Patents in Business

Responding to Restriction Requirements

I recently had a three way restriction requirement from the US PTO on an application. The examiner had restricted the invention three ways:

1. An apparatus with features possibly usable outside the client’s business.
2. A special instance of the apparatus directly relating to a product being developed by the client.
3. A method for using either invention 1 or 2.

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A Few Pointers on How to Review a Patent Application

For the uninitiated, the typical patent application is a very verbose and sometimes awkwardly written document that appears to describe an invention. Each section has its own particular necessary purpose and content. Some of the reasons for the content and wording are legacies from court cases, rulings by the Patent Office, and just plain old habit and preferences of the drafter.

In general, the drafter intends to put the invention in its best light, highlighting the essential elements of the invention while not limiting the invention to the exact description shown. Remember, that the patent may be enforced 15 years later when technology has developed in unexpected and unanticipated ways.

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The Embedded Patent Attorney

There were a few comments on my post about lowering costs. Notably, Doug Sorcco suggested the concept of the embedded patent attorney and Matt Buchanan added some comments. Doug and Matt both describe the patent attorney who knows the insides of your business, walks the halls, and attends both business and engineering meetings. No surprise here, I like the idea.

This is one of the most important ways to lower patent costs, and as Doug suggests, one reason for firing your patent attorney if he/she does not do this for free.

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The Holistic Advisor

In talking with a client last week, we got on one of our favorite topics: almost nobody has the big picture in mind when it comes to patent protection.

The client was a CEO of a small company with a little revenue and a couple of very broad and early patents in their rapidly developing field. His biggest complaint is that most of the patent and legal experts know their specialty, but cannot integrate it into a cohesive business plan.

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