Q:

Why should your inventor learn to do patentability searches?

A:

It all starts with the inventor learning to do free patent searches at https://patents.google.com/ and www.USPTO.gov. Google gets you the American issued patents. USPTO.gov gets you the international pending applications. The inventor should build a library of related inventions early in his inventive process. A university wasted a year’s graduate research by re-inventing an eye surgical instrument that was already described in a published patent (they failed to read the text of the patent and only scanned the drawings, but hidden in the text were descriptions of an alternate embodiment surgical instrument that the poor doctor/grad researcher spent a year re-inventing).

Q:

How do you do a patentability search?

A:

Tips on searching include pretending you wrote a patent on this invention years ago, and you must have been forced to use a few keywords. As an example, an invention to harvest oil from rock must use the words “underground, heat, oil.” A narrow term like “shale” may not be in the patent because oil stuck in the sand is not stuck in shale. But it is underground, and heat is needed to extract it! So the inventor googles the broader terms and quickly scans hundreds of patents whose titles relate to harvesting oil from underground using any form of heat (the author wrote two patents using giant fuel cells underground – see if you can find them).

Once your free search is done and a quick consult with an experienced (minimum five years) patent attorney results in a “go” decision, you may want to invest between $1,000.00 and $5,000.00 on a professional search. Professionals use subclass search techniques in addition to simple word searches, and one bad patent can ruin your chance of getting a new one, just one.

A cost saver is to file an inexpensive (fixed price maybe $2,000.00) provisional patent application. Then publicize your limited test marketing and put “patent pending” on all literature. If the bloody invention starts to turn into a Cabbage Patch doll, then upgrade to a utility patent and let the USPTO do a super search! All the while your inventor can google a little every night and in the course of a few months he will find everything. Hecan even buys some “Dialog”® time to round out non-patent literature.

Your inventors will gain technical insight into their own invention while pursuing thousands of old but related ideas!

Q:

Is the invention obvious?

A:

Read KSR at Wikipedia to understand the higher level of non-obviousness needed for ma patent grant. Now the one skilled in the art has common sense that rearranges known elements into new combinations. Your inventor must somehow jump over tall buildings and invent a combination of elements that just would not have been obvious to try by “the one skilled in the art,” he who floats mystically over each inventor’s head shaking his finger saying, “I could have tried that!”

Once an invention is conceived and a free search conducted, then a brief discussion with an experienced patent lawyer should define whether the “point of novelty” is nonobvious, in other words, is the genie in the sky shaking his finger saying “I could have tried that!” Sadly examiners brag that they have rejected software patents with one hundred old elements newly combined into a new way to prevent identity theft. The bankthat wishes to launch this system may very well succeed in preventing crime, but may not be able to prevent competing banks from copying these one hundred old steps which are newly combined. This KSR trend by the U.S. Supreme Court has tilted America one step closer to a fully socialist economy, where individual accomplishments must be shared by everyone “for the good of the nation.” (The reader can decide if this resonates withsomething Karl Marx wrote in 1850.)

Sometimes the solution has to be commercially successful to gain a surprise market share while keeping the patent application alive over several years. Such a tactic means go slow and cheap until you prove you met a long sought need – because (stupid) you’re the one making money on this non-obvious idea!

Q:

How do you write a patent?

A:

Now it’s time to write that utility patent, the most complex document in America’s legal system. First off, read John Denver’s “Fly It Yourself” before trying to Patent It Yourself. Most million dollar patent lawsuits revolve around no more than three words out of ten thousand in a patent. For example, does the term, “horizontal rotation means” include the limits of when a rotating searchlight stops rotating? At the highest patent appeals court (CAFC) two judges said they couldn’t find the word “stop” in horizontal, but the oldest judge chided his two younger bench members that they just couldn’t read English! Of course if it rotates it has to stop somewhere and whether it stops at 352 degrees or over 360 degrees is implied as part of the limits of the invention! Three little words.

Every patent like every diamond has a flaw in it when it gets to court. Hire a pro with at least a hundred patents behind him with several valued in the millions. A little trial experience helps, too, to experience the grinding down of three little words into a fiveyear litigation, with millions of dollars at stake.

Keep the bloody patent lawyer to a fixed budget. Cram several related inventions into one filing. Write twenty claims on the main invention and one claim for each sub-invention. String the whole herd of inventions out for years until the products either succeed or fail in the marketplace. Remember when your patent gets to court, it will not matter if yourpatent lawyer has a doorman in his building, a lobby, an elevator, a pretty receptionist, a shiny conference room and a gorgeous view from his office. Three little words and the  ability to craft the right words are all that counts. Hemingway did not work in an office at all. He wrote his best in a walk up studio in Key West, Florida.

If you don’t like your patent lawyer’s writing style, boot him. Remember it is the juror, having only a driver’s license as a qualification, who will be the major decision maker in the life of a contested (meaning valuable) patent. Tell it like it is, Harry, don’t mush it up with lawyer language. Which do you prefer? A horizontal member protruding from a wellhead pivotally connected to a reciprocating shaft? Or just “a pump handle.” Don’t pay for the words. Pay for the clarity.

The majority of litigated patents are basic (easily knocked off) mechanical devices. So a thirteen-year-old should be able to build the water pump after reading the patent. When it comes to exotic magnetically induced hypnotic trances, forget it, you need to rely on your propeller head inventor to screen the language down “to one skilled in the art,” but remind him that a few pages on the background of magnets and hypnosis would really help the inventor’s mom’s nursing home companion, who might be on the jury.

Q:

What is a claim?

A:

It is everything. Claim 1 is your billion-dollar invention, it is your diamond. Read it and answer these questions with your inventor: Does it list all the parts of the invention? Does it relate all the parts together into an understandable product?

By the way if you have to flip back and forth a hundred times to the drawings and the specification to understand Claim 1, get a new patent lawyer. One mystery claim like a “means to impel a fluid vertically functioning to drench your poodle” instead of a waterpump might be fine. But not Claim 1, the simplest definition of your metes and bounds of your water pump as understood by your mom’s nursing home companion. Remember the value of a patent is often measured by the ratio of the length of the specification divided by the length of Claim 1. You want a long specification and a short Claim 1 if possible!

Insist on the inventor being anal about every little detail in his water pump description to your patent lawyer, even including the length of the preferred handle. Let the patent lawyer wrestle with Claim 1 in view of the history of water pumps to craft the shortest Claim 1 that he can.

Q:

What do you do when the Examiner calls your invention obvious?

A:

Hit a snag? Did the Examiner shake his finger at you and say his parrot could have invented this thing? Send him a working prototype like a rolling eyeball children’s book with big bulging eyes! See, it’s a lot more fun than that flat button eye book! Send in a bicycle safety light to try! Create a cool video! And as a last resort, go visit the Examiner with a well-rehearsed dog and pony show. Send your inventor and try to keep the patent lawyer on a cost leash on a conference call.

Q:

Should you take half a patent?

A:

Don’t look a gift horse in the mouth. If the Examiner grants a narrower Claim 2, but rejects your prize Claim 1 even with a Final Rejection, then get Claim 2 issued. Only if the darn product is a WOW in the marketplace should you file a continuation and keep fighting for Claim 1. Avoid Appeals. They were created as part of the patent lawyer full employment act. Try to get the Examiner excited about something in this invention. Maybe it saves energy, maybe it saves lives, maybe it’s just plain fun. He is human. Gethim to relate to the subtle (as inspired by genius) improvement to your water pump that even grandma with arthritis can operate.

Each patent should tell a short story on why this invention makes life a little better. Grandma can pump the barnyard water while junior tends more to his algebra homework.