Hi Gary:

It must be really frustrating!!!

I wonder if it’s the “luck of the draw” on who ends up examining an application at the USPTO ???

If you get to a point to where you don’t know what to do and want to try one more time with an attorney (or at least get an opinion on what the problem might be), send me an email, and I’d be happy to forward you my attorney’s name.

He’s very, very, good. Over 25 years experience. He was able to breeze through my 4 design patents and my latest, a utility patent without any problems. The utility patent, Pat. No. 7,516,568 just issued. He charged me about 6K to do the utility patent.

~Paul

That’s one of the risks you take when hiring ANY kind of attorney. They like to keep “uping” the price. There is a sad situation I know of where someone I met at an invention expo said that he was going to get a patent on a board game. He’s been saying that for the past 3 years. His attorney knows full well that it is nearly impossible to get a patent on a board game….

He’s scamming the poor kid for all he’s worth. I dare not tell the kid these things though because… You know how defensive people get when you say anything about their inventions…

Probably the most important thing you can do in the invention process is get a signed and at least partially guaranteed professional patentability opinion by a competent patent search professional.

Hi Gary. I am a patent attorney and I have experience with the most difficult patent examiners (3600). I typically limit my responses to 2 to 3 max. After that I either appeal because the examiner is wrong or the examiner is right and there is nothing that I can do with the application. If you like I can take a quick look at your application to see if there is something your attorney is missing.

Hi Gary,
You can always revoke your attorney’s Power of Attorney and continue prosecution yourself (or with another attorney/agent). There’s a standard form on the PTO site at http://www.uspto.gov/web/offices/pac/mpep/docum.... Depending where you are in the process, you may be able to then schedule an interview with the Examiner. As far as “how many can they use”, unfortunately they can use as many references as they want. In general, the more they use, the stronger an argument you can make that combining them is NOT obvious, but it really depends on the how closely related to your invention and each other they are.

“I don’t want to put the process on the market co’s I believe Wallmart will take it to China and just knock it off”

It may be besides the point of the thread, but usually there is absolutely no reason to be concerned about China. A US patent will protect against the import of infringing goods from China. If it is not feasible to go after the manufacturer, you can go after U.S. retailers, shippers, or anybody else involved in helping to support the infringement. As far as the Chinese market is concerned, even if you were to pay for patent protection in China, you wouldn’t necessarily have protection. With all the markets in the world, it is often pointless to worry about the Chinese market.

“His attorney knows full well that it is nearly impossible to get a patent on a board game…”

Somewhat besides the point, again, but there are many patents on board games and obtaining one is not nearly impossible…

“Probably the most important thing you can do in the invention process is get a signed and at least partially guaranteed professional patentability opinion by a competent patent search professional.”

Get a good patent search, or take whatever time might be necessary to conduct a good one yourself. I wouldn’t necessarily put a lot of weight in a signed patentability opinion for a couple of reasons…

For one, almost anything can be patented if the claims are written right. An attorney can make a habit of writing the most narrow claims possible, and end up with a large portfolio that might look impressive to prospective clients. But every single patent could be largely useless and not worth much of anything. That isn’t common practice, but my point is just to say that whether or not something patentable is largely besides the point. What matters is the exact scope of patent protection likely to be available. A worthwhile patentability opinion would analyze that as opposed to providing something of a yes no or “50% chance” type answer. You shouldn’t be trying to figure out if you can patent something, its a matter of whether you should try and patent it.

For two, an attorney or agent is putting himself (or herself) at risk for liability when writing an opinion based on a search. If they look past a small, but relevant excerpt contained within a 20 page patent, it can at potentially put them on the line for malpractice. If they are basing their opinion on the results of a thorough search, they will likely have to spend a lot of time looking over small details. If they are not charging so much for a patentability opinion, you have to wonder if they expect a search to be very thorough…

Hi Gary,
Here’s what one attorney wrote for his client that had way to many prior art cited against her.

“Request for FINAL Action
The Applicant is a small entity with very limited resources, and desires to conclude prosecution on the merits. The Office action being responded to is the fourth non- final action on the merits in this case. This has required a significant expenditure of time and money far beyond what the Applicant reasonably expected, and has been a signicant hardship to the Applicant. The Applicant requests a notice of allowance be issued in this case, or a Final Action be issued so that an appeal can then be initiated.

This response got her a notice of allowance.
I know every case is different, but you never know what works.

Wow,

$30,000. Is your product complex?

Those cited documents that has no relation to your invention. that rings bells for me too
In the end of the day the industry got to realise the words are there to serve the people not people there to serve the words.
by the way the motorcar was invented thousands of years ago i.e. a set of wheels made to move by a motorised mechanical device, a horses heart is a small electrical device is it not!!
we could nearly start the seeds of a dicussion from there, or maybe not- mmm- or have i lost the plot?

has the patent industry studied wording so much that it has lost the plot?
and in so doing caused their services as protector of the people to be somewhat diminished
Gary id say also forget your walmart china angle, that is the least of your worries

Then some judge makes a ruling and the industry goes in a different direction, when instead someone should say the judge or whatever has lost his mables.
protecting patents is just an evolving industry and nobody really knows the outcome it is just luck I think, and mad personal opinions.
Can be painful and overwhelming for the small guy and i did not learn that fact in no college!!

I boil it down to, have i thought the world something new? if i have and its important i keep going, if its new but petty and small i quit!
That my guage- my opinion i.e. belief etc.
Good luck man

I find Don kellys posts here very enlighting, he worked in there (patent examiner) and he seem to know what he is talking about, he says they produce these cited documents just to prompt some amendments and get eventually a more concrete patent, that all make complete sense to me