I wasn’t sure if I filled it out the way I was supposed to either, but I had written in the patent number that I had found and I thought that others could find and figure out most of the description and claims, etc… that they may need. But yes I agree with you Greg that I was not sure if I filled the form like they needed it to be filled in either.

Take care Greg and I think Kelce appreciated your input even if the form wasn’t filled out exactly correct :)

Got it done this time, doing as you described, Jane. I’m perhaps an oddball, because I try to read instructions before doing. Guess because I am big into usability and good instructions are part of that. They have a tutorial video that nothing happens when I click on it, and seemingly zero written instructions.

It would be a shame to have a good idea sink due to usability and design issues.To lay groundwork to speed up patent processing seems a grand thing.

Even having filled it out, I would have to say I was in a real fuzzy zone that as presented I satisfied their requests for things like excerpts, etc.

Kelce, thanks for your answer to my question. It sounds like there are processes in place if one needs to do some changes, but it may cost more money and a bit of frustration. It seems to be a long involved time to have a patent pass the examinations.

The concept you have is interesting and for safety sake of the reasons that you mention in your application, I hope for everybody that could benefit from your patent, that it passes the examiners office.

If Greg is reading this post, if you go to the PTP website, put Kelce’s app. number in the search, click on the highlighted title, then click on the right side where it says prior art and fill out all of the asterisk areas then it will be submitted properly and go through. I had trouble submitting a few times and figured out that I hadn’t filled in the asterisks areas which definitely have to be filled out for the e-form to go through on the site.

Best to you Kelce

To answer your question about modification, it is possible to modify certain portions – within limits.

For example, the claims can change drastically, but whatever is changed about them must be supported by writings or illustrations that were filed on the original date. The rest, for example the figures and specification, can only be changed to correct mistakes, but such changes cannot and new information. Typically you would make canges to the specification and figures to correct typos or to fix an Objection by the Examiner.

The key issue is that you must demonstrate that you “were in possession of the invention” at the time of the filing, in order to use that application to produce a patent with the specific claims you want. If you want to file another set of claims, using the exact same specification, you can file a Continuation. Or a Divisional, if the Examiner gave you a restriction/election requirement, and you are resubmitting the proper set of previously-canceled claims. There are strict time windows when you can file Continuations and Divisionals.

If you want to make a significant change to the specification, you can file a continuation-in-part, which is actually a separate application, and costs full filing fees. You might (key word there is MIGHT) be able to obtain a discount from the prosecuting agent or attorney, if you merely add to a prior application, rather than file an entirely new one. But you lose time off the patent’s 20-year clock. For some rapidly-moving technologies, it might not matter so much, though.

Good Kelce! I am glad to participate…I had fun looking patents up on the USPTO website :) I hope that you do really well with your patents! I will keep an eye out on the website too. Can I ask if you can modify your existing application at all or does it have to stay the same once you submit it? Just wondering, because to be able to change it would be an advantage to submitting your application to the Peer to Patent website, you know? Honestly, I don’t know too much about the patent process, but just wondered if you can modify based on if you would have any conflicting prior art.

Best to you and your family, I hope that your little girl gets her patent! It would make her parents and grandparents happy too!

Take care and take it easy….

Thanks Jane. I truly appreciate you and Greg searching for prior art. Neither of you had any need to do so, and I recognize your generosity with your time. Your patent isn’t the same as the one Greg identified, but it was a good find, anyway.

I saw it on the website – even though I don’t have an account to submit art, I can still read what has been submitted by others. So just remember to look on the PTO Public PAIR website in about 6 months, to see how I repond to the Examiner. If you don’t see anything, just look again once every other month, and something will eventually change.

I uploaded to Peer To Patent as prior art and it was correctly submitted. Kelce, if you would like the patent number, just let me know and I will post it to the forum, I really don’t know if it was the same as Greg’s though. Take care and I hope your patent application goes through!

I’ll take another stab at that peer review site. If the process appears clear enough, I may post the challenge to the local hackerspace I’m in. It was an odd concordance this last Thursday that I show up to the local inventor’s club meeting and discover that they’ve invited a couple of officers from the hackerspace to talk.

Beyond the broad technical basis and experimentation, a number of members also are interested in inventing/patenting/monetizing. One complained about the language of patents. They might like the challenge if I explain (imho) that claim language is a type of coding designed to be unambiguous which executes best under the Lawyer OS.

I need to clarify things. Tying in these windows doesn’t lend itself to me expressing ym thoughts clearly.

Regarding my statement of “Few attoernys will publicly comment …” y following statement of “They do this” referes to their avoidance of making public comments. Attorneys will keep their mouths shut about their client’s patents and applications, unless required to make sa statement, and then they say the least that they have to. That’s standard practice, ad smart. That’s how I am about inventions that aren’t my own – including those that are assigned to employers.

But I became a patent attorney specifically to pursue patents on my own inventions, and I don’t mind commenting on those. I taught graduate school for Electrical Engineering for a few years, and am naturally inclined to try explaining things.

I have some applications in the queue that I might pursue, even if there is no market value – but for personal growth reasons. In addition to the one with 5 words in the independent claim, I have another with 6 words in independent claim 1. I have wagers with some of my colleagues that I cannot get a claim allowed with 10 or fewer words. And I want to win, if even just for the bragging rights.

You submit whatever you find. Don’t try to be nice to me or worry about making me upset. I specifically want someone to submit art that is so close, that the Examiner gives me a rejection over it. It would be unethical of me to ask anyone to withhold information from the service.

I do not have an account there, and have never gone through the submission process. If you have found the same patent as Greg, go ahead and submit it. I already told the PTO about that one, anyway. You can post it here. I don’t mind.

There are 3 considerations here: First of all, unlike many patent attorneys, who try to get their clients patents, even if the patent has little economic value because the client’s intended product is already out there somewhere, I have an entirely different view. I don’t want to continue pursuing a patent if anything exists that is close enough to my idea (even if there is a small patentable difference). I have 10 personally-owned patents issued so far, and about another 20 in the queue. I have no need for a “souvenir” and don’t want to pay issue fees or maintenance fees on something that won’t provide a decent return on investment. You’re right, I am swamped, and so as soon as I find out that one of my ideas doesn’t have market value, I’ll drop it right away.

Next, my reading of the program requirements is that, if the situation arises that no prior art is submitted, there might be no requirement for the examiner to advance the application for early consideration. Unfortunately, participation in the Peer Review program isn’t as high as it should be. Many large companies tell their employees not to look at other patents, even those would be the people with likely the most knowledge.

Also, there is a longer-term consideration. If I practice the patent, and I believe it will make lots of money, I might find someone infringing. If I then have to assert it, they will request a re-examination, or attempt to invalidate it at trial. But if the PTO had already rejected the my application over some prior art reference, and I beat the rejection, then I have an easy argument to make later: “The PTO already considered that prior art and gave me this patent anyway.” That’s a better place to be arguing from, than against something the PTO might have missed during initial examination. So rather than hoping to obtain a patent by the Examiner missing something, I prefer that all my patent applications undergo a trial by fire – the most difficult examination process the PTO can throw at me, that is still fair.

Does that make sense?

Don’t worry about looking like a dunce. Prior art searching can be difficult, and interpreting the patent claims can be challenging. I try to write them so that an engineer working in the field can figure them out, but that can be a challenge to accomplish, while still making the claims conform to the accepted rules.

I can get past the reference Greg found, easily – while still preserving the very thing that makes my ivention so valuable (in my opinion), but I need to withhold my comments to see whether the Examiner uses it in a rejection. If so, then my arguments will be on Public PAIR, which is where members of the public can go to see the progress of a patent application examination process and read the letters that go back and forth between the PTO and the applicant (or applicant’s attorney). So, in 6 months, go to the PTO website, look for the Public PAIR link, and then use the publication number to check on progress and read my arguments to the Examiner.

If the Examiner doesn’t use it, I’ll try to remember to provide an explanation at that point.

Few attorneys (I might be the only one) will publicly comment on inventive novelty. They do this out of malpractice concerns, because they represent a client who owns the invention, and don;t want to risk that their own misunderstanding or leaking of confidential information will jeopardize the client’s rights or the value of a patent.

But I am both the attorney and the inventor (or at least one of them). So I truly understand what the invention is and isn’t. And I believe the patenting process should be more open and public. That is why I am willing to be more open and public in my statements.

By the way, Kristine is my daughter, and she was only 11 when we filed that one. What do you think about such a young girl having her name on a patent application? She’s really excited about it. The other inventor is my dad. I’ve done one with my wife, one with my sister, and I’m lining up some upcoming applications with my nephew and other daughter.

And to bring the topic back to the title of this thread, I’ll mention this:
I published an article this month in a trade magazine for patent attorneys. It lists 18 reasons why a prior art search might not find anything.

1 reason is true novelty. The 17 other reasons are somethign else.
6 are common mistakes in implementing the search. Every search suffers from at least 2 of those problems.
The other 11 are reasons that, even if the impossible could be accomplished – all 6 search imperfections were resolved – the prior art search wouls STILL miss documents.

I left the 6 problems out of the article title, because “dozen” sounds better (to me) than “Eighteen”. The article is titled “A Dozen Reasons Even Ideal Prior Art Searches Might Find Nothing.”

Greg, Maybe we both found the same one :)

I just don’t want to submit it without Kelce taking a look at it, if he would like, because I may be way off on it and I would feel not only like a dunce, but embarrassed that I had sent it into the Peer to Patent organization if it is not what they want. I hope that makes sense. I’ll wait a while tonight to see if he replies otherwise I am going to go to sleep (la la land) and I will check in the morning. I guess he seems busy from what I have read on EN’s forums and I don’t want to post it here if I shouldn’t so I will wait and see.

A couple of steps ahead of me, Jane. I couldn’t even figure out how to get to the tutorial on how to use the system there to submit one I had found like a month ago.

Margaret, was curious, because it’d be fun to take a peek in the published applications to see your work of art.

Hi Kelce,

I might have found something. I did sign up to PTP, but could you help me know how to send it through the program? I could also post the patent number, only if you’d like, on this thread. If you would rather I post the patent number in the PTO, do I click on the Prior Art on the right hand side to submit? sorry for the trouble and thanks

ps I hope that the patent number I have found does not conflict with yours! I know very little on the topic of your patent application, so maybe I made a mistake. I just briefly reviewed both yours and the other one.

Okay I did figure out how to submit prior art on the PTP website. Would you like to review the patent before I submit it or should I just go ahead and submit it without letting you know what the other patent number is?

I will probably go to sleep sometime soon, so if you do see this comment after I log out of EN, just let me know how I should give the information to you on the PTP site or even here and I’ll get it to you tomorrow.

It’s good to participate in the PTO pilot programs. It can improve the system.

I’ve participated in a few myself: Peer Review and Green Technology Accelerated Examination.

For the Peer Review, I had 2 patents granted. Another is in the queue, with 2 months left. And another has been requested for the program, but is awaiting publication, before it can move into the program.

No one has submitted any prior art, yet on my current invention. I am worried that, if it doesn’t receive any submissions, I won’t get early examination. The website is peertopatent.org, and the application can be found under its publication number: 20110165861.

Could someone maybe go submit prior art? Don’t try to be nice. Really search hard to find something exactly on point.

By the way, with the Green program, I submitted a patet application that had a mere 5 words in the independent claim 1. I don’t know whether I can license it, I’m just doing it for the bragging rights to having invented something a prosecuted a patent that was allowed with a 5 word claim. We’ll see whether I can do it. I’m optimistic.

Greg,
I filed the NPA with the extended missing parts pilot program. Not thrilled about the publishing part, but I’m afraid it’s all that time and the budget would allow for this project. (My PPA expires tomorrow).

What I found extremeley interesting is that none of the agents I spoke to at the USPTO knew anything about the program. I had to explain it to them. Thankfully I found one that looked up the form and then worked through it with me.

Awesome, Margaret. Kudos! I don’t suppose you are under the published applictions thing from an extended PPA?

Congrats Margaret !

YAY Margaret!!!!!!!!!!!!!!!!!

I did it! I filed my NPA pro se today! Hopefully I didn’t screw it up royally. What a ride…

Thanks to everyone for your help and advice!

This is absolutely a high-value thread… I love it! Thanks to all who contributed their knowledge… FANTASTIC!

Margaret, searching for a business/method/system is probably the toughest of all in searching. Thats great you have found the correct class or at least honed the search in. Just take your time.

@Bill great info as always. I agree Freepatents is the best free site especially for the novice.I use SumoBrain at times also but can usally get the job done using freepatents & the USPTO…… I remember using the Delphion site when it was IBM yrs ago…..what a pain in the butt that was as a novice…..Im not so keen on the googlepatents site. I use it at times but dont rely on it much. There always behind with issued patents or at least they were. Patents are issued every Tuesday and updated on the USPTO and Freepatents with no delay. It would be easy to miss a patent on google due to the pat issue delay and cost you $$$$ if you moved forward with an application. Its not worth the risk if you ask me.
Learn to use all the search sites in combination with each other…..

Frank,
The attorney that did the PPA included one independent claim, and 5 dependent claims. All very broad. Yippee!!

Criterion,
Although I really like this tutorial for learning the general process, my patent app is for a business method and I had a heck of a time coming up with any classifications for it through this tutorial. I think I have finally uncovered the correct class on the USPTO sight and I’m going to try it again in a little while.

Regarding TIFF troubles, a better alternative is to simply use either freepatentsonline.com or sumobrain.com. Far as patent searching is concerned, those are generally more user friendly versions of the USPTO site. You can use the same techniques, you don’t have to worry about Alternatiff, and there are other advantages. Of course for keyword searching, Google Patents is a must-use resource as well.

The tutorial linked, by the way, is an excellent tutorial for beginners in the sense that it is step by step, easy to understand, and covers the very basics. In fact, it basically describes how a number of reputable enough search firms & attorneys go about paid patent searches, to at least a large extent, for better or worse. The “worse” comes in because there are a number of caveats. For one, Classification searching will not work well for all inventions, and will rarely work perfectly for any invention. i.e. many inventions don’t fall squarely and definitively into a specific subclass, and there is no standard procedure at the USPTO for classifying inventions there is usually some examiner subjectivity involved. Patent applications, btw, are often mis-categorized.

For two, keyword searching is great and all sometimes for starting out and trying to find the right classes/subclasses to be looking at, sometimes to supplement other search techniques. But if you are just going to search for “computer mouse” as suggested by the tutorial, you might as well just get on the phone with your 80 year old grandmother and ask her if she has ever come across your invention. Meaning, with such a basic, broad keyword search, you may need to sit at the computer day in and day out for a few months if not longer to reach the effectiveness of a more intelligently/efficiently formed search string. And the biggest irony is that some of the patents you need to find probably might not even include both words, let alone the exact phrase.

For three, there are other ways to easily tweak your searches, like reference searching.

For four, the best searches, at some point, will use advanced boolean operators and search options to combine techniques at once. The USPTO at last check I believe, still cuts you off around 200-250 characters for a search string, and slows down around 100-150 characters. That limits your ability. I believe freepatentsonline.com at least works better for larger search strings. Delphion.com is the best search site (but will run you $100+ per month or $50 per day and there can be at least a slight learning curve). Not only does Delphion offer more intuitive interfaces for reviewing the results from a search string, but I have successfully ran search strings on Delphion containing more than 200 search terms and more than 200 boolean operators.

Margaret… my thanks as well for the tutorial link… good stuff.

btw, for anyone interested…
Due to some issues viewing TIFF images from the USPTO site in my Firefox browser… I came across this Firefox Extension/Add-on specifically tailored for better patent search efficiency: Aspator (http://www.d-publish.com/aspator.php)

It solved my TIFF troubles, but I’ve yet to really test it out, and put Aspator through its paces. It does seem to organize things differently through a few extra buttons. Haven’t done too many patent searches to know how useful it really is, though… perhaps someone else could judge.

Great idea Margaret! :)

You already have the Claims composed? Wow, that’s great!

You’re welcome Frank! I’ve realized the only thing really missing from my ppa to make it a npa is prior art. I did a preliminary search a while back, but now am trying to do the “real” search.

Sorry I missed this Margaret… that is a GREAT resource and is going into my Favorites, Thank You! <:-)

You are very welcome!

And that, Margaret is what makes these forums so great. People like you, Roger, Don and countless others sharing knowledge with the rest of us. We (or at least I) can’t put a pricetag on that… Thanks so much! : )