A powerful majority of folks seeking patent protection to protect their merchandise or technologies leave the details the drafting procedure to their patent attorneys. That is, given the specialized (and, frankly, arcane) nature of the patenting procedure, even very accomplished organization professionals believe that a patent specialist (i.e., lawyer or agent) is far better equipped to fully grasp how to very best describe their invention to the US Patent Office ("USPTO"). This can be an ineffective way to handle the front finish of the patenting method considering it can result in the process getting much more contentious. Such contentiousness can result in narrower claims than desired and can make the patent take longer to problem and make the approach considerably significantly more highly-priced.
In determining whether a client's invention meets the legal requirements for patentability, a patent specialist thinks about how to legally distinguish the invention from those that have come prior to. Particularly, the patent specialist need to demonstrate to the USPTO-as represented In the individual of a patent examiner-how the invention is new and not obvious in view of what others have completed previously. The patent specialist need to also determine how to describe the invention in a way that satisfies the precise technical and legal specifications. Even though operating in this "legal silo," a patent specialist fairly possibly does not have any information about the commercial rewards the invention supplies given that the client's business team ordinarily is not involved in the patent drafting approach. This implies that when drafting the application, the patent attorney presents the invention in relation to the "check boxes" that the invention must satisfy in order to meet the legal specifications of patentability.
Moreover, even if such business information is out there to the patent specialist, they rarely possess certain expertise in marketing and advertising or organization. With out such coaching, a client can't reasonably anticipate their patent specialist to present the invention in a way that successfully convinces the patent examiner that the invention "the ideal factor given that sliced bread." Most patent attorneys thus will wholly ignore what I call the "Wow Factor" related with an invention.
This "Wow Factor" sounds very a bit like advertising and marketing, does not it? Exactly! And, given the reality that organization experts top comprehend the benefits their merchandise and technologies supply over other people that have come ahead of, a critical factor in a productive patenting effort is to not only demonstrate to the patent examiner that the claimed invention is legally patentable, but also that the invention is SUBJECTIVELY deserving of a US patent. It is this subjective aspect that is best handled by those who comprehend the advantages that a item or technology brings to the relevant consumer-that is, the marketing team charged with creating a small business case for the item or technologies associated with the invention. Although frequently absent from the patent drafting method, I believe that this promoting story serves as a vital factor any productive patenting process.
I will note that many patent specialists have disputed my contention that a substantial aspect of a profitable patenting procedure ought to involve developing a marketing and advertising story. These discussions ordinarily center on the contention that "if an invention is patentable, the patent examiner is legally obligated to permit the patent application." This is no doubt accurate, but usually an invention that is legally patentable enters into a contentious examination approach when the examiner develops a point of view (albeit 1 that is legally wrong). When this happens, the examiner will commonly "dig in her heels" and refuse to permit the patent application based upon her misperception of the legal merits of the invention. Such a contentious examination process will, at a minimum, add considerable price and time to the patent application method, but is also likely to result in undesirable amendments that will result in the final patent getting insufficient to guard the commercial item or technologies from competition.
In drafting a patent application covering a client's invention, countless patent specialists fail to recognize that there is a individual on the receiving finish of every single patent application. This person-the patent examiner-spends her day reviewing patent applications in a fairly narrow technological area. Moreover, the patent examiner labors under a quota system that requires her to total her examination of each application in a fairly short period of time. 1 can image this examiner working on, say, light bulb patent applications. Each and every patent applicant (and his attorney) most likely believes that his invention is exclusive and a "game changer." Nevertheless, for the patent examiner who spends her perform time examining light bulb inventions day immediately after day, each and every application likely seems like a slight variation (if that) on what she has seen over and over once more.
One can consequently picture the patent examiner successfully yawning at most patent applications that come across her desk. Add to this the brief time the examiner has to gauge no matter whether the invention meets the specifications for patentability and it need to be clear why lots of worthy patent applications are subjected to contentious and pricey patenting procedure prior to issuance.
Further to these issues that are personal to the patent examiner's job, on a broader scale, 1 must also remember that the patent examiner's choice is imbibed with public policy considerations. That is, if the patent examiner makes it possible for a patent to issue covering the claimed invention, no one else will be able to legally do what the patent covers. The issued patent will thus successfully restrict the public's freedom of action in the area of the issued patent. To justify this, a patent application will need to demonstrate to the patent examiner why the public should be prevented from undertaking what it would otherwise legally be able to do-to practice the item or technologies covered by the patent claims.
By remembering for the duration of the patent drafting approach that there is a person who stands in between the patent application and an issued patent significantly price, time and effort can be eliminated from the patenting approach. Put basically, in addition to presenting a legal basis of why an invention is patentable, a patent application should really also present a Advertising STORY the invention to the patent examiner. The important is to incorporate in the patent application a "hook" or "theme" that is directed to creating a story for the patent examiner why the invention is not only legally adequate for patenting but also that the invention bears a enterprise reason for existing. A vital part of this effort centers on demonstrating to the patent examiner why the invention merits allowance, specially given the fact that the patent will avoid other people from freely acting. To do this, a patent search ought to be conducted and analyzed, as the patent literature will probably serve as the main source of rejections posed by the patent examiner.
To build this robust promoting story, the patent specialist should really collaborate with 1 or alot more persons on the organization team responsible for building a home business case for the item or technologies underlying the invention set forth in the patent application. This will enable the patent specialist to craft the underlying patentability story-or "Wow Factor"-that can result in the patent examiner choosing up the application and thinking "this is not the same old light bulb invention that I see day right after day." Whilst the patent examiner will most likely not allow the patent application on a initially assessment, I contend that the subsequent examination process can be rendered much less contentious by creating a promoting story to assistance the patentability story.
It should really be noted that a large number of patent specialists will not be amenable to this technique mainly because it is a deviation from the regular strategies of patent drafting. Particularly, numerous patent specialists have been trained to talk about only the invention in the application and to ignore the prior art unless it is brought up by the examiner. This technique was surely a viable 1 prior to the explosion of patent filings in the last ten or so years, but now there is so significantly prior art available in most technologies locations that a patent applicant should recognize that the prior art cannot and need to not be ignored. I believe that by facing the prior art head on and preparing a patentability method and a promoting strategy the patenting procedure will likely be less contentious.
Lastly, some patent specialists may well appear at my recommendations as a reason to rail against the USPTO and patent examiners. While there are various problems that have to have to be fixed, the truth is the technique is what it is right now. One can wish for legal purity in the patent system, or 1 can be pragmatic about what it takes to effectively obtain a patent below the conditions existing now where the patent has suitably broad claims to shield the underlying product or technology from competitive knock-offs, exactly where this patent was obtained at an acceptable cost in a reasonable time frame. At the end of the day, most clients would prefer the latter.
No comments:
Post a Comment