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I have an Invention ... Now What?
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   how to patent
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M. Arthur Auslander
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Re: how to patent
« Reply #5 on: Dec 25th, 2003, 7:10am »
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Dear Mr. Ivey,
 
Where the prior art is vast, a patent may offer such limited protection as to be valueless. An inventor not in a particular business can gain little by getting and "avoidable patent".
 
Who would buy it, and what could the inventor do with it?
 
That is the crux of the Reality Check®. By the same token a minor improvement in a crowded art may have value, if only advertizing value to an applicant or assignee or "Patent Pending" may have some value.
 
I don't make the decision but pose the question to the client.  
 
My experience has shown that there is a class of inventor, comparable to horseplayers, that feel that they must get patents.  I have found it difficult to to solicit such patents even though the inventor may go elsewhere and be scammed with an issued patent with transparently avoidable claims.
 
To the commercial client a weak patent and a trademark might have value. This is a usual suggestion of ELAINE's Workshop®, E arly L egal A dvice I s N ot E xpensive™.
 
ELAINE's Workshop® is an attempt at enriching the inventor by NOT filing or filing early enough to maximize the possibility of value.
 
M. Arthur Auslander  
Auslander & Thomas-Intellectual Property Law Since 1909
3008 Johnson Ave., New York, NY 10463
7185430266, aus@auslander.com
ELAINE's Workshop®
E arly L egal A dvice I s N ot E xpensive™
Reality Check®
 
 
 
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JimIvey
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  jamesdivey  
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Posts: 2584
Re: how to patent
« Reply #6 on: Dec 30th, 2003, 12:38pm »
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I can appreciate what you're saying.  On ocassion, I've encountered people who think they know a lot about patents and they don't like my advice and they go elsewhere and I wish them well.  I'm not afraid to tell a client that their application has little chance of issuing and that the value will be limited (if I so believe).  And, I think it's nice that you've packaged and branded your pre-filing due diligence.
 
Here and outside this forum, the question of pre-filing searches has come up quite a bit.  Here's my perspective.
 
Most of my clients have made the determination to go forward with an applicationm before even talking to me about filing the application.
 
I'll break down patent applicants into 3 categories.
 
First are those who are a going concern and are building a portfolio of patent applications and patents.  They'll file them all and avoid the expense of a pre-filing search (which is substantial if you're filing many applications).  If a few applications of the bunch don't produce useful claims, so what?  It's just not cost-effective to do a pre-filing search.
 
Second are those who are a going concern and are planning on marketing their product/service no matter what happens in the PTO.  For them, some claims are always better than no claims, so they'll also forgo the pre-filing search.
 
Third are those who have an idea but no existing business.  They either have no intention of bringing it to market themselves but intend to extract royalties from other going concerns or hope to start a business primarily on the value of a single patent.  For this third category, conducting a pre-filing search makes good sense.  
 
Most of my clients fall into the first two categories, so a pre-filing search is rarely part of my practice.  However, I ocassionally see a client from the third category and do counsel them regarding the value of a pre-filing search.  But most of the questions in this forum do not pertain to pre-filing searches and I don't consider it part of "the most important thing you need to know about patents."  I think timing issues which can bar a patent altogether (thereby removing any issues pertaining to "value") are far more important -- especially for most of my clients.
 
Regards.
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James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Penny Ballou
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Re: how to patent
« Reply #7 on: Jan 7th, 2004, 3:54pm »
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Burn some midnight by becoming familar with a summarized version of your patent system:  
 
http://strategis.ic.gc.ca/sc_mrksv/cipo/patents/pt_main-e.html?icservice s=e_pat
 
 
Patent Search D/Base
 
http://patents1.ic.gc.ca/intro-e.html
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M. Arthur Auslander
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Re: how to patent
« Reply #8 on: Jan 12th, 2004, 7:26pm »
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Dear Penney Ballou,
 
I frankly resent doctors because they can be so superior with the claim of knowin g mor than you. Well that does not mean that in either case doctor or lawyer that just because you can read the statutes and the case law, that when push comes to shove you can avoid the use of a doctor or lawyer you can trust.  
 
You can make a complete fool of your self know and reciting statute and case law.
 
That is why the medicical profession and legal profession have survived even though there will always be abusers.
« Last Edit: Jan 21st, 2004, 7:27am by M. Arthur Auslander » IP Logged

M. Arthur Auslander
Auslander & Thomas-Intellectual Property Law
3008 Johnson Ave., New York, NY 10463
7185430266, aus@auslander.com
Reality Check® ELAINE's Workshop®
JimIvey
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  jamesdivey  
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Posts: 2584
Re: how to patent
« Reply #9 on: Jan 12th, 2004, 8:56pm »
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Dear Mr. Auslander,
 
Uh... what the hell are you talking about?!  Normally, your posts are composed of complete, grammatically correct sentences.  However, in this one, I'm having a rather difficult time parsing out your meaning.
 
As far as Penny goes, (a) she's been around the block with respect to IP issues and entrepreneurship and (b) she merely pointed the original poster to a source of information regarding Canadian IP law.  
 
I thought her reference to Canadian IP law was appropriate and helpful to the original poster.  I didn't see any hint of intellectual elitism, if that's what you were getting at.
 
Regards.
 
P.S.  I'm sure you're tired or something.  I don't mean to give you a particularly hard time about your typing.  And, not to boast, but I'm posting this hopped up on codiene and antibiotics with a dog bite on the finger that types "l, o, p, commas, and periods" ( ouch ouch ouch.....).  Wink
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James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
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