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(Message started by: peanut on Dec 18th, 2003, 3:32pm)

Title: how to patent
Post by peanut on Dec 18th, 2003, 3:32pm
i have recently made an idea for a product but do not know how to patent it, might i add that i am canadian im rather new to business can someone help me. thanks

Title: Re: how to patent
Post by M. Arthur Auslander on Dec 18th, 2003, 7:09pm
Dear Peanut,
Patent bedamned. The big question is how to deal with the idea if it has any value and to keep yourself from spending a fortune before you find out.

That is why we have the Reality Check®.  There are scams and even patent practitioners that can get a lot of money out of you for ideas that have no possibility of making money.

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®



Title: Re: how to patent
Post by JimIvey on Dec 19th, 2003, 11:34am
Hi Peanut,

Here's a little article I call, "The Most Important Thing You Need to Know About Patents":

http://www.iveylaw.com/index.php?option=articles&task=viewarticle&artid=3&Itemid=3

In short, Timing!  You need to know what sort of activities in which you may engage can damage your patent rights.

There's a book on the patent process generally by David Pressman called "Patent It Yourself" (Nolo Press).  A lot of people get started there.

In essence, you add to the aggregate body of public world knowledge and you can prevent others from exploiting what you've added for a period of time.  The patent will (i) add your knowledge in the form of a detailed description and (ii) will define, in legal terms, exactly what you're entitled to prevent others from making, using, selling, importing.  Of course, the knowledge you add has to actually be added (not there before) and be more than an obvious variant of what's already in the public knowledge.

Are you interested in filing in the US first, or in Canada?  I'm CTO of a startup based in Calgary and I have a number of Canadian clients and contacts, so I can help you get going in the right direction however you'd like to proceed.

Regards.

Title: Re: how to patent
Post by M. Arthur Auslander on Dec 22nd, 2003, 6:48pm
Dear Mr. Ivey,

Is it not true that the claims of a patent define the invention? Thus just getting a patent could be a waste of time, money and worry?

Now as weak patent to a commercial client may have fighting value and publicity value. But JUST getting patents can be a waste of time money and worry. There are questions more than the law itself and the patent that don't seem to be dealt with here.

There are non lawyer operators that make $100M a year and get patents. Only one in ten thousand get back more than they pay.

I think the realities of the law as well as the law itself has to be presented to the client. One of the best patents I have ever gotten was shown to a company that rejected it.

Within three years the industry offered a $50,000,000 prize for a device such as that patent. The company we showed it to got the $50,000,000 turning out an invention not as good as the patent and not infringing the patent.

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®

Title: Re: how to patent
Post by JimIvey on Dec 23rd, 2003, 11:46am
Dear Mr. Auslander,

I'm sure by now we all know about your services and your perspective on value of patents.

However, I think you overlook the obvious.  The value of patents generally cannot be determined adequately by patent attorneys or agents.  The value of a patent is the total sum of the market value of all embodiments which infringe any of the claims less any difficulties with enforceability of the claims.

What we, as patent attorneys/agents, can do is minimize any problems with enforceability by complying with the prevailing applicable patent laws as best we can and by writing and getting allowance of claims as broad as possible.  

Thus, the claims should encompass as many embodiments as possible.  However, not all embodiments have equal value.  What we generally cannot do is assess the market value of embodiments which do infringe.  A broad claim can be less valuable than a narrow claim, depending on what is precisely covered by the claims.  

Consider this as an example:  suppose on one hand we have a very broad claim for treatment of a non-fatal disease which afflicts less than 10 people every year, and suppose on the other hand we have a very narrow claim which is infringed by Microsoft's Internet Explorer.  Which would you rather own?

Unless you include a detailed financial model and market analysis in your service for evaluating a patent prior to filing, I would suggest your service is an incomplete analysis at best.

Personally, I don't do market analysis.  I tell my clients what the patent will cost them (roughly) and highlight any pitfalls I might see which might compromise the ultimate value.  But the utlimate value and the weighing of that value vs. the costs is somebody else's job.  And, in my opinion, it must be the job of someone familiar with the economics of the market to which the invention pertains and familiar with economics generally and business plan evaluation.  That person is typically not a patent attorney.  If you have full competence in the economics of all the markets in which your clients are (or might become) involved and in patent law, you're a rather impressive person indeed.

Regards.

Title: Re: how to patent
Post by M. Arthur Auslander on Dec 25th, 2003, 7:10am
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®




Title: Re: how to patent
Post by JimIvey on Dec 30th, 2003, 12:38pm
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.

Title: Re: how to patent
Post by Penny Ballou on Jan 7th, 2004, 3:54pm
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?icservices=e_pat


Patent Search D/Base

http://patents1.ic.gc.ca/intro-e.html

Title: Re: how to patent
Post by M_Arthur_Auslander on Jan 12th, 2004, 7:26pm
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.

Title: Re: how to patent
Post by JimIvey on Jan 12th, 2004, 8:56pm
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.....).  ;-)

Title: Re: how to patent
Post by M_Arthur_Auslander on Jan 13th, 2004, 5:37am
Dear Mr. Ivey,

If I could get my secretary to answer posts to this forum, there would be no spelling or gramatical errors. I wouldn't type, I"d proof read and corrrect.

My typing is self taught.

Title: Re: how to patent
Post by BMH, esq. on Jan 13th, 2004, 8:12am
Although the attorneys here seem to be good at pitching their products and insulting one another, no one has really answered the question, which is simply "How do I patent my idea?".  Well, here is my no b.s. answer:

First you should find a "good" patent attorney.  What I think that means is a patent attorney who is honest, experienced, and not interested in making a quick buck from your ignorance of patent law.  Of course, you can patent it yourself, but there is always the danger of getting bogged down in the paper quagmire of the U.S. PTO, and wind up spending alot of money with no results.  If you choose this route, the U.S. PTO website has a pretty good section on how to get a patent, and provides all the necessary forms.

Second, you should get a patentability search done.  How good of a search depends on how much you are willing to spend, but you can do a quick search on your own at the U.S. PTO website.  Your attorney should be able to help you out with the search, but he will charge you, of course.    There are also search firms that do nothing but perform patentability searches for you.

Third, determine if spending the money on drafting an application is worth it.  Most attorneys will charge you between $4,000 to $8,000 depending on the complexity of the invention, plus prosecution fees, which could all add up to over $15,000 by the time you get a patent (if you actually ever do get a patent).  What determines whether it is "worth it" depends on a number of factors, including marketability, of course, the results of the patentability search, etc.  Once again, your patent attorney should help you with this, but definintely do some reasearch on your own.  After all, its your investment.  For example, I would recommend going to tradeshows and seeing what's out there in your field, and see if there really is a need for your idea.

Since you are a Canadian citizen, you can file an international application (called a PCT application) and then seek patent protection in a number of countries.

This is the quick and dirty answer.  Of course, there are many other aspects to consider in seeking a patent.   Good luck.  


Title: Re: how to patent
Post by JimIvey on Jan 13th, 2004, 10:30am
Regarding "attorneys insulting each other," my most recent post here was intended as a good natured jab at Mr. Auslander who is normally close to perfect in his spelling and grammar.  No insult was intended.  My other intent was to support Ms. Ballou whom I know through this and other forums as someone who has something of value to contribute.

I suppose a significant difficulty with the original question is that it's far too complex to answer here.  In essence, the question is asking us to briefly summarize everything that's been posted in this forum already.  Most of our web sites, a good many other web sites, the USPTO web site, the Canandian web site identified by Penny, and the FAQ on this site all provide answers to the question.

As for your range of costs, I believe it's too narrow.  My own personal range is $700-$100,000.  Eliminate the outliers and my range is closer to $2,000-20,000.

As for the pre-filing search, it's not best for everybody.  But I suspect it's appropriate for the original poster so I'll leave it at that.

As for the PCT note, the premise " Since you are a Canadian citizen" seems inappropriate in suggesting that the PCT is reserved for Canadian citizens or is otherwise unavailable to US citizens.  Anybody in the world can file in the PCT.

Regards.

Title: Re: how to patent
Post by bmh,esq. on Jan 13th, 2004, 1:05pm
yeah, sure, whatever you say Mr. Ivey, you the boss.

Title: Re: how to patent
Post by Penny Ballou on Jan 13th, 2004, 1:59pm
ORIGINAL Q FROM A CANADIAN INVENTOR: i have recently made an idea for a product but do not know how to patent it, might i add that i am canadian im rather new to business can someone help me. thanks

MS. BALLOU'S REPLY: See http://strategis.ic.gc.ca/sc_mrksv/cipo/patents/pt_main-e.html?icservice s=e_pat

MR. AUSLANDER RESPONDS TO 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.

================================================================================

*** Dear Mr. Auslander; Sir,

I am not entirely sure where you are headed with the above response to me. I suspect it is founded on false data therefore flawed. I am not in the habit of providing Statutes or Case Law to newbie inventors. By providing a Canadian primer written at a level a newbie inventor can understand, I fail to find your response has merit.

With the above in mind, listed below is brief outline of each category under that CIPO link. You'll note in one of the categories a link in how to find Canadian legal counsel.  

CIPO PATENT PRIMER:

1. GETTING STARTED. A guide to patenting (explains Canadian patent procedures at a novice level) : What is a patent; How To Get One; CIPO, Who Are We; Cost; What Does 'protection' mean; What is Marketing and Licensing; How can patent rights be abused; and so forth and so on.
2. PATENT INFORMATION
Technical Know-How (Patent Searching and your R&D Partner)
3. FORMS
4. PUBLICATIONS (PCT and foreign filings explained in simple terms).
5. E-SERVICES, FEES, ETC
6. FINDING LEGAL EAGLES
7. LEGISLATION: Patent Act and Rules and Canadian/International links

All the above categories are very, very basic issues Sir designed to educate newbie Canadian inventors thereby answer the original poster's Q. Nothing in them remotely relates to "reciting statues and case law." Sir, by your failure to review the link it is my contention you arrived at a faulty conclusion.

On the other hand, I realize your time is limited and you certainly are not in a position to review every link any Tom, Dick, and Harry posts. Consequently, I appreciate your forthrightness and merely seek to set the record straight while reiterating that I am not in the habit of making a fool of myself let alone reciting statutes or case law.

I apologize for offending you and greatly appreciate and indeed admire you for providing this resource which appeals to such a wide audience.

Penny Ballou
Member, Licensing Executives Society (www.usa-canada.les.org)
Founder, Inventors' Society of Southern Nevada (a registered nonprofit).
President, Advisory Board www.inventored.org (a registerd non profit).
Registered FDA Agent, medical devices

Title: Re: how to patent
Post by Penny Ballou on Jan 13th, 2004, 2:05pm
Mr. Auslander,

One para of my email was scrambled by your server it added the word "thingy" and deleted the word Harry; the it cut the line off; and placed instead a comma. I know not why. The para should read:

==========
On the other hand, I realize your time is limited and you certainly are not in a position to review every link any Tom, Dick, and Harry posts. Consequently, I appreciate your forthrightness and merely seek to set the record straight while reiterating that I am not in the habit of making a fool of myself let alone reciting statutes or case law.

===========


Title: Re: how to patent
Post by PBallou on Jan 13th, 2004, 2:08pm
I give up!

I should have typed "Dick" in my correction and not Harry. Nevertheless, it cut off Dick and replaced it **again** with "thingy?" (not even a word for Gawd's sake).

Apologies as I slink off into a corner.

Title: Re: how to patent
Post by M_Arthur_Auslander on Jan 13th, 2004, 9:48pm
Dear Ms. Ballou and BMH Esq,

I believe that just getting a patent can be a waste of time, money and worry. Without feeling arrogant, my legal experience convinces me that just being smart and being able to solicit patents can be unfair to many inventors.

I don't think I have met more than one or two inventors who have had the skill and insight to write their own patent application with the legal and practical reality to get adequate protection or know when to give up or even get weak patents for a practical commercial reason.

Intellect is not the entire answer. Knowledge of the law, legal instinct to cope with weakness helps to maximize the possibility value out of patents.

When I started to practice law, patents did not even occured to me. One of my best friends and his brother were patent lawyers. They urged be to take the patent bar and gave books to study.

One of them wrote the patent for the polarized folded metal electrical plug, featured on the 200th anniverary poster for the Patent Statute. He became my first law partner. My next partner wrote the book on Chemical Patents. He started the update and left this world for me to finish publication as co author.

Jerry Lemelson, used to write his own patent applications. When he came to me for help I could see he was a genius but that he could not write a good patent. It took patent lawyers and his genius to make the multi multi million he finally made just before dying.

My brag is that I'm not rich, but straight and hardworking and with a conscience that allows me to sleep at night. I've put my client's interest ahead of my own, within reason.

Essentially for an inventor to get value he must have the advantage of more than the words of the Statute and a patent search.

Then the facts of life are that just because you have a good invention and even a good patent, it still might not make money.

I cannot see into what is going to happen in the real world, but I do know that there are some roads that end at a legal cliff and can warn inventors to at least be careful.

Just reading law or writing claims may get patents but even good patents may not prosper. There is my personal friend with a better device NOT winnng a 50 Million Dollar prize.

OK if you want go read your law write you patents, it will keep you from the $100 million annual scammers where only one in 10,000 get back more than they pay.

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®

Title: Re: how to patent
Post by eric stasik on Jan 13th, 2004, 9:51pm
Dear Ms. Ballou,

Apparently, this blog software contains rather crude censorware which blocks the use of some words. I assume you wrote tom, richard and harry and the server stipped away the nickname for harry and inserted thingy instead... (but not on preview.)

if it were not so annoying would be really funny.... here let's try....

dick

regards,


Title: Re: how to patent
Post by eric stasik on Jan 13th, 2004, 9:52pm
yup. that's it.

i will resist the temptation to try other words......

regards,

Title: Re: how to patent
Post by M_Arthur_Auslander on Jan 19th, 2004, 6:38am
Dear Penny Ballou,

I don't understand the last reply. My thesis is that JUST GETTING A PATENT can be a waste of time money and worry. What is worse it can be a source of victimizing niave inventors who place hopes of a fortune on a patent document that may be valid but valueless.

There can be value even in an avoidable patent, but my thesis is DON'T WASTE TIME MONEY AND WORRY on getting a patent unless there is a VALUE in what you do.

Thus a weak patent on a commercial product may be valuable, even if the patent is avoidable. An individual inventor with a weak patent usually just spends money and gets no value.


Title: Re: how to patent
Post by JimIvey on Jan 19th, 2004, 11:14am
Dear Mr. Auslander,

Do you really have to post the same exact answer to every single question on this forum irrespective of relevance?  Many of the questions here have nothing to do with whether it's worthwhile to get a patent in the first place, yet that's precisely the question you prefer to answer on a daily basis.  Perhaps you should contribute to the FAQ section of this site and then reserve your "complete waste of time and money" answer for the questions to which that answer might actually be relevant.

Just a thought....

Regards.

Title: Re: how to patent
Post by eric stasik on Jan 20th, 2004, 12:36am
Dear Mr. Ivey,

With all due respect, sir, your last post was uncalled for. There are many people who do not visit this site as often as you and I and Mr. Auslander. Morbid redundancy is a risk of posting often - here or on any other blog.

Mr. Auslander makes a good point which honestly cannot be repeated too many times. In my humble opinion, that is. When discussing patents, even tangentially, it is always worthwhile to ask yourself WHY you are thinking about applying for a patent.

Your posts are one of the reasons I visit here as often as I do. The majority of your comments are well thought out, on topic, and consistently informative - even for a know-it-all such as myself.

It is important to maintain an exceptionally high degree of civility among the participants to prevent these boards from disintegrating into a shouting match and making people feel unwelcome - having been shouted out of my share of sites (for my radical pro-patent beliefs) I am perhaps overly sensitive to it.

If I am out of line for expressing this view, I ask you to kindly excuse my outburst. I had a late night preparing a client proposal and the words just weren't coming. I just stopped over here for a brief diversion.

Regards,


Title: Re: how to patent
Post by JimIvey on Jan 20th, 2004, 12:02pm
The appropriateness of continuing this discussion on-list is a bit dubious, but I'll address your post on-list since your comment was on-list.  We should probably continue the discussion off-list.

In terms of civility, I perceived Mr. Auslander to be badgering Penny Ballou with his daily "complete waste of time" message.  I know Penny to be a valuable contributor in this and other forums.  At least once in this thread, he was rather rude and insulting to Penny.  

In addition, I count no less than 5 posts by Mr. Auslander in this thread alone that getting a patent can be a complete waste of time and money.  How many times should that be posted in a single thread?  I would argue less than once on average, because many questions in this forum have nothing to do with the decision to get a patent.  If the question does pertain to whether to get a patent, I think raising the point once is enough, unless it generates follow-up questions/discussion.  I believe that the lack of follow-up questions/discussion suggests that people here "get it."

We all have a pet points vis-a-vis patents.  I have mine and I call that article "The Most Important Thing You Need to Know About Patents."  And, for the record, it has nothing to do with "complete waste of time and money".  But I don't work it into every single post of mine.

I don't wish to be unkind, but due to the similarity of Mr. Auslander's posts, I believe that the full benefit of his contribution to this forum can be achieved by reading 3 or 4 of his posts and ignoring the rest.  I believe he is certainly capable of contributing more, but for whatever reason he seems to chose not to.  And, I don't feel the same way about his posts in the trademark and copyright forums.  

Lastly, repeating one's favorite post in case newbies might be lurking about is generally considered inappropriate behavior in an on-line forum (a violation of "netiquette").  That's why FAQs exist -- to avoid redundancy and to promote free flow of current and relevant information free from traffic of old, redundant ideas.

In summary, I was reacting to what I perceived to be incivility to Penny.  My intent was to uphold the value of this forum.  If I inadvertantly detracted from the value of this forum, I apologize.

Regards.

Title: Re: how to patent
Post by eric stasik on Jan 20th, 2004, 12:14pm
Mr. Ivey,

I stand corrected. Your point is well taken and in light of them my remarks can only be seen as intemperate.

Please accept my apologies for mouthing off.  

Regards,



Title: Re: how to patent
Post by JimIvey on Jan 20th, 2004, 6:27pm
Hi Eric,

No need to apologize.  As long as I made myself clear and haven't inadvertantly offended anyone, I'm happy.

Thanks for your contributions here and for keeping me on my toes!

Best regards,

Jim



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