Before I spend a lot of money on a patent application I spend about $600 and have my attorey do a patent search and get his legal opinion about patentability.

Based on my experience, it is very subjective. Remember each patent application is administered by a real human being. My patent was initially rejected. Since my invention involved arithmetic and a manipulative that could be “folded”. The patent officer rejected it based on the fact that there was another patent that involved folding something and another patent that had numbers on it.

In my appeal, I very respectfully pointed out that just the folding wasn’t that important to my process and that denying my device that involved arithmetic (and therefore numbers) based on the fact that another patent that allowed users to organized printed number to show arithmetic equations made very little sense.

The patent guy agreed and approved my patent. In the second version of my patent (the one that was accepted) I did take out some claims where I clearly was infringing. On the other hand, those claims were originally included because my Patent Attorney basically said “Go big, and claim everything.”

If you have done a thorough patent search and know everything that is out there. Rely on a good PA to be objective while you make your claims why your idea is different.

If you can convince your PA – I say Go For It. It’s only money.

I think another way of rewording your question, could be…

’How close is too close before I actually infringe on another patent?

Well, generally speaking, a patent contains several parts—a specification, usually one or more drawings, and always one or more claims. No matter how much a questioned machine, manufacture, composition of matter or process may look like the specification and drawings of a patent, it is only the claims of the patent which can be infringed. For that reason, if an issue of infringement arises, it becomes necessary to examine the claims of the patent in question.

You may want to read up on Literal Infringement and infringement under the Doctrine of Equivalents for a better understanding regarding infringements …

http://www.intellectual.com/infringement.htm

Sir edward

i guess if thats how we need to look at it.

am i safe to say that is how new and improved came along?

well now as inventors is it ok to do this?

i believe in my idea and feel that it would be great. it is close to the other i have found. but not so that it is exact
my idea is better and cheaper to make

WV Robert: It’s important to remember that the process of winning a patent has to do (only) with the question of patentability – - not infringement of claims. These are wholly different legal concepts.
The patent examiner (PE) will review your NPA claim(s) and determine if the invention as presented and claimed is clear and enabling (described such that someone with ordinary skill in the specific tech. field can make or practice the invention).
Then the PE performs a thorough, global search of the patent literature…and other literature…to see if the invention is (1)new…or (2)obvious in light of pre-existing techology. The PE does not consider the claims listed/recited in the previous patents; she/he is concerned only with what has been disclosed and, thus, known by the public.
This examination process has nothing to do with infringing any patent claims (which is a matter of concern in the courts, not the USPTO).
RE: The answer to Robert’s question (How close?)lies in the consideration of “prior art” (pre-existing patent/non-patent documents) with the PE determining if the inventor’s new combination of known elements (or method steps)would have been obvious to one of ordinary skill in the field. Example: the PE must consider if the inventor’s idea of putting snow skiis beneath an automobile would be obvious in view of a publication of Santa’s sled. Rather than being subjective, the process is based on intricate procedures couched in statues and case law. Among the questions to be resolved is: Does the new combination (though never before created)provide unexpected results. The PE never considers whether the new combination is cheaper or that it operates better. It is not unusual for newer inventions to be far more expensive and less reliable than their predecesors. dk

Don

thanks for the insight to things..so as long as i can show that its better and was not meant to be used in that
way before. i should be alright so to speak.
so who would i contact first patent att. or USPTO

Robert,

The USPTO can’t really give you an opinion. They opine after you submit and it shows up as an “office action” where they raise questions about how your application is worded or possible infringement. Almost every patent application gets one or more “office actions” to work thru. Utility patents can take one to two years before you get an action and design patents usually get them in 6 mos to a year.

Keep in mind that you can do a Design Patent and a Utility Patent. You can read up on them at the USPTO website. If you are trying to do a utility patent, which is usually more valuable, then I absolutely recommend you contact a patent attorney. I suggest ones that have been around for awhile and who used to work as Patent examiners. You also want one that has expertise in your patent subject i.e. chemistry, electronics, engineering etc. You can find a directory of patent attornies that are approved by the USPTO. Typically you can get a Design Patent application done for about $1,000 and a utility patent for about $5,000. I like an attorney who quotes a flat fee rather than ongoing hourly billing. Keep in mind you can file a Provisional Patent application for only$80 and you have 1 year to decide whether to file the full blown patent. I prefer the Provisional Patent first while I spend some time to see if the product is marketable. If you get a licensing deal, its not uncommon to require the Licensee to pay the full patent application costs.

Good fishing.

don

so i should use a PP instead. faster and less cost right?
how long can they last?
also i dont really need an att. for that right.?

Robert: There really is no “Provisional Patent;” it’s a provisional patent application…and provides patent pending status for up to 12 months and establishes your initial filing date. When you eventually have a regular application filed, the total cost of the process is usually more than simply starting with the regular application. But many folks like the less expensive start…followed by a period of evaluation before stepping up to the regular (non-provisional patent application or NPA). Yes, the PPA can be filed on your own…especially if you use a software program like PatentEase or other popular programs, but in every case you should ask a patent agent or attorney to look over the PPA before submitting it. Check with USPTO on current fee levels before filing. The current PPA filing fee is actually $110. From my own experience as a patent examiner and other USPTO positions, I can tell you that applicants without an agent or attorney involvement very rarely succeed.
BTW, I personally don’t recommend the flat fee approach. You’re probably going to get even flatter representation since the agent/attorney will make the same money regardless of how hard or good she/he works. Check references and ask good questions. dk

" The USPTO can’t really give you an opinion. They opine after you submit and it shows up as an “office action” where they raise questions about how your application is worded or possible infringement "

Just to clarify, the USPTO will not raise questions regarding infringement. To reiterate Don’s statement above, “It’s important to remember that the process of winning a patent has to do (only) with the question of patentability – – not infringement of claims.”

I would go out on a limb and say that most inventions can be patented. That is almost a misleading statement. Whether something is considered “obvious” often has little to do with whether or not it is significantly different than the prior art – a very minor change to an existing product can result in you having a patentable product. Of course your protection tends to be, in effect, limited to whatever is novel and non-obvious relative to the prior art (and may be even more limited than that). There are many situations where you can patent something, but it would arguably be a waste of money because your patent would not fulfill its intended purpose of blocking competition.

Here’s a prior thread on the subject – http://www.edisonnation.com/forums/patents/topi....

To further clarify: USPTO has no authority to deal with…or even imply “infringement”…or (as Bill quotes me above) raise questions about it. They simply don’t go there. The closest activity to infringement is when two applicants are claiming substantially the same exact invention. This involves interference proceedings where inventorship is determined (that’s where inventors’ notebooks can come in handy).
Patents are granted every Tuesday (the only day in the week when patents are granted)where working those new patents require legal analysis of pre-existing patent claims to see if the new patentee has freedom to operate in business. My point is this: While the USPTO may grant you (and 7.5 million others a patent, your exclusive rights to your own “stuff” may be hampered by currently “live” patents that were already in your space.
More about “most inventions can be patented”…next post. d

Another point is that most inventions, generally speaking, are in fact not patentable. Thus, wisdom prevails in not even pursuing some patents in the first place. Product developers should seek qualified legal advice on this initial grain/chaff sifting process; it’s worth it. Besides, there are good alternatives to patenting.

Of those inventions for which patents are pursued, the USPTO currently points out that the patent allowance rate is a mere 44%/-. However, if you factor in the great number of patent applications routinely re-filed after being finally rejected, the overall success rate is much higher…perhaps 70%. Sadly, the cost is higher, as well.

Today I am writing a reply to a rejection. My client hired an LA firm to to the search and write the application. A few years later and several thousand dollars spent, he got a rejection citing very close prior art that the big $$$$ law firm did not find. The legal opinion can only be as good as the search it is based on.