.
One thing I think you are not noticing is that there is a way for you to practice and achieve somewhat the same results as you are now. You teach the inventor how to think about his invention and let him get back to you, someone posted above about this. That is perfectly acceptable, but I suppose it just sticks in your craw to not be inventing for them anymore, or the other way just takes too long.
I am coming to the conclusion that e6k is not really an examiner but a practicing patent attorney making fun of some of the folks he encounters at the PTO. No single examiner could be as consistently wrong and impolite. It must be a parody.
Thanks for the laughs, whoever you are.
e6k – “I’m in your patent system questioning your fundamentals.” Are you an Ages player? I may have to take back some of those not-nice things I’ve thought about you. 🙂
I sympathize with your positions in many cases. However, you’re looking at a way-too-small piece of the puzzle. You see one thing out of place, and you think we should fix that one thing and the rest of the world will have to conform back to that. Take the concept of ‘what the inventor claims as his invention.’ In the world as it is today, without the attorney digging in and helping the inventor understand how to properly claim his invention, his patent is worthless. Worthless. W-o-r-t-h-l-e-s-s.
You say “oh well” that’s what the text of the law says (which I don’t concede but I can see how you think that). You ignore how inventions are created, and how patents are litigated and licensed. Basically, you’re saying that inventors (or their attorneys) should just throw themselves onto their swords in the name of a more intellectually pure universe. A lot of pieces have to be moved around to make room for the inventor that just wants a single, inventor-led claim without having that inventor be crushed under the system.
Your view is intentionally myopic just so you can go beat your tin-foil sword at a few windmills. If your goal is to actually try to change anything, you will someday have to take a more nuanced and incremental view of the world, and figure out which changes can actually be implemented. Your decision to p i s s on the system in general may give you some satisfaction, but it always has been and will continue to be ineffective.
“I’m in your patent system questioning your fundamentals.”
You are shooting from the hip evidencing your ignorance. I have no doubt that minds greater than yours (with better legal and writing skills) have critically analyzed the patent system over the decades but even they didn’t come up with the cockamamie ideas that you have.
“Why in the fck would I do that? Am I some sort of morn who cannot read? The claim clearly has E in it just the way I told him the invention does.”
Says someone who has been (presumably) reading claims for a couple of years. How good were you with claim language on day 1 as to what should be in and what can be left out? My guess is pretty poor.
You are like the NCAA player criticizing an NBA pro from teaching a high school kid as to how to shoot a basketball …. “let him learn on his own … he doesn’t need a coach.” The shallowness of your arguments are easy to see.
You are simply jealous that someone (i.e., an inventor) can hire somebody with a far better knowledge of patent law than you and you are forced into a battle of wits with no ammunition. Hey, we can all emphasize with your plight … however, it is your choice to work at the USPTO, just like it is the choice of an inventor to hire a patent attorney. Don’t you love a country that allows so many choices?
Small correction:
“Do I resent that? Absolutely that” should read “Do I resent that? Absolutely not.”
“You angrily return to your patent attorney screaming that the competitors are infringing your patent. ”
Why in the fck would I do that? Am I some sort of morn who cannot read? The claim clearly has E in it just the way I told him the invention does. If my competitors are smart enough to figure out that E isn’t required then guess who did the inventing? Not me. Guess who gets the rights? Them, if they file. This happens all the time IRL. The inventor needs to take responsibility for his invention. Seriously, your situation has little to do with “the law” and A LOT to do with the inventor not inventing something that is better. Unless of course you meant that the inventor knew E was optional, but totally neglected to tell anyone. Guess what? If he’s not disclosing it then he’s not disclosing it.
“And your response is — “oh, well, my first patent attorney was just doing his job, easy come, easy go”???”
My response is, man I’m a fuking douche, right up there with A C Clark who was talked out of filing an application on the Comm sat. Oh well, if I wasn’t such a dmbas then maybe I would check out what prior art there is and what I believe my invention to be.
Never let it be said that I’m one of these “let’s throw the responsibility on someone else when it’s my fault” people. If those are the types of clients you have, perhaps you need better clients, or you need to educate them a bit as to what is going on in the beginning, just like the person above does.
“Are one legal rights limited to what they THINK they are?”
Well let’s see, does negligence law specifically state that you are to sue only those whom You Believe to have performed something negligently enough to seriously adversely affect you? If so, then yes. If not, then no. Funny enough, patent law does say something about what the applicant believes.
“Zealous Advocacy – Unless prosecutors are directed by a court or Congress to stop our current practices, we are not going to stop them because it gets our client the largest protection we can under the law as it is currently being interpreted.”
I believe you, that’s why this needs broader coverage.
“Congress is the one you should be lobbying. That is your best chance of remedying these injustices you see.”
I know. Sadly, I just arrived here in this great capital o ours and I’m not too great at lobbying just yet.
“They have installed perfectly good legal tools to deal with it.”
What? 103 after 100000$ in litigation? Can someone help me with my math? What’s the derivative of y=x^(2lol)?
I’m in your patent system questioning your fundamentals.
6K:
The difference between my job and your job, is that I get paid (BY MY CLIENT) to think. Moreover, I get paid to know the law and to convey the law to my client as it applies to my client’s situation. I also get paid to offer suggestion to my client. Although I’m sure there are some exceptions, most patent attorneys I know get a great satisfaction helping our clients protect as much as their invention as possible. When a client hits it big, they’ll be able to make more money with their one idea than most attorneys make their entire careers. Do I resent that? Absolutely that.
You have already admitted that you wouldn’t offer a suggestion for an amendment to obtain an allowable claim. Granted, I know that thinking makes your brain hurt, and odds are, given evidence on this board, your proposed amendment would be awful. However, there are examiners out there that believe there is more to their job than getting their counts and parroting the party line of “reject, reject, reject.” These people earn their pay, whereas you just get paid to do the job you’ve narrowly defined for yourself. Trust me, with you type of attitude, you’ll NEVER go far in life. The mantra of “that’s not my job or your job either” will not serve you well.
“Nah, but whatever changes are made are to be of the inventor’s doing. Not yours.”
Keep the inventor in ignorance? Suggestion, don’t ever work in the service industry or work where you have to interact with people.
“Just because someone says they want to file a patent on something, such as a toy car, doesn’t mean it’s up to you to figure out that, lo and behold, he’s a morn! It’s up to you to do the job they are asking you to. File an application covering the toy car.”
Sorry, but that is just about the most asinine suggestion you’ve ever made (and that is saying a lot). Are you really that ignorant? Really, I am very serious? BTW: you, apparently, have no idea as to “the job they are asking you to” do. If you had, you wouldn’t have made such a moronic suggestion.
“all too often, he already knows that guy A already made the fusion power plant and knows it is not his invention, otherwise he would have brought you the fusion power plant to have patented”
That wasn’t my hypothetical. And even if it was true, the answer to my question would yield some potentially material prior art. Moreover, it would lead to a discussion as to how the fusion power plant is being used in the toy car. A good attorney, when getting a disclosure from the inventor, should ask a lot of questions and try to get the inventor to talk (a lot) about the invention.
“He knows it’s not his invention, but you’ve suggested to him to believe that it is and sign his name saying so. How often does that happen?”
Inventors aren’t as dumb as you think.
“How often do I dredge up 102b art on you for having done that?”
Not once.
“How about when your inventor sells the patent on a fusion power plant invented by Guy A to troll company Y? How about when troll company Y sues 50 companies? Is even one time acceptable?”
If you want to live in a communist country, you can try Cuba or if want to wait a little longer, you might be able to try Venezuela. In case nobody has told you, in America, most pieces of property, including intellectual property, are up for sale.
“There will be no presenting of sides, there will be one question.”
Classic 6K … afraid that once the truth gets out, his misleading question will be shown as the crackpot musing it is. Really, are you afraid of a little debate?
First off- you tickle the sht out of me Mary P. I don’t need nor want your legal advice. As far as filing a continuation- I have already considered and am contemplating the notion-thats good advice. Max- you don’t read and comprehend very well-I never asked for any advice from anyone…yet. Also, of course I understand that a single independent is only good for certain patent subject matter. In my case, my redrafted kickass indy is probably thought of by my examiner as possibly slightly overbroad, contrary to narrow as most of you narrow-minded patent attorney’s surmise- I haven’t asked,all he said is he wants to change a few words-so we’ll see-wrap it up this week. Finally, (you’ll like this) he suggested in the office action I seek the services of a bona-fide patent attorney. Of course, I won’t do that because i’m a do-it-youselfer and I consider writing a patent app. a challenge. And BTW, I have 2 more pending apps. waiting- very good sht that I fully expect to get patents on-with a little tweakin, of course. Even attorneys don’t get them through, if at all, without reworking.I’ll keep youall posted when I get to pre grant status on all of them so you can get your teeth nashin.
Where are they when they are needed? Come on JAOI(TM) your fellow inventor Decemeter needs advice, and he declines to take it from any patent attorney. Maybe you can explain to him that the scope of a patent is exactly that which is claimed, NOT what the inventor might have claimed, had he been a more gifted claim crafter, or had he been professionally advised. There’s an English case, more than 100 years old by now, I am sure, which expresses this principle with chilling clarity. Maybe Eurodisnae can oblige, with the precise quote. Meanwhile Decemeter, the urgings you are reading above are serious, and made unselfishly, exclusively in your interests.
All the talk above, about claims as descriptions of what one has invented, I find almost inexplicable. I had thought it was a “given” that the job of the claim is to cover what the others will be doing in future, when they compete with your invention, when they “borrow” its underlying inventive concept. Either claim the concept competently, so others can’t get in to the market, or don’t even bother to file. Use your hard-earned cash on something more valuable than an ineffective but pretty certificate to hang on the wall. No problem about claiming too widely; the framers of the patent statute had thought of that problem. They have installed perfectly good legal tools to deal with it.
Lowly,
Your hypo doesn’t fly because there’s no tort section 112 that says you can only file causes of action that the client directs. Unfortunately, e6k does not understand zealous advocacy or the clear statement rule.
Zealous Advocacy – Unless prosecutors are directed by a court or Congress to stop our current practices, we are not going to stop them because it gets our client the largest protection we can under the law as it is currently being interpreted.
Clear Statement – Congress is assumed to know how the system is running concerning dependent claims and lawyer lolinvention. These concepts are nothing new. If Congress disapproves, they will take action to change it. By not taking action, they are silently approving of the system as is. Lobbying us to change is a waste of breath. We represent the client, not the American people. Congress is the one you should be lobbying. That is your best chance of remedying these injustices you see. Would you please take up a more tenable contrary position so that we can have an intellectual argument. (e.g., patentability of signals, something about the new appeals rules) Your recent positions are too big of losers to pass the straight face test (dependents and helping inventors draft claims)…
6k,
Question. Let’s pretend I’m a litigator. Client A comes to me, wanting to sue Company B for breach of contract. Based upon the facts given to me by Client A, he also has a cause of action for negligence. However, he didn’t think he did because he doesn’t know the law. Should I only sue for breach of contract? Are one legal rights limited to what they THINK they are?
e6k, let’s assume that you (prior to becoming an examiner and being “familiar” with the patent system) had invented a new gizmo which had elements A, B, C, D and E. You went to a patent attorney to have a patent application filed for it, and he filed a single claim for A, B, C, D and E (because that is what you said your invention was) and the patent issued. You started manufacturing and selling your gizmo and then you learned that competitors having seen your product and your narrow patent were making nearly the same gizmo but it included elements A, B, C, D and F (not E). (Let’s assume broadening reissue is not available.) The competitors are better financed than you and have now destroyed the market for your gizmo. You angrily return to your patent attorney screaming that the competitors are infringing your patent. Your patent attorney explains that they are not. (I am assuming that there is not doctrine of equivalency argument.) You then go storming to a second patent attorney who reviews the file and explains that the prior art only shows A, B, C, and that patent protection was also available for A, B, C and D (as well as A, B, C, D and E) when the patent application was filed. And if a patent had been obtained for A, B, C and D that you would be able to stop those competitors, but it is too late now. And your response is — “oh, well, my first patent attorney was just doing his job, easy come, easy go”???
e6k as you point out I am not a patent attorney — that is why I hire them.
It’s not clear to me what the point of ripping on me is — you are not selling me on your services or ability to work well with clients, that’s for sure.
My short story is — if you leave claimable aspects of the invention unclaimed because my inventor isn’t patent-savvy enough to articulate them, you are not a guy I would keep in my stable of attorneys.
I would appreciate hearing others speak about this issue from the client side.
“In 6Ks world, once an idea is formed within an inventor’s head as to what the invention is, it should be frozen in time.”
Nah, but whatever changes are made are to be of the inventor’s doing. Not yours.
“I don’t know of any attorney that would think that the first attorney’s failure to point the other possible inventive aspects of the invention was not gross incompetence.”
You mean on the part of the inventor. I agree. Just because someone says they want to file a patent on something, such as a toy car, doesn’t mean it’s up to you to figure out that, lo and behold, he’s a morn! It’s up to you to do the job they are asking you to. File an application covering the toy car. If you’d like to suggest that maybe he should take another look at what he’s made and see if there is anything else special about it that he might like to file for then that’s nooooo problem. Unfortunately, you’re telling him what he invented. Perhaps, and all too often, he already knows that guy A already made the fusion power plant and knows it is not his invention, otherwise he would have brought you the fusion power plant to have patented. That is not for you to decide. So what happens when you say, “well you know, you have a fusion power plant here we should claim also hur” and he thinks it’s special since it’s in the car so he goes along with it (he’s dmb remember?). He knows it’s not his invention, but you’ve suggested to him to believe that it is and sign his name saying so. How often does that happen? How often do I dredge up 102b art on you for having done that? How often do you “forget” to submit the article he read about Guy A’s (who lives in germany) work in to me since he doesn’t think it’s relevant because his plant is special because it’s in a toy car? Finally, and more to the point, how often does the examiner fail to find that article in the german university and issues a patent to your inventor on Guy A’s work? Is even one time acceptable? How about when your inventor sells the patent on a fusion power plant invented by Guy A to troll company Y? How about when troll company Y sues 50 companies? Is even one time acceptable? Bottom line is, if you didn’t screw with the way the system was set up, twisting it to your own ends, we probably wouldn’t be in such a big mess like we are now.
You are there to do as he asks, not tell him what for. But apparently that is what you regularly do. I suppose if they weren’t so ignorant then they might get fed up with you telling them what their invention is. I know I would.
As to the congressman, sure thing, my 10000000 to your 10000, easy money. And no thank you, your “setting up” the meeting would be just that, your setting it up. There will be no presenting of sides, there will be one question. “Do you believe that attorneys should be inventors on the majority of applications?” “Yes/No”. Bet you don’t like the odds quite as well when you can’t beg him to see your side of the story explaining just how stupd you regard your clients as being and how they “need” broad protection.
“I’m sure 6K could come upon with some public policy distinction between why a colleague can help an inventor understand the full scope of an inventor’s idea but not an attorney. Actually, I’m looking forward to a good laugh sometime this weekend.”
Sure thing, quite simple. They’re co-inventing. One isn’t being paid to “law invent”, they are merely inventing. I’ve got to go, big storm a comin.
btw, who’s this examiner in 1700? Is that your area and you know a few?
“I believe I was ‘taken to the woodshed’ by my examiner because in this post KSR world”
No examiner should be able to do it to you. Instead, like any governmental employee with more power than common sense, they likely try to intimidate you (intentionally or not).
“I drafted a kickass ind claim that covers all the bases- just needs a little tweakin from the examiner. I’m not your normal pro se, I actually have some writing skills-check that, overwriting, in my case. One is all you need, if done rite lowly.”
I have writing skills and a law degree, but I would never rely solely upon my own skills to review a contract for a substantial sum (e.g., a lease on new office space). The more one knows, the more one knows what they don’t know. I would be very scared to have an application issue with claims drafted by a pro se inventor and an examiner.
Honestly, my suggestion to you is before the application issues, file a continuation (preserves your right to other claims) and to talk to a patent attorney about your present claim(s). I’m sure that you can find an attorney that would be willing to spend a hour (gratis) looking at your claim(s) and giving some suggestions as to how best to proceed.
1000 to 1 if you asked a congressman dealing with IP if he thought it was a good idea to have attorneys as the co-inventor on nearly all applications he would reply “Well that’s not their role, their role is to represent the applicant”. That is in fact why we call you the applicant’s representative you know. I guess I’ll have to start calling lawyers the applicant.
You are on. Prove that you can pay up on a $10,000 bet with those odds, and I’ll be more than willing to out PDS to get a piece of that action. We both go to the congressman (better let me handle setting up the meeting, I’ve probably got better connections than you). You present your side of the story, and I’ll present mine. By the end of the day, I’ll be retired.
I’m serious … unfortunately for my retirement plans, you are not.
In 6Ks world, once an idea is formed within an inventor’s head as to what the invention is, it should be frozen in time.
An inventor walks into an attorney’s office and says, “I’ve invented this new toy car … just fill it with an ounce of water and it runs for a year without refueling. I want to get a patent on the toy car.”
Attorney, after picking up the car, asks the question “what is the power source of this car?”
The inventor replies “oh, that is a self-contained fusion plant that I dreamed up, but what do you think, do you think I can get a patent on this toy car? These wheels are very special.”
In 6K’s dream world, the attorney files for a patent on the toy car. After the application has been allowed and no continuation filed (remember, in 6K’s dream world, there can only be ONE invention), the inventor realizes that nobody is buying the toy car but everybody is using the self-contained fusion plant. The inventor hires another attorney and they file suit against the initial attorney claiming malpractice. I don’t know of any attorney that would think that the first attorney’s failure to point the other possible inventive aspects of the invention was not gross incompetence.
Of course, in real life, the first attorney would have asked if the self-contained fusion plant could be used for other purposes, and after a moment’s pause, the inventor would have likely said “yes, now that you mention it, this self-contained fusion plant could have many other different applications.” At which point, some examiner in the 1700 group immediately falls to the ground having a seizure while foaming at the mouth screaming “this is why there is a backlog!!!”
One would wonder what this same examiner would do if the inventor talked to a colleague and the colleague asked the same question of “could this power plant be used for other purposes?” At which point, the inventor would have had the same realization that the power plant could be used for other purposes. Of course, this happens all the time, yet I haven’t seen 6K foaming at the mouth about this situation. I’m sure 6K could come upon with some public policy distinction between why a colleague can help an inventor understand the full scope of an inventor’s idea but not an attorney. Actually, I’m looking forward to a good laugh sometime this weekend.
“I mean they claim what they invented in such a narrow fashion, and so poorly, that nobody would ever infringe their claim.”
Precisely what I meant, heaven help us!!!!!
“Do you still not understand that very narrow patent protection is pretty much useless?”
Do you still not understand that the entire point behind the patent system IS NOT necessarily to make what you personally deem to be “useful” patents? And further, that nobody but your greedy clients are trying to get a “useful” patent. As you have said many, many times before, inventors themselves get worthless patents all the time, especially pro se, but 90% of overall filings are “worthless” also I hear. You say nobody would file for a patent if all they got were very narrow claims. I disagree, this happens regularly as is, and nobody is crying all that much. Over 3/4 of my cases are going to end up with horrendously narrow claims or no claims at all, are you suggesting that somehow them being limited to that at the beginning would have made them not file? Maybe, but not in all cases, as pds et al. explain, even narrow coverage can be valuable.
Bottom line is, the purpose of the system is to promote the progress, and the thing that does that the very best is giving inventors claims to only what they invented and even more so, what they believe they invented. As well as them subsequently being happy to protect and produce only that which they invent. It is easier for the competition to innovate in that space and submit those inventions and earn some dime from it as well.
“If all we were stuck with was the one narrow embodiment the inventor came up with, there would be no more patent law because patents would be toothless.”
Not true, because the inventor can come up with broad ideas. I do this regularly in my musings, and I’m sure countless others do as well. And see above about the end of patent law. Of course, it might be the end of your patent law practice since you apparently only get inventors with zero clue about what to do to “invent”, and you don’t help them do it, you do it for them, and if you were precluded from doing so all heck might break loose. Or, you might not be worth 200$ an hour. Hmm, I sometimes wonder who’s best interests lawyers do have at heart.
Hey lowly,
I drafted a kickass ind claim that covers all the bases- just needs a little tweakin from the examiner. I’m not your normal pro se, I actually have some writing skills-check that, overwriting, in my case. One is all you need, if done rite lowly.
Mr. Decemeter:
If your application is publicly available, please post its Serial Number on this blog and let us comment on it. Maybe we can provide you with some helpful suggestions, and give you some free legal advice.
Hey Mary Procecuter
If you work with tools, in a year you will be buying one of my tools. Thanks for that. We’ll just see about that worthless patent, my pretty.
I believe I was ‘taken to the woodshed’ by my examiner because in this post KSR world, you can write too much info and disclosure apparently-its news to me too-but good news,in that I have patentable subject matter and that the overdisclosure was not fatal to the application. I didn’t think it would be-as the inventor, I knew I had really invented something. As I stated, as soon as my new claims are coherent(ofcourse, those where deemed inadequate also), but as a pro se, my examiner (with my overseeing) is tweaking my new claims. The system is just fine-at least in the mechanical arts.
“Oh, you mean they claimed what they invented? … Heaven help us, not that!”
I mean they claim what they invented in such a narrow fashion, and so poorly, that nobody would ever infringe their claim. Thus, their patent is worthless. Do you still not understand that very narrow patent protection is pretty much useless?
“Less, but it’s still not in the public’s interest to have people who are nothing more than “legal inventors” getting broader rights for applicants than what they actually invented before they came into “the wise old man”‘s tent and he told them what they “really” invented. ”
I think you’re wrong. I think it’s precisely in the public’s interest for those who have no knowledge of the law to obtain assistance in securing for themselves the broadest possible protection they’re entitled to. If all we were stuck with was the one narrow embodiment the inventor came up with, there would be no more patent law because patents would be toothless.
“e6k may consider himself rigorously ethical; I just consider him overly fastidious to the point of being useless.
I wonder … if a counsel actually practiced what e6k preaches, could that counsel be sued for negligence?”
Well that’s a good question, we have a few in the thread that do, so why don’t we ask them?
Oh wait, doesn’t seem that they have, and the only person we’ve heard tell of getting in trouble for anything is doing precisely what others above have laid out. Although your little plan seems somewhat more reasonable than theirs.
“I ESPECIALLY expect counsel to think through claims that could be filed by competitors that i) could provide work-arounds with respect to my claims; and ii) that my patent (should it issue) would dominate, but that could hinder my freedom to operate. And to file disclosure and claims accordingly, to protect my interests.”
That makes no sense, you expect an attorney to think through claims that your competitors could file that would provide an easy work around (presumably your claims, not “with respect to [your] claims”). If a competitor comes up with an easy work around then it must have been because he didn’t infringe your broad claim. All that is required is to obtain a broad enough claim that the invention can not be practiced without infringement. How do you not know this? Did you skip out on that day in law school? Why are you going on about competitors filing claims? If they file a claim, after your own, then it will be evaluated for novelty and non-obviousness same as yours. When talking about ii then you kind of make a point, but that all depends. If they’re making more specific disclosures and they happen to have contributed something beyond what you were able to then so be it. If you, as a the client can contribute the same then it would be proper for the attorney to suggest that you do so.
These are all very basic concepts, ones that I have myself explained to would be inventors already. They are not rocket science, and they do not require the attorney to invent anything, nor even add anything to the disclosure. They do require that the applicant know wtf he’s talking about, and to set it forth. It also requires a bit of thought on the attorney’s part as to how best to claim the invention, and the proper way to lay out the disclosure. I believe it fair to say that there is no malpractice for not doing the inventors job for him.
“heir applications and the prosecution of them were typically so messed up that I would often prepare and file a CIP for them and start over.”
Oh, you mean they claimed what they invented? O NOES! Heaven help us, not that!!!!!!
“E6K, if the attorney put himself down as an inventor and assigned his rights to the real inventor, would you still cry about it?”
Less, but it’s still not in the public’s interest to have people who are nothing more than “legal inventors” getting broader rights for applicants than what they actually invented before they came into “the wise old man”‘s tent and he told them what they “really” invented. Hint hint, what he thinks they invented coupled with what he invented also. In either event, to not even have it commonly known that such is taking place is worse. 1000 to 1 if you asked a congressman dealing with IP if he thought it was a good idea to have attorneys as the co-inventor on nearly all applications he would reply “Well that’s not their role, their role is to represent the applicant”. That is in fact why we call you the applicant’s representative you know. I guess I’ll have to start calling lawyers the applicant.
Lively discussion! But I have not heard the voice of the client in this thread.
Let me provide one such voice.
If I hired e6k to work for me, he would be quickly fired, probably on the first day.
Inventors are not patent attorneys; they do not understand how to translate their ideas into claims, nor do they understand how claims function in court nor in the business world.
I expect patent counsel to claim the invention in its most basic and broadest patentable sense. I ESPECIALLY expect counsel to think through claims that could be filed by competitors that i) could provide work-arounds with respect to my claims; and ii) that my patent (should it issue) would dominate, but that could hinder my freedom to operate. And to file disclosure and claims accordingly, to protect my interests.
e6k may consider himself rigorously ethical; I just consider him overly fastidious to the point of being useless.
I wonder … if a counsel actually practiced what e6k preaches, could that counsel be sued for negligence?
Back in the old days (when kids walked three miles to school every day in the snow), and more specifically before U.S. applications were published, I would occasionally represent pro se inventors. Their applications and the prosecution of them were typically so messed up that I would often prepare and file a CIP for them and start over. Now they often come to me more than a year after their application has been published and I turn down the work. Mr. Decemeter will probably get a patent which is essentially worthless. But he can frame the patent and hang it on his wall.
“i disagree with the presumption of not opening a patent application with the problem to be solved and one’s invention’s attributes that does the trick-this is still done in a huge amount of mechanical arts patents that issue”
… all (or nearly all) of which were filed before the Supreme Court’s KSR v. Teleflex decision.
KSR teaches that any problem may be used to show that a claimed invention was an obvious solution to that problem. If you admit a problem in the background, it can now (with the Supreme Court’s blessing) be used to reject a claim as obvious. The fact that so many backgrounds hype problems in issued patents merely reflects the standard, pre-KSR approach. Start looking at cases that are filed after KSR, when they publish/issue, and you’ll notice a different trend.
MaxDrei,
I’d put money on Decimeter not being an attorney. No attorney would talk like he did. He’s a pro-se inventor and my guess is that he claimed one very very specific embodiment and the examiner was hinting to him that he might want to broaden his claim.
I tend to feel bad for pro se inventors. Even if they get their application allowed, it’s often not worth much because they used all sorts of catastrophic words.
E6K, if the attorney put himself down as an inventor and assigned his rights to the real inventor, would you still cry about it?
Fwiw, I don’t know that I have ever drafted an application where Claim 1 didn’t cover every embodiment.
Can’t wait to read Slusky on how, going forward, you should choose how many independent claims to present. Outside the USA, multiple independent apparatus claims (or multiple independent method claims) means one or both of 1) multiple inventions in a single app (and why should the PTO search for one fee more than one invention) or 2) the obfuscation of using different words to mean the same thing (and obfuscation is the enemy of legal certainty). But Slusky is teaching exclusively US-style drafting, I suppose.
The rest is spammed, screw this pad.
“Edison’s attorney claims the light bulb broadly but does not mention Tungsten in the claim. He does mention it in the spec. Would that make him a co-inventor?”
It might depending on how its claimed. If Edison has conceived and sufficiently enabled the genus that was recited in the claim, he’s the sole inventor even though the attorney-conceived Tungsten embodiment is added to the disclosure. (In some arts, you don’t have to recite all possible species in some arts to conceive and claim a genus.)
If, however, the claim explicitly recited the attorney-conceived Tungsten feature or used a means-plus-function element whose corresponding structure was the attorney-conceived Tungsten feature, then you have to look at the significance of the attorney’s contribution.
“I am thankful that most of the examiners I speak to are nothing like 6K and don’t seem to loathe the system in which they work.”
I put on my happy face at work too man.
“He still doesn’t understand that there would be no patent system if attorneys drafted applications as he would like — one claim directed to one specific embodiment.”
To be fair I’ve never said that, you could have nearly infinite embodiments, one claim to cover them all, and not have the attorney invent some of the embodiments and I’m all cool.
I don’t see the problem with this. You have embodiments that supposedly are all one invention (or at least there is supposedly no burden to restrict). “invention” supposedly means “claim”. Overall it seems to me that in any given application there should be zero problem with one claim generic to all embodiments that portrays the invention and only the invention, unless, of course, it’s not really an invention.
“Odds are you are probably just as annoying to your bosses as you are on this board.”
I am, on purpose. This crshoot they’re running is a marvel to behold from the inside. Just ask JD.
Decemeter, I have a question too. May I ask (and don’t take offence please), are you an attorney, with clients who might (using other attorneys) hold you responsible for mishaps, or is all your experience of prosecution pro se?
How exactly did you disclose “too much” of your invention?
i disagree with the presumption of not opening a patent application with the problem to be solved and one’s invention’s attributes that does the trick-this is still done in a huge amount of mechanical arts patents that issue- go ahead and read them yourself in the OG. However, even though I will be granted a patent in the near future, my examiner did state in the OA that I actually disclosed too much of my invention and that the prior art’s shortcomings should not have been written as such- so there you go-its not fatal. So just as soon as I get my claims into a coherant construction (with his help-nice guy huh), my patent should be Pat No. 7,400,something and something- I love dis country.
Only a government employee (6k) could hold the customers of his agency, those who keep him employed, in such contempt.
He still doesn’t understand that there would be no patent system if attorneys drafted applications as he would like — one claim directed to one specific embodiment. Any asshat would be able to design around such a patent and nobody would file.
Then again, maybe he DOES understand that. He works for the PTO after all and their goal seems to be to get people to stop filing patents…
I am thankful that most of the examiners I speak to are nothing like 6K and don’t seem to loathe the system in which they work.
Especially, in the post-KSR times, people start wondering how one should draft the claims without getting trapped by this obviousness standard. Starting from the problem-solution might not be a bad idea. However, not the problem should be carefully drafted, but the solution. One should carefully choose the wordings describing the solutions to the long-felt need. Otherwise, you will end up bad in front of your client explaining to him/her why the invention was so described as to limit only to the embodiments handed to you. You are supposed to be creative and imaginative to do your job. I agree that I am not the inventor and I agree that I will not tell the inventor that my name should be listed on the front page as suggested. Being creative and imaginative is only part of the job being a patent attorney. OR, you are not qualified to do the job, let alone listing your name on the front page.
Wasn’t: you see my point. But I go further. It’s not just the patent attorney who isn’t going to sue. It’s everybody else in the team too. For me, what matters is that no man should gain an advantage by stealing the intellectual property of another. If that theft is a crime, let the authorities prosecute. If that theft is a civil wrong, let the victim have a right to sue, but why should anybody else enjoy that right? Giving it to others only clogs up the legal system with vexatious suits. Note that the European rule doesn’t block meritorious complaints, like the one U S Surgical ran against Ethicon, when USSC found a medical doctor who should have been named on the Ethicon patent asserted against USSC, but wasn’t.
MaxDrei,
I do appreciate the clarification. It doesn’t matter for the present question, as I assume that an attorney who doesn’t think he contributed to the invention, but may not be certain, is not going to sue to invalidate his client’s patent.
JD
“your primary” — you crack me up
“I’ll have to find a director or two who are free on that day.”
That’s one of your “higher ups”?
You couldn’t get your primary to lunch.
ROFLMAO
“When I first started practicing, my secretary who had just an electric typewriter advised me to keep the applications short and I got one rough draft and one final.”
Watch out, if you imply that your secretary may have also corrected any grammar or spelling errors, you may be accused by 6K of improperly leaving your secretary off the declaration as a co-inventor.
Wonders never cease with 6K ….
6K … get a life … really.
Odds are you are probably just as annoying to your bosses as you are on this board. I’ve seen your type. They are the squeaky wheel that gets oiled at first put then eventually gets thrown away for a version that doesn’t squeak.
“As you well know JD I’m entirely reasonable here on this board and in person”
Thanks for the biggest laugh I’ve had in days.
BTW: 6K all inventors sign a declaration, under the penalty of law (18 USC 1001), saying that he believes himself to be the original and first inventor of the invention for which he solicits a patent. Once the inventor signs it, it becomes his belief.
Wow … you are really a piece of work recently. You need to take a chill pill.
Honestly, you really need to quit your job and work someplace else. You are going to have a stroke. Reading your last two posts, I could literally see you foaming at the mouth.
“the application size to go up from 6 to 20 pages” — probably the proliferation of word processors is to blame in part. When I first started practicing, my secretary who had just an electric typewriter advised me to keep the applications short and I got one rough draft and one final.
“That said, name the place and time. And don’t forget to let me know which “higher up” will be joining us.”
PDS might be in Cali for all I know, but JD here, if he professes the same, is right across town. As you well know JD I’m entirely reasonable here on this board and in person, but this, “Oh I can invent for the applicant, not be a named inventor, and just be hunky dorey with it” is ridiculous. His proposed “fix” is hardly any better. It is plain to see we don’t want people who are “in the patent business” there to just gobble up, what would be often considered by many an obvious variants of the original “invention” when the actual invention is shot down. Not to mention the fact that you’re blatantly admitting to not claiming what the inventor believes his invention is, you’re claiming what you believe his invention is and maybe convinced him to go along with. If it was your idea, then it was your idea, if it was your belief, then it was your belief. If an inventor comes to your office with such an unrefined idea then you should turn him away immediately, his idea, on it’s own, has apparently been deemed by you to sux.
Everyone was talking about what caused the application size to go up from 6 to 20 pages, it seems it was probably attorney’s deciding they needed to step in and invent for 14 pages and likely 19 claims.
“That said, name the place and time. And don’t forget to let me know which “higher up” will be joining us.”
PDS might be in Cali for all I know, but JD here, if he professes the same, is right across town. As you well know JD I’m entirely reasonable here on this board and in person, but this, “Oh I can invent for the applicant, not be a named inventor, and just be hunky dorey with it” is ridiculous. His proposed “fix” is hardly any better. It is plain to see we don’t want people who are “in the patent business” there to just gobble up, what would be often considered by many an obvious variants of the original “invention” when the actual invention is shot down. Not to mention the fact that you’re blatantly admitting to not claiming what the inventor believes his invention is, you’re claiming what you believe his invention is and maybe convinced him to go along with. If it was your idea, then it was your idea, if it was your belief, then it was your belief. If an inventor comes to your office with such an unrefined idea then you should turn him away immediately, his idea, on it’s own, has apparently been deemed by you to sux.
Everyone was talking about what caused the application size to go up from 6 to 20 pages, it seems it was probably attorney’s deciding they needed to step in and invent for 14 pages and likely 19 claims.