Anyone here know anything about patents?

[Sho'Nuff]

The struggle we continue with through the last 13 years is the main difference between what he knows from Europe with the focus on Jepson type claims versus the style used in the U.S.

U.S. and European patent law differ in far more ways than simply the form of claims. That is precisely why U.S. attorneys don't offer advice regarding the European patent system beyond widely known principals. If an issue requires substantive consideration of a European patent law issue, competent European counsel will be engaged. Most European patent attorneys follow the same practice when contemplating U.S. patent issues.

The claims are not straightforward and talk in circles with confusing "lawyer-speak" in an apparent effort to make simple concepts difficult to understand due to ambiguity. I thought I read something somewhere that had labeled these type of U.S. claims as the Markush type.

A properly drafted claim should not be ambiguous. It might take some time to work through the machinations of the claim language, but nothing should be "unclear." If you are in the small molecule area, I can see where you might think that claims are written deliberately to obfuscate the claimed invention. The claims for such applications often include multiple markush groups and various "if/then" scenarios.

However, I believe any other independent inventor attempting to write their own claims will run into similar difficulty. I tend to think of it as U.S. lawyers creating their own job security to perform a task that would otherwise be very simple without their involvement in the first place.

I agree that most independent inventors will find the U.S. patent system (or any of the other patent systems around the world) confusing. There are many hidden pitfalls, deadlines, and formulaic requirements, all of which can substantively impact the scope and enforceability of a patent, and hence its value. That is precisely why an attorney specializing in patent prosecution is valuable. Without substantive guidance, it is very easy to spend a lot of money and time obtaining a patent that may not be worth the paper it is printed on.

Soxfan and I have different perspectives. His is from an expensively trained attorney and mine is from an independent inventor seeking to minimize costs. My writeup above contains the exact lessons it took me several years and numerous patent applications to learn. No attorney will provide such useful information. Everyone has their own methods and some may find my advice useful while others will not.

Do you really think you minimized costs by spending multiple years to learn a subject when a patent attorney could provide more substantive advice and experience in a short teleconference or meeting over one afternoon? As to your comment that "no attorney will provide such useful information," you are probably correct. Few attorneys will tell their client to read up on the very legal question their client asked them to look into, for at least two reasons. First, the client is paying the attorney to handle the legal issue. And second, the client likely does not have the legal training to properly understand what it is the attorney would tell them to read.

Maybe an example will help. Say a client comes in and asks me to prepare a patent application. Do you really think they want me to say "hey, why don't you go home and read the manual of patent examination procedure (a 2500+ page manual) and get back to me?" No. They want substantive guidance from someone who already understands the procedure and can walk them through the entire process without jeopardizing their rights. That is precisely the value of a patent attorney. I'm not going to apologize for the fact that my chosen profession provides a value added service to clients.

 

[Sho'Nuff]

Also, if you honestly think that patent attorneys don't willingly provide "useful" information, see the forums at http://www.intelproplaw.com/. I and many other licensed patent attorneys frequently post on that board. It's a tremendous (and FREE) resource on U.S. and European patent law.

 

[chusteczka]

I do not have a problem with you, soxfan. Any attorney that shares their knowledge the way you do for free on a forum like this is well regarded by me. Yes, it hurt to have you belittle my entire post by picking on one little summarization where I provided proper reference. But I do not have any problems with you, in fact, I appreciate your taking the time to reply to the thread's original post and to mine.

In my situation, where I was a student on loans with no money when I began submitting patent applications, yes, I do believe that I saved money even after losing maybe four applications due to learning issues. Unfortunately, it is often the inventor with no monetary resources that needs to balance the lack of resources with doing things right by a costly attorney. This is very risky and no bank is going to provide such a loan with an undetermined payment period. I had a patent agent quote me $46,000 for two or three concepts that I wanted patented about 7 years ago. That was way too much for me to handle as a student. I had to turn him down and slog through the mess without legal assistance. Luckily, I had my friend and mentor for direction even if he is not familiar with the U.S. patent system. I currently have three concepts patented and lost about four or five. To be honest, I have lost count on those that were lost but they are under eight. Two of the successful patents were denied a utility patent so they are relatively weaker design patents. Only one of the three is a utility patent and that required an attorney to rewrite my first claim. My original claim is still claim #2 but the attorney's rewrite of my first claim is the allowed Claim #1. I will be honest and admit that I do not know why his changes were allowable. I just know that I will go back again for future applications after I have created the application as I envision it.

I would expect that many inventors are the do-it-yourself type that would be happy to be provided direction to learn for themselves how to create their application. However, it will still come down to a point in the claims where legal assistance is necessary. I did account for this in my original recommendation by stating after the provisional application is prepared, to get legal assistance. My post blurred the lines of when exactly to obtain that competent legal assistance of before or after submitting the provisional application. It is best to obtain competent legal assistance before submitting the provisional application. I accept this. I also accept that trained legal counsel is necessary when writing the claims. In my view, it is best for the inventor to create the rough draft to minimize the attorney's time and effort in an attempt to create the inventor's vision. Besides, it is always good to have someone review a paper to offer insight and change before submitting the paper. I would rather have the attorney as the second person with the advice rather than as the first creator with no one to check the work afterward. The attorney can take the inventor's ideas and expand on them rather than creating everything from scratch. I have hired an attorney in the past and expect to do so again this summer for about four applications that I am currently putting together.

I was previously aware of much of what you mentioned (but not all) regarding the liabilities of the Jepson claims. You communicate the ideas better than I can due to your training. Thank you (very much) for your clarifications.

IMO, many of the hidden pitfalls of the patent system would not be an issue if claims were written in the Jepson style with part numbers referring to the drawings of the components. Part of the public backlash of the patent system is due to the confusing and ambiguous manner in which many claims are currently written and accepted by the USPTO. Of course, this is due to the results of court trials but that just exemplifies the problems to those not caught up in the theory of the problems. The examination backlog would also be reduced significantly if the claims were required to be written in a clearer manner. This would require a redefinition of what is considered obvious over the admitted prior art. For anything, it is too easy to say that novel component 'C' is obvious when used with known components 'A' and 'B' after these components are shown and described together. If all three components were not previously described together AND the end result is novel and different from the original components 'A' and 'B' (I purposely did not mention "novel and unforseen"), then the combination should not be declared obvious. That is an area that needs to be redefined in current practice.

My work is in the mechanical area not the chemical area. Not that this matters and I am definitely not striking back at you with it since it is unimportant, just for your information.

What I provided in my initial post are not the legal specifics but an overall approach for an inventor to take in the effort to think the invention through as much as possible as well as produce the initial rough draft of the application. Attorneys dwell in legal specifics but an inventor initially needs a method of approach. The book Patent it Yourself by David Pressman does its best in providing a method with very useful information. However, it still took me much work and time to obtain the method I provided earlier. My method is a workable plan of attack for any inventor that includes learning as much as possible without getting bogged down in the legal specifics. My method recommends obtaining legal assistance at the time it is necessary. If an inventor has more money and less time, and really does not want to become involved in the patent application process, then they may go straight to an attorney. However, my lessons learned can provide that choice to an inventor by making the overwhelming patent application process a little easier to understand.

Thank you for providing the URL for http://www.intelproplaw.com/. I was not originally aware of this site and will find a use for it. Also, I do not "think that patent attorneys don't willingly provide 'useful' information". It seems they tend to get bogged down in the details without stepping back to provide an overall plan of attack. Attorneys tend to speak from their own point of view and not the point of view of their audience. Also, attorneys are often protective of their knowledge due to the high cost they paid to obtain it. This is understandable in a way but it tends to alienate them from their potential customers. This is changing with the free information flow available on the internet but it takes time. You are clearly at the forefront in providing your knowledge for free on this and the other forum and this is greatly appreciated.


Edit:
s/forced/required/

Changed From:
"If all three components were not previously described together AND the end result provides a result different from the original components 'A' and 'B' (I purposely did not mention "novel and unforseen"), then the combination should not be declared obvious."

To:
"If all three components were not previously described together AND the end result is novel and different from the original components 'A' and 'B' (I purposely did not mention "novel and unforseen"), then the combination should not be declared obvious."


Additionally, I do not mind admitting to the limits to my knowledge since I know that what I have to offer is useful. This is similar, in a way, to a Jepson claim where prior art is admitted because the improvement upon the prior art is known to be novel, unobvious, and useful. For me, it is folly for an attorney to ambiguously reinvent the wheel to teach an unobvious yet useful alteration to that wheel.