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(Message started by: yahsureyoubetcha on Nov 14^th, 2007, 11:28pm)

Title: How do you get inventor to disclose his invention?
Post by yahsureyoubetcha on Nov 14^th, 2007, 11:28pm

I'm dealing with an inventor who just doesn't understand what needs to be disclosed in a patent application. Is there anything online that I can show him to try to explain what needs to be disclosed in order to write an application?

He is talking about a software system to (do X). His "disclosure" is that he has this software system that "does X". That's it. No explanation of how X is done. Zero enablement. Right now, if I were to do a drawing, it would be a big cumulus cloud labeled "and then a miracle occurs".

Anyone have an algorithm thesis online that I can send to him and say, "look, here's a master's thesis on a highly complex algorithm, with half a dozen diagrams, a discussion of alternatives, and a full explanation of why this is better than everything that's gone before, this is what you're supposed to send me."

I've been going back and forth with him for nearly three weeks and the most I've gotten is three sentences explaining that yes, the thing "does X" but it doesn't do it "that way" because "that way" was listed in a patent he sent me as the prior art he wants to avoid. I don't know whether he's afraid I'm going to steal his invention or if he's trying to make me his research department.

Title: Re: How do you get inventor to disclose his invent
Post by TataBoxInhibitor on Nov 15^th, 2007, 6:48am

It must enable a person ordinarily skilled in the art, which in your case is a software engineer/computer science type? If you can describe, after viewing the software, how it does something to accomplish some result, then that should be sufficient. I do not think the algorithm comes into play here. You need to ask exactly what steps are involved to "do X."

Sometimes it helps if you take a perspective of a user, in using the system in which the software is installed on.

You should make sure you cover all "forms" of software in your claims, including its use on a computer, being present on a disk etc etc. Others here may have more.

Regards,

Title: Re: How do you get inventor to disclose his invent
Post by yourbrotherinthetrench on Nov 15^th, 2007, 8:41am

Dear yahsureyoubetcha,
I hereby commiserate with you.
I've walked that walk many a time.
Each time the scenario you described unfolds again, I get a little more comfortable with the bamboozle aspects of this job we call patent prep and pros.
Just start writing a smoke and mirrors patent application my friend. Get out the egg beater and whip up some meringue.
Your client ain't worried you're gonna steal his invention ... he possesses no invention! There is nothing to steal brother!
Take his money and write!
Take as much of his money as you can!
He wants to extort the world with a flimsy patent and if you don't write it ... sheeeit ... then I WILL!!

Start drawing boxes with arrows between them ... let's see there's gotta be an input and an output ... right? ... Ok ... there's gotta be a module or something between the input and the output ... right? ... ok ... we're up to three boxes in the figure ... look for action verbs anywhere in the disclosure ... how many you got? ... two ... okay, break that middle module up into two boxes and bam ... we're up to four boxes. Now surely those two middle boxes need an intermediary box ... you know, storing some intermediary data or cross talk among the two boxes or something ... work some kind of loop into the drawing ... aren't we up to five boxes by now .... I could write ten pages on five boxes easy ... I may could write ten pages on what little I know already and I don't have the disclosure in front of me.

Go take a morning yoga class ... pick one with a hot instructor ... then grab a latte on the way into the office ... and write brother!

This is what we do.
Welcome to the jungle.

Love and Kisses,
yourbrotherinthetrench

Title: Re: How do you get inventor to disclose his invent
Post by yourbrotherinthetrench on Nov 15^th, 2007, 9:11am

On second thought ... my conscience consumed me after I posted that message ... I retract my recommendation .

I now recommend you needle the "inventor" for more information. I recommend you tell the inventor, and your boss, and the inventors boss, and the inventors investors, and all the kings horses and all the kings men, that you are a crusader of truth and fairness and all that is good. I recommend you take a stand, here and now. I recommend that you assume that you are indeed that one of reasonable skill in all arts, that you will unilaterally determine when a disclosure is sufficiently enabling, and I recommend you not taint yourself with the kind of compromising fluffery that I previously recommended. Be strong, an army of one. You don't need your job ... do you? You can stand out in your firm as difficult ... can't you?

Oh ... wait ... what was that? ... my conscience just blinked ... like the pilot in the helicopter Decepticon in the first battle scene in the Transformers movie ... maybe the pilot isn't real .... maybe my conscience is ... intangible ... maybe, I wanna get paid more than I wanna be a crusader ... can it be? ... can I be? ... can I transform into .... an evil Decepticon? .... YES! ... I can! ... I can and I will write that patent application! ... Wa-Ha-Ha-Ha-Ha!
All Hail Megatron!

ok ... too much latte.
gotta go.

Title: Re: How do you get inventor to disclose his invent
Post by DJoshEsq on Nov 15^th, 2007, 5:13pm

request a flow chart or step by step process of accomplishing X. Alternatively, request that the inventor draft at least a one page description of the invention. That is all I got!

Title: Re: How do you get inventor to disclose his invent
Post by Wiscagent on Nov 15^th, 2007, 8:40pm

I suggest quoting 35 USC 112, paragraph 1. Ask the inventor if he believes that “any person skilled in the art to which it pertains, or with which it is most nearly connected” would be able to make and use his invention, based on the disclosure in the specification. If he still insists that the specification is sufficient, then go ahead and write up the application. When preparing the paper work to file the application, also have the inventor sign a document that you reviewed 35 USC 112 para 1 with him, and he believes that the specification provides sufficient disclosure. I doubt that the document will shield you when he sues you; but it's worth a shot.

Alternatively ... just tell him you can't do the job. Quit and give him back his money. You're better off losing a few dollars now than a lot of dollars later.

Title: Re: How do you get inventor to disclose his invent
Post by yahsureyoubetcha on Dec 2^nd, 2007, 3:28pm

Thanks, all. I think I am going to give up on the guy. He's not returning calls, and his emails are becoming even less responsive than before, if that is even possible. He didn't even acknowledge the one about 112.

Title: Re: How do you get inventor to disclose his invent
Post by yourbrotherinthetrench on Dec 3^rd, 2007, 12:16pm

... oh ... you're a crusader then ... fine ... don't wanna shovel the muck with me? ... too prissy are you? ... just don't expect any appreciation ... doing the right thing is a thankless job and I'm in this for the chicks!

Now, where's that scribble on a napkin I have to turn into a patent application? ... there it is ... under my latte ... here we go ... let's see, nothing but a single unintelligible symbol, or is that a crumb or something? ... either way, it's okay, I can work with that ... I'll prepare eight figures, twenty pages of spec, and fifty claims, it will indeed become a grand patent application portfolio ... yes, piece of cake ... off I go!

Title: Re: How do you get inventor to disclose his invent
Post by yahsureyoubetcha on Dec 6^th, 2007, 6:44pm

on 11/15/07 at 06:48:10, TataBoxInhibitor wrote:

Tata,

Problem is, while I could have described "a way" of accomplishing the task, I have only the minimally foggiest idea of "his way" of accomplishing the task. Mostly, what I know now is that "his way" is "NOT any of the ways I have proposed". Every time I asked, I got a "no, it doesn't work like that," with no more enabling information forthcoming.

yourbrotherinthetrench, I thank you for your deep insights. :) I can whip up meringue, but not in a vacuum! (The intergalactic space kind, not the Oreck kind.) It takes gas to make bubbles, and the water keeps evaporating, at least when it doesn't freeze and then sublimate. Good luck on the chicks. I find that a nice discussion of KSR knocks 'em out even faster than Aqua-Dots in tequila.

Title: Re: How do you get inventor to disclose his invent
Post by TataBoxInhibitor on Dec 8^th, 2007, 12:04pm

Dealing with clients can sometimes prove to be very difficult. If the inventor is not responsive about his own invention, wait till it comes time to collect your fees!

Regards,