The idea that got away

I had a book when I was a kid called The Little Fish that Got Away. I could write a book for my clients about The Little Invention that Got Away!

Many people have a lot of great ideas. Yet many of those great ideas have been had before-and patented. Just yesterday I was working on a case for a client where we thought we had a new idea and that we'd better rush to get the patent application written and filed. My client knew the market well and hadn't seen this idea for a product feature anywhere else. Yet, just as a precaution, I did a search of The United States Patent and Trademark Office Patent database as I was starting in on the application. Good thing I did. I came up with some references (old patents) which seem to disclose my client's invention.

I can't tell you how many times this has happened. Yet one shouldn't be so disappointed. After all, it shows your invention was patentable-just someone else beat you to it -The invention that got away!

Source for ideas

It is said that something like 90% of the technology disclosed in US Patents is not disclosed elsewhere. This makes patents a valuable source for information on new technology and trends.

Some will only go to the patents and inventions of the past to see if their own invention can be patented over this prior art. However, for someone who is developing a new widget, those existing patents on widgets contain a wealth of ideas on what works and what doesn't work. Patents pertaining to related technologies may produce ideas also.

Of course, you may not want to develop something already covered by an existing patent, but that doesn't mean you can't get ideas from what has been done in the past-and not only in the particular technology you are working in, but also in related areas.

After all, that is what the contract we discussed above is all about. Existing patents should be viewed not only as 'the competition', but also as a sort of encyclopedia of information, knowledge and ideas in your development process.

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What is patentable?

I happened to pick up a copy of Reader's Digest this past week. In one of the 'joke' sections, they made fun of some new inventions-one of which is US Patent No. 7,101,314 entitled "Facial weights for total facial muscle toning and development".

Now if you think that is a little wacky, check out this one from 1912: "DEVICE TO PREVENT DOGS FROM WORRYING SHEEP" which says in part:

My invention relates to devices to prevent dogs from worrying sheep, and it has for its object to provide one which may be fastened to the nose of a dog, and which is provided with hooks which will become entangled in the wool of a sheep so that when the sheep starts to run the dog's nose will be pulled, and the dog will receive a lesson which will break him of his habit of worrying sheep.

Basically, the invention is accomplished by attaching an oversized fishhook to the nose of a dog!

There are a number of websites (google 'wacky patents') that document the strange and unusual inventions for which patents have been granted over the years. It almost seems you can patent anything, right?

Well, not exactly.

A patent can be granted for an invention which is a new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.

There are a couple of explanations needed in this definition.

First, the word "useful" (which seems pretty subjective) simply means that the invention works. It does not mean that someone may find it practical or helpful-just that the invention works the way the inventor says it does-that it functions as described.

Secondly, the word "new" has a specific meaning when it comes to patents. It means the invention must not have been invented previously by someone else, or disclosed to the public previously (in the US you have 1 year from public disclosure to file a patent application. Other countries do not allow any public disclosure before the application.)

Of course there are several statutes which define these words with respect to patents more specifically. But for us today, this is enough.

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The Contract

A patent is a contract between the inventor and the public. The inventor agrees to make known publicly his invetnion to further the progress of technology. In return, the public (or government) excludes others from practicing the invention for a limited amount of time. In the United States, this limited amount of time is 20 years from the day the patent applicaton is filed.

Note well that a patent excludes others from practicing the invention, and does not give the inventor the exclusive right to practice the invention. This is because practicing the invention may infringe on another's patent.

Imagine for example that 5 years ago a flying car is invented and patented by one of the big three auto makers. Essentially the patent covers any cars which can fly by use of retractable wings.

You notice that an improvement can be made to the wing design so it retracts more smoothly, allowing for better gas mileage. You patent the improvement to the wing design. You can not make and sell cars with your wing design because you will be infringing the original patent which has broad coverage for flying cars. Yet at the same time, that big three auto maker can not incorporate your wing improvement into their car.

This is where licensing agreements and selling of patent rights comes in. And this is not my area of expertise or practice, so I will leave it at that.

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An introduction

I have been a registered as a patent agent with the US Patent and Trademark Office since 28 April 1998. I worked for Pirelli Cables and Systems (now Prysmian Cables and Systems) in Lexington, SC as a patent agent (among other things) until early 2004. Presently I work as a sole practitioner patent agent, writing applications for both corporations and independent inventors.

I hold a Master’s degree in Physics and have worked in industry in research and development for nine years before I started drafting patent applications. I am named as an inventor on two patents myself.

In my years of research and development and in writing patent applications I have gained experience in many fields. However, I do not draft patent applications in all fields, biotechnology and computer programs to name two.

I offer the following patent-related services:

*Drafting of Patent Specification and Claims
*Filing Patent Application with USPTO (both provisional and utility)
*Drafting Office Action responses on a filed patent application.
*If an inventor wants to write the patent application him/herself, I do offer to look it over and suggest editorial changes to make it conform more particularly to the USPTO format.

For the above services I charge reasonable hourly fee with a free initial consultation-not to exceed one hour.

After the free initial consultation I may decide I can not take a client’s case. This may be because the invention presents a conflict of interest for me (too close to the inventions of another client), the invention may not be in my fields of expertise, or I may feel that the invention is not patentable based on the consultation, preliminary searches, or my own knowledge.

I do NOT provide marketing studies, contracts, licensing, or negotiations or advice on starting a business.

In my posts, I hope to provide some insight into the world of patents and inventions.

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