Thanks for that,Ron.Has helped my understanding.

Adam…if you can understand what I wrote that is very good. I have argued with very experienced patent attorneys/agents over if an invention is patentable or not and they have changed their minds to what I said. I have come to the conclusion in those instances with the model of analysis as written above.

The single best question for patentability I guess…is your invention performing a new utility (use, task, operation)…or making it faster, easier. If so, the invention must be new. Ever so very slight of a difference in use is new enough.

Great info Ron. If you look at my Sunglass Visor and the previous one on the market I believe they are a good example of what you are saying. They each hold sunglasses, mine does it in a different manner and holds a wider variety than the previous model. Each is patented.

Roger…now this is very close unless like Handi-Straps, the “X” pattern of straps on the back are known and not patentable by anyone.

If all of their invention was patentable, you would have to pay them to use their part that was claimed…or was it obvious or “taught”…known already?

It looks like you really “thread a needle” here…but hey…even if it is close or even the same…nothing says you still can’t cut a deal…plenty of room in all markets usually.

To others here…it matters none or almost about what the invention looks like. It is all how the claims are written.

There were no claims by them that required any payment. Mine is free and clear. Theirs has a free fall jaw and requires a button for release and to hold it in place. Due to the lock feature it can only hold small sized glaases or the locking button breaks.
Mine has a spring loaded rear hinge that gives constant tension to the jaw allowing it to open and then keep holding tension on the glasses unitl removal. Due to the design opening it will hold all size galsses because it does not have the tension issue of the other product.
The great thing is mine is a better product and costs the same as the inferior model.

Well Roger…there you go…a great lesson for patentability that many need to know here. What you did was add a new “utility” Your invention does something extra or different but is not so visible at first glance.

95% of inventors may glance at this and think infringement or un-patentable. Now they know, we showed them.

This matter is so important for protecting your invention too! Cover and search for variations in your claims. In my inventions I took time to identify any other way around my claims. I see none. My inventions cannot be improved with changes, modifications, they must stay as is.

Thanks for the lesson Roger!

I can see the business of claim-writing is key.A big deal.

Yes Adam..it gets highly technical and absolute specific.

Now the other thing you need to remember here is to write your patents to cover as much as you can while being very specific. You want a broad patent yet specific so someone can’t get around you.

Sometimes it is necessary to consider CIPs or continuation in part (of a patent) to cover more matter or even file multiple patents to cover yourself. Thomas Edison filed 100s of CIPs

It is also a good idea to file a second patent on a big idea so you can say “other patents pending” When this is done, a company thinking of knocking you off does not know the final claims so they can’t figure a way around you. Even if your second patent app is a long shot, it is still a very good strategy and shows you are vigorously trying to protect your IP.

This stuff is all necessary to know otherwise you can lose everything!!!!

I know I have asked this before but would like more clarification on this question:
If you have a PPA on something and it expires, does that mean anyone can make it, so it is open for grabs forever, or if I go for the patent 16 months after a PPA is granted…can I still get one?
Also if a company signed a NDA with me on a PPA product that does not get patented, does the NDA extend my protection with them?

And last but not least.. I see that you can apply for a patent which takes months to review and okay, so if someone makes your idea within that processing time, who gets to claim the rights to it? Prior art has some rights too.

Oh….one more… Can you file for a PPA more than once, so to get another year out of it?

You can file another Provisional if you did not publish your idea in any way. Putting your idea or mention on a website or even on this forum would be considered publication.

You must have taken steps such as an NDA to keep your idea a secret. There is also something else about offering your idea for sale which then you lose your rights after one year in the U.S.

Remember, PPA or not, any publication in the U.S. you have one year to file a patent but lose your rights to international patents.

If someone makes your idea when patent pending you can ask the USPTO to “make your patent special”. They will then rush the patent application because someone is making it. When the patent issues you can sue from the time the USPTO publishes your application in their Gazzette.

My patent agent says just file another PPA and don’t tell the USPTO of the first. If you did not keep “secret” or published, you file another PPA and then a patent, what can happen is a company can challenge you in court by finding that publication etc. and prove your patent invalid.

You can not get another year out of a PPA. That priority date of the first one is lost.

This is a highly technical area. Consult professionals as a final say.

ron, thanks for your explanation….roger, thanks as well…the visual helped me tremendously with my project….my version has the same utility as the existing product, but is constructed differently…your example gives me more confidence to pursue my idea…

Eva…this thread was because of your concern and someone else but this is something very important to us all to know and even attorneys will not take the time to explain this to you, they actually may want to keep you “stupid” so you don’t question them.

IMPORTANT FOR ALL: you must keep in mind large companies have IP attorneys on staff. The first thing they do is try to get around your idea. Understand they must, and if they don’t, another company will, so the attorneys job is TO GET AROUND YOUR PATENT!!!

This is the point where “your idea gets stolen”…or was it beat legally fair and square…or did they just take part of it and rather just settle a deal with you in court? They have the salaried attorneys, a court case gives them something to do.

This is why you better know this stuff if you wish to deal with big manufacturers. Little manufacturers do not have a legal department and will challenge you less if at all.

I have a patent infringement attorney checking everything I do. He does this for free because any trouble and he gets the business.

It is commonly said, you don’t know how to write claims until you litigate claims for the first time in court.

Ron,I wrote this in another thread:

’….,I was looking at the part of the post where you are talking about expert patent attorneys working around the patent.

As a possible scenario:they work around the patent,develop an alternative product to market-expensive and tricky,establish the market for that product.

You then approach their competitor with a fully legal-the legitimate-product,and say’Well,What about it?’

Marketing is done,product established,your product is legitimate.

The company stealing your idea now has a serious competitor who just goes straight into the market without expense….’

What do you think?

Adam…it is all about getting the jump on the market and branding the product name, implanting the product in the consumer’s head.

A PATENT IS THE LAST RESORT…A LIFELINE. You DO NOT want to get to the point where you have to take an infringer to court for 10 years.

Choose a manufacturer that can get your product on the shelf and in catalogs first. Virtually any patent can be got around. Companies do not want bad publicity on a major infringement case but rarely does infringement get that loud.

No one knows how deep I really am into the market with Handi-Straps. I’ve sold to all branches of military, EMS, FDs, the largest of companies like Ford, Boeing, Proctor and Gamble. I’ve established great help for seniors, handicapped. I proved the product with medical testing and science as it is written in many articles worldwide. I continue medical testing to build credibility.

If I went on the shelves without doing this first, many might try to knockoff my product or so this is my theory. Each product path may be different, but branding must be done.

Would you want a knockoff of Handi-Straps? Don’t you want the original of utmost quality? The one where obviously a heart is behind not a company looking for just profits?

This is my defense. Branding…just like the largest companies. My patent cannot be got around. Handi-Straps cannot change in any way or it does not work.

My patent is my very last resort to stop knockoffs. It is a deterrent, that is all. Patents mean MUCH less to large companies. they are not afraid of an infringement lawsuit with you and may prefer as many licensing agreements need a courtroom to be settled anyway and get off the hook for back royalties to you most probably.

However you proceed, you want the public to ask for your product by name to establish your market share; then any knockoffs will be looked at as cheap inferior products. This is all you can do.

Pick the right partner/company for your invention that can brand your product fast and well. NEVER rely on your patent to fully protect you.

BUT BUT BUT…if you are fortunate and your patent is very solid, many patent professionals will tell you that a big company taking your idea can be the best thing to happen to you. You can sue for triple damages if it was willful infringement (they knew about your idea and went ahead anyway)

Adam, just be as thorough as you can and do your best. I am probably the only one here that realizes how thorough you really need to be.

I appreciate what your saying ,Ron.
There is a ladder stabilser called Ankalad,which is well-established in the market.
The patent renewal fees were stopped by the patentee.Ankalad is still produced.It must have been thought that stealing the march and branding worked.

However,now I see a replica being sold in the same sort of outlets[internet].
This replica has got into the market on the back of ankalad,will do the same thing-is the same thing.
Who’s better off?

The idea of sueing while producing[if you have a clear case]with market pentration and establishment being done for you,does not seem too bad.

Developing the market seems to be the biggee.Eliminating the competition from that market is a big consideration.

What is the point of developing the market if the original product can securely sit in the market that you,the thief,have developed?
And your ass can be sued forby.

“In my educated experience, MANY will tell you that don’t know much that there is something like what you invented out there so it’s not patentable. BUT WAIT! When it is intricately compared to yours in a SPECIFIC, DETAILED technical way in an engineering view, you may find many differences. A good patent writer can also help you make your invention different.”

This is true, you write a good patent, you can patent almost anything. To an extent. Yet, in principle, the “MANY” who tell you that your idea isn’t patentable may very well be correct. Your patent protection is in effect limited to whatever is novel and non-obvious relative to any prior art. You may very well be able to achieve some sort of patent protection in a certain situation, but if that protection isn’t sufficient to really bar relevant competition, you could very well be wasting your money.

That’s a hot area you’r talking about,CD.
If you have a commercially strong idea,or think you have,and it is significantly different,then being able to:

‘achieve [some sort of] patent protection [in a certain situation]…to really bar relevant competition,’ is out and out the hot spot.

I think the othr thing I worry about is the idea put about that if even if a small feature of this significant idea is changed,and meets the criteria of novel,non-obvious and useful,the invention more-or-less as it is can be patented and sold without fear of infringement litigation,and as a legitimate product.Could you comment on that,CD

Ahh…misconceptions. a.) Not all patents are created equal. b.) Even if you obtain a patent, that doesn’t mean or infer at all that your invention is marketable, and it doesn’t necessarily even mean that you can market your product without infringing someone else’s patent.

The right to take a product to market exists with or without a patent. A patent simply has the potential to make that right an exclusive one. The inability to infringe someone else’s patent exists with or without a patent also.

Symbolically, say somebody goes ahead and invents and patents the hamburger. You can go ahead a (ETA – hit enter by mistake) and invent and patent the cheeseburger. The owner of the hamburger patent cannot go ahead and sell cheeseburgers without infringing your patent. Yet, in lieu of a licensing agreement, chances are you can’t go ahead and start selling cheeseburgers without infringing the hamburger patent.

Clearer,CD.Thanks.
So what is this fear about someone coming out with a commercial corker and then the idea being ripped off,with patent writers writing around the patent to produce the same but different product?

Is it not as complicated as that?,or is it?

Hmmm. Complicated or not so complicated. If the goal is simply to avoid infringement, there is no need to write around the patent, just to design around it…so I guess the answer is not so complicated.

But, the nature of this situation all depends on what is actually patented. While a commercial corker might technically describe what is patented, the actual extent of patent protection is determined by the patent’s claims.

In the Uk,there was/is a coverall claim:

‘A ….. as substantially described herein with reference to figures … of the accompanying drawing.’
So the description is a claim.

I know this sounds like sour grapes,but as the patent is a disclosure of the teaching,then the contents of the specification,and not just the claims,should constitute the intellctual property,with identifiable derived ideas constituting infringements.

The claims seem to be legal expedients,and are largely dependant on the skill of the claim writers,who vary in skill,no matter how much you may pay.

It is interesting to see the David and Goliath battles ending favorably on the side of the David.
That’s an affirmation of the system.

Adam…you don’t want your claims too broad so another can re-engineer and slip in. Not too narrow because then the patent can become useless and not protect in the marketplace and again, got around.

There is a such thing as a useless patent where the claims do not protect enough and allows knockoffs to get around you legally.

Quality patents will directly relate to the quality of the professional that writes them. I fully believe in not letting your attorney/agent have 100% power to do what they want. You need to oversee. That is your one patent and it means everything. That is the attorney’s 100th patent that he needs to get done as quickly as he can most times.

I had a patent attorney just re-write the claims of another patent I GAVE HIM in my patent search. He basically wrote the same thing!!! His office was across the Empire State Building in NYC…I figured he must be good…HE WAS THE WORST AND DID ME DAMAGE!

Just BE AWARE…do the best you can. In the U.S. independent inventors used to win about 1/3 of infringement cases. That has now risen closer to 2/3 for a couple reasons. courts have sided with the smaller guy more and the Patent Office does not let alot of patents just go through anymore. They got tough on patents so the courts don’t get as clogged, even though they are limited to 13 hours to be spent per patent app.. It is much harder to get a U.S. patent lately, but that also means the patent is stronger these days.

The United States Patent Office right now challenges patent apps much more and the USPTO theory is that will be less challenged in the courts as they cut down on patents issued that are actually invalid.

When you sue a company for infringement they will immediately file a suit back at you calling the patent invalid. This is their first defense.

Then there is a hearing just to have the judge interpret the claims. Forget the name of this part. Many times a settlement will come after this between parties and there will be no trial as after the judge interprets the claims, it is clear who is right or wrong.

Let’s hope none of us have to go through a mess like that which can take years for a trial…unless you are going up against a big company for many millions…then maybe it is worth the mess.

Of important note…one inventor friend…a little nutty too, represented himself in an infringement case. He won 2 million from Sears, turned it down. He wants 10 million. He invented a part of the micro convection system for cooking.

Another friend sued Intel and won 1 million with a divorce lawyer representing him. He is now going after more electronics big guns like Sony with a better lawyer. He claims many of the video games made infringe on his patent.

There is so much to know, specifically in this field; yet people blurt out basics that do not cover the real situation. They blurt hearsay from wherever they got it.

I know alot…but A FRACTION of what I really need to really know how to protect myself. I just keep learning from real sources and case histories. Be careful of believing simple hearsay.

“Quality patents will directly relate to the quality of the professional that writes them. "

Right, but on some level they will also relate to the quality of information (in this context patent search) that the attorney/agent has at hand. Its the attorney/agent’s job to ideally get you the broadest protection possible. This involves the broadest claims allowed by the USPTO which would not be found invalid by a court of law down the road.

Many attorneys will deliberately write broad claims (sometimes mixed with more narrow claims in case some claims are rejected), and rely on office actions to determine what is and isn’t allowable. But…

a.) this isn’t always the best idea considering that a USPTO examiner will not often find all prior art that exists and could come back to haunt you in the future, and b.) the better grip an attorney/agent has on what is likely allowable before he files decreases a dependence on office actions, lowering your cost, seeing that your patent issues quicker, and seeing that it is more likely to issue with substantially similar claims to those which the application included when it was published (relevant when dealing with infringement damages).

Perhaps more importantly, the background/summary section provides an opportunity for a patent writer to market to a USPTO examiner. If they are aware of prior art which could threaten patentability, they can use this section to emphasize what is novel and non-obvious relative to that prior art. It gives an opportunity to overcome objections to patentability before they arise. While there is some debate on what I say here within the community, when push comes to shove, knowledge does generally equal power.

“Of important note…one inventor friend…a little nutty too, represented himself in an infringement case. He won 2 million from Sears, turned it down. He wants 10 million. He invented a part of the micro convection system for cooking.

Another friend sued Intel and won 1 million with a divorce lawyer representing him. He is now going after more electronics big guns like Sony with a better lawyer. He claims many of the video games made infringe on his patent. "

Ron – these are good stories which, IMO, you should elaborate on here. I am sure there are many here who would also like to hear more. While everything tends to be far more difficult than people would like to think, people tend to overreact to that realization and get nnecessarily paranoid, thinking that its impossible to win when you’re the small guy. Thats obviously not the case.

No matter how similar or dissimilar an invention may be in comparison to the prior art. The same questions are relevant.

Is it novel?

Is it nonobvious?

Novelty is for the most part a straightforward determination. Except for the matter of equivalents.

Obviousness can be a real quagmire. Either an obvious modification of a single reference or combining references to modify. I have not seen a definition of obviousness from any court that ultimately does not rely on the word obvious.

That which is blue possesses the quality of blueness.

“Symbolically, say somebody goes ahead and invents and patents the hamburger. You can go ahead and invent and patent the cheeseburger. The owner of the hamburger patent cannot go ahead and sell cheeseburgers without infringing your patent. Yet, in lieu of a licensing agreement, chances are you can’t go ahead and start selling cheeseburgers without infringing the hamburger patent.

Well this thinking is incorrect and it depends on how the claims for the hamburger was written. If the claims only contained three parts like 1.bun 2. hamburger. 3. cooked to desired temperature.

The cheeseburger guy would be in violation of the hamburger patent because it contains 1. bun 2. hamburger 3. cooked to desired temperature

The infringement is from the three parts of the prior patent, not the cheese itself. It is added.

The hamburger guy only needs to offer cheese as a condiment, and the customer can add the cheese personally.

“The hamburger guy only needs to offer cheese as a condiment, and the customer can add the cheese personally.”

Perhaps, but then this discussion gets more interesting. In that situation, the hamburger guy’s customers are infringing the cheeseburger patent, and the hamburger guy is contributing to that infringement by making cheese available as a condiment. There are elements of US patent law by which the cheeseburger guy could still sue the hamburger guy.

Now, if it is a number of small market restaurants making cheese available as a condiment, or if similar infringement is occurring in backyards at barbecues, then it may be tough for the cheeseburger guy to enforce his patent, in which case maybe he shouldn’t have bothered investing in a patent, anyways.

This is of course assuming that the cheeseburger guy has a valid patent. If cheese was already being used as a condiment before he applied for his patent, or simply made a really “obvious” choice for an add-on condiment, then perhaps his “invention” had been anticipated by the prior art.

Now….its also possible that the hamburger guy’s patent has already expired. In this case, the cheeseburger guy can sell his cheeseburgers without infringing the hamburger patent.

Now, say thirty years down the line, someone invents and patents the triple jalapeno cheeseburger, claiming three beef patties, four slices of cheddar cheese placed around/in between the three patties, exactly eight strips of bacon, topped with lettuce, tomato, and four jalapeno peppers….

That guy has rather narrow patent protection, and as a result with patent is only worth so much. Metaphorically, many patents issued today fall into a similar category.

Well its how the patent is written first, and to say that adding tech details makes it patentable, well yes and no; if your claims are too narrow, your patent is not worth anything. it depends.