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I have an Invention ... Now What?
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   am I crazy?
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JimIvey
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Re: am I crazy?
« Reply #5 on: Mar 2nd, 2004, 3:07pm »
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...continued....
 
<quote>
> i'm confused because i want as broad a patent as
> possible, but am required to describe in detail how to
> make my invention, which narrows the coverage?  
 
Officially speaking, a narrow description doesn't narrow the coverage.  The Federal Circuit is being quite emphatic about that point more now than ever.  However, patents expire 20 years in the future.  What will the courts rule then?  Who knows?!  
 
Bottom line: be conservative!  If you describe too little, you lose the claim(s).  If you describe too much, you end up arguing a little about whether that over-description influences the claims.  Again, you choose.
 
There are two things you should remember when meeting the disclosure requirements above.  
 
First, the "present invention" is NEVER the subject of a sentence and is NEVER described directly.  Everything is "in accordance with" the present invention, "according to" the present invention, "in accordance with the principles of" the present invention, etc.
 
There is one exception.  The PTO really wants to see the subject heading, "Summary of the Invention".
 
Second, what you describe in the detailed description section is "an illustrative embodiment" of the invention, or an "illustrative example" of the invention.  In one embodiment, .... in an alternative embodiment,... etc.
>  
> i know it's actually the claimms that define the scope
> of protection, so is the description only an example
> of one variation of the device (assuming a state that
> in my description)?  if my claim discloses a fastening
> device for assembly, and my detailed description says
> rivet, would using a screw violate my patent or not?  
> similarly, if i claim comprising of rigid material,
> but specify bent alluminum in the description, would
> welded steel infring on my patent?
 
Two points here too.  
 
First, it matters what the claims say.  If you say "means for fastening", they look to the description and then determine equivalents.  Is a screw equivalent to a rivet?  Don't use English or common sense to determine equivalence!  This is the law!
 
Under Section 112, paragraph 6 ("means for" language), the range of allowable equivalence is quite narrow.  You should read "equivalents" as "nearly identical articles" in S 112, p 6.  If you want someone to blame, look to Congress (of 1953, I believe) in which the S.Court had ruled something to the effect that "mean for" means "*any* means for" and Congress didn't like that.
 
Second, assuming you avoid "means for", the short answer is "Yes."  Is a screw a "fastening device?"  I think so.  Will the judge and jury?  Who knows?!  Is welded steel "rigid material?"  I think so.  Will the judge and jury?  Who knows?!  Be conservative!
 
But, there's a limit to how conservative you can be and avoid the ridiculous.  In short, there's a limit to how much your patent attorney or you can do.  It's a human system implemented by humans.
>  
> again i will consult an attorney prior to submisssion
> so i do not hold any responses liable, just need some
> clarification.
 
Good idea.  I hope this clarifies.
>  
> must say i am so very excited about this process and
> potential, kind of scarry and fun at the same time.
 
That's what I experience on a daily basis!
 
Good luck!
</quote>
 
My apologies for reproducing the entire post, but it seemed rather on-point and took a long time to type the first time.  
 
The bottom line is that I don't see this careful, conservative approach from people following Mr. Pressman.  It makes me wonder if it's lack of experience on the part of the drafter of the application or a lacking in Pressman.
 
Good luck!
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Re: am I crazy?
« Reply #6 on: Mar 2nd, 2004, 8:21pm »
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If you are out to obtain patents, you can probably succeed in doing that, since you will only be dealing with the patent office (provided the developments you contemplate meed the standards for patentability).  
 
If you are out to make money by licensing or selling a patent, that will take on new dimensions, as your dealings will be expanded from dealing only with the patent office to dealing with others.  Of course this is predicated on the assumption that your developments have commercial value.  If the value is significant, as perceived by others, then someone will likely do their best to utilize the technology without accounting to you.  If it is in the $10MM range of value, then you can expect  to be engaged in some legal battles.   should that time ever be reached, the alleged infringers will, by virtue of having made money on the development, act adversarily, which could be the cause of great pains.    
 
Realistically, about 2 - 5 % of all inventions ever make enough money to recoup the patenting costs, for various reasons.  Introducing technology successfully requires, inter alia,
 
1) newness
2) not easily designed around;
3) not covered by an existing patent
4) able to be manufactured at a cost which will enable a decent profit to be realized;
5) must be compatable with existing protocols and manufacturing techniques, requiring minimal capital investment to produce, or else have benefits which justify the CAPEX;
6) no environmental hurdles;
7) nominal expense with regulatory agencies;
Cool should be patentable hopefully;
9) must provide an advantage to a customer sufficient to motivate them to buy it at the price you offer.
 
These are the main ones, as I see it.  If your developement(s) overcome these barriers, then it is likely that others will want to copy it.  When that happens, you need to be prepared in advance for the battles which will ensue.  If you were putting a roof on a house, and you never did it before, and you don't want it to leak, the job is best left to someone with experience in doing it - even then there is no guarantee.  
 
If I were you, I would look at everything you think you have that is valuable in your mind, and pare it down to one or two that have the highest likelihood of market acceptance at a price which will deliver you a profit after you pay the utility bill, the tax man, and your lawyer and will leave a couple dollars in your pocket.  Then seek an experienced Practitioner who is savvy and street smart.
 
 
 
 
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Re: am I crazy?
« Reply #7 on: Mar 3rd, 2004, 8:11am »
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Dear Mr. Whewell,
Your posting is one of the best I've seen on this forum.
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M. Arthur Auslander
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Re: am I crazy?
« Reply #8 on: Mar 3rd, 2004, 7:37pm »
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Thanks !
 
The toughest part any developer of technology faces is to weed out those inventions not worthy of resource expenditure and to pursue only those deserving of precious time and money.    Most inventive types have more ideas than they do resources, and it is easy to become confused about which one(s) warrant pursuit.   Being rigid and pragmatic early on pays off in the long run.  Judiciously prudent is the one who chooses to not pursue any of them, if the analysis shows that all 47 ideas conceived are lacking of flawed in just a single critical area each !  Failure in those critical points spell disaster, and inventors arriving at a conviction that someone else will appreciate the beauty of a non-commercializable invention enough to write a big check has been a re-curring fantasy scenario which many of the so-called "invention development" companies have made handsome fortunes from !
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Re: am I crazy?
« Reply #9 on: Mar 4th, 2004, 5:10am »
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Dear Mr. Whewell,
 
My observation has been that many inventors can be as compulsive as alcholics. My hopes to help with ELAINE's Workshop® E arly L egal A dvice I s N ot E xpensive™ and the Reality Check® have hardly been worth the filing fees but a feel good about trying. Many who need help do not want to be helped and the regular clients seem to come from regular sources rather than the service marks.
 
There is the worst reality, many good inventions just don't make it. I have recounted the patent for a very good friend that a disclosee rejected, then and then won a $50M industrial prize for an inferior product.
 
The retrospective answer now seems that the patent should have been filed and pushed in China where there was a greater need.
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M. Arthur Auslander
Auslander & Thomas-Intellectual Property Law
3008 Johnson Ave., New York, NY 10463
7185430266, aus@auslander.com
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