The latest rules from the US Patent and Trademark Office are quite sweeping. The new rules have several facets. On one hand, the PTO is limiting the number of continuation and continuation in part applications, as well as requests for continued examination (RCE). On the other hand, the PTO is limiting the number of claims you can have by forcing the applicant to file an Examination Support Document if you exceed the claims.
Tag: Business Theory for Patents
Building a Patent Thicket
One of my clients likes to describe patents as hyenas. A lone hyena can be easily frightened away, but a pack of hyenas can be very aggressive.
With one patent, a competitor or potential infringer has one thing to analyze, dissect, and find a way around. It may cost a little bit of money to analyze, but it is certainly a doable proposition.
With a dozen patents, the competitor’s workload is substantially increased to the point (hopefully) that it is cost prohibitive for the competitor to find work-arounds for every one of the dozen patents.
One of my clients likes to describe patents as hyenas. A lone hyena can be easily frightened away, but a pack of hyenas can be very aggressive.
With one patent, a competitor or potential infringer has one thing to analyze, dissect, and find a way around. It may cost a little bit of money to analyze, but it is certainly a doable proposition.
With a dozen patents, the competitor’s workload is substantially increased to the point (hopefully) that it is cost prohibitive for the competitor to find work-arounds for every one of the dozen patents.
Writing Your Own Patent
Inventors sometimes file their own patents. Often, I consult with inventors who are considering writing their own patents or those who have already done so. In general, these pro se patentees are looking to save some very valuable cash and are willing to invest their time and effort into learning how to write and file a patent.
Inventors sometimes file their own patents. Often, I consult with inventors who are considering writing their own patents or those who have already done so. In general, these pro se patentees are looking to save some very valuable cash and are willing to invest their time and effort into learning how to write and file a patent.
Slowing Down Patent Issuance
There are many strategies and situations where slowing down the patent from issuing is an enormous benefit to the client. Personally, I take a very proactive approach to making the patent issue as late as possible where this is needed, such as filing a provisional application. I could not bear the thought of writing a sloppy patent application or intentionally filing claims are ambiguous or need a lot of work to clean up. I think it is reprehensible to intentionally and needlessly drag out prosecution by filing endless responses to Office actions, because it lines the pockets of the attorney without benefiting the client. I do think there are legitimate, low cost mechanisms that can extend the prosecution time to help the client get the most protection for the money spent.
There are many strategies and situations where slowing down the patent from issuing is an enormous benefit to the client. Personally, I take a very proactive approach to making the patent issue as late as possible where this is needed, such as filing a provisional application. I could not bear the thought of writing a sloppy patent application or intentionally filing claims are ambiguous or need a lot of work to clean up. I think it is reprehensible to intentionally and needlessly drag out prosecution by filing endless responses to Office actions, because it lines the pockets of the attorney without benefiting the client. I do think there are legitimate, low cost mechanisms that can extend the prosecution time to help the client get the most protection for the money spent.
Another Use For Provisionals
Provisional patent applications give the inventor the right to label a product “Patent Pending”, which can have enormous business effects. The mere label of “Patent Pending” can be enough deterrent to keep competitors out of a business arena.
Provisional applications can be obtained with very little disclosure. In theory, a cocktail napkin with a figure and a little description may even suffice.
Provisional patent applications give the inventor the right to label a product “Patent Pending”, which can have enormous business effects. The mere label of “Patent Pending” can be enough deterrent to keep competitors out of a business arena.
Provisional applications can be obtained with very little disclosure. In theory, a cocktail napkin with a figure and a little description may even suffice.
Your Competitive Advantage May Not Be Your Intellectual Property
As much as patent professionals like to harp about the advantages of patents, copyrights, or trademarks, it is also like asking a barber if you need a haircut.
As much as patent professionals like to harp about the advantages of patents, copyrights, or trademarks, it is also like asking a barber if you need a haircut.
Use Patents to Protect a Business, Not to Protect an Idea
Are you selecting the right things to patent? It is okay to start with the Big Inventive Idea, but look at the business as a whole to select what actually gets protected.
People come to me with inventive concepts that they want to patent. The engineer or inventor in them relishes the “cool factor” that comes from that incredible moment of conception of the concept. My experience is that the excitement and euphoria over the invention is often palatable years afterward. In fact, there are several of my own inventions that to this day bring goosebumps when I think of that very moment when I came up with the concept.
These concepts are often the ones written up in invention disclosures or used by the independent inventor to start a business.
Are you selecting the right things to patent? It is okay to start with the Big Inventive Idea, but look at the business as a whole to select what actually gets protected.
People come to me with inventive concepts that they want to patent. The engineer or inventor in them relishes the “cool factor” that comes from that incredible moment of conception of the concept. My experience is that the excitement and euphoria over the invention is often palatable years afterward. In fact, there are several of my own inventions that to this day bring goosebumps when I think of that very moment when I came up with the concept.
These concepts are often the ones written up in invention disclosures or used by the independent inventor to start a business.
Claiming Business Method Patents: Taking Advantage of Long Pendency
I have often wondered the role of business method patents. Today, I was able to attend a very interesting talk by John Doll, the Commissioner for Patents. One thing that the Commissioner pointed out was that there is a 111 month backlog for business method patents. That is almost 10 years worth of backlog. Is this a problem or an opportunity?
I have often wondered the role of business method patents. Today, I was able to attend a very interesting talk by John Doll, the Commissioner for Patents. One thing that the Commissioner pointed out was that there is a 111 month backlog for business method patents. That is almost 10 years worth of backlog. Is this a problem or an opportunity?
Patent Drafting Styles Change to Meet the Client's Needs - Building a Portfolio
This post is a third of a series of posts describing patent drafting styles. See the others here and here.
When building a patent portfolio with the intent to sell a company, the main audience is not potential infringers, but the acquiring company. Depending on the situation, the acquiring company may have any of several different reasons for the acquisition.
This post is a third of a series of posts describing patent drafting styles. See the others here and here.
When building a patent portfolio with the intent to sell a company, the main audience is not potential infringers, but the acquiring company. Depending on the situation, the acquiring company may have any of several different reasons for the acquisition.
Patent Drafting Styles Change to Meet the Client's Needs - Patents Used for Licensing
This is a second part of a series on different patent drafting styles. The first post dealt with protecting an existing product. The final post deals with developing a portfolio with intent to sell a company.
Patents that are intended for licensing have a distinctively different feel to them and a different method of drafting. Here, our intent is to protect an idea that may potentially be more valuable at the end of the patent life. In this circumstance, we are unable to predict where the technology may change.
Rather than focusing on a product or opportunity, these types of patents identify a concept and develop as many variations or configurations of the concept as possible.
This is a second part of a series on different patent drafting styles. The first post dealt with protecting an existing product. The final post deals with developing a portfolio with intent to sell a company.
Patents that are intended for licensing have a distinctively different feel to them and a different method of drafting. Here, our intent is to protect an idea that may potentially be more valuable at the end of the patent life. In this circumstance, we are unable to predict where the technology may change.
Rather than focusing on a product or opportunity, these types of patents identify a concept and develop as many variations or configurations of the concept as possible.
