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Topic: Non Patent Literature for Information Disclosure (Read 2149 times) |
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JasonR
Newbie
Posts: 35
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Re: Non Patent Literature for Information Disclosu
« Reply #5 on: Aug 22nd, 2006, 1:16pm » |
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Well, my NPL would be backing up arguments I make in the specification (not claims or prior art) as to why my invention is important and necessary. So that's where I was wondering if I would need to cite the specific arguments I made in the information disclosure.
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Isaac
Senior Member
Posts: 3472
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Re: Non Patent Literature for Information Disclosu
« Reply #6 on: Aug 22nd, 2006, 1:45pm » |
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on Aug 22nd, 2006, 1:16pm, JasonR wrote:| Well, my NPL would be backing up arguments I make in the specification (not claims or prior art) as to why my invention is important and necessary. So that's where I was wondering if I would need to cite the specific arguments I made in the information disclosure. |
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To what end?
Your arguments sound like the kind of stuff you want to keep to yourself until you need them to overcome some action by the PTO.
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Isaac
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JasonR
Newbie
Posts: 35
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Re: Non Patent Literature for Information Disclosu
« Reply #7 on: Aug 22nd, 2006, 1:54pm » |
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They're the kind of thing I see in many patents that attempt to present the invention to interested parties in an appealing manner and stress its importance. They state how and why people would benefit from the invention, and in my case involve anatomy and rehabilitation principles that are in literature.
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Wiscagent
Full Member
Posts: 843
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Re: Non Patent Literature for Information Disclosu
« Reply #8 on: Aug 23rd, 2006, 3:30am » |
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"... the kind of thing I see in many patents that attempt to
present the invention to interested parties in an appealing
manner and stress its importance. They state how and why
people would benefit from the invention ... "
I recommend that a patent application be written in an attempt to broadly and robustly block competition from practicing your invention. Marketting the invention, by dicussing how and why the invention is valuable, should be an almost entirely separate effort.
Richard Tanzer
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Richard Tanzer
Patent Agent
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JimIvey
Moderator
Senior Member
 
Posts: 2584
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Re: Non Patent Literature for Information Disclosu
« Reply #9 on: Aug 23rd, 2006, 12:55pm » |
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on Aug 23rd, 2006, 3:30am, Wiscagent wrote:| I recommend that a patent application be written in an attempt to broadly and robustly block competition from practicing your invention. |
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I agree with that.
on Aug 23rd, 2006, 3:30am, Wiscagent wrote:| Marketting the invention, by dicussing how and why the invention is valuable, should be an almost entirely separate effort. |
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I don't agree with that. I can think of at least 3 reasons to "sell" the invention in the application.
First, you put in motivations that could be used to combine your application with others in a 103 (obviousness) rejection of another application -- you make a more effective defensive publication that way. I think a while back, another poster paid me a rather generous compliment on the effect of one of my applications as prior art, i.e., as a defensive publication. I suspect selling the invention in the application had a lot to do with that.
Second, selling the invention can provide motivations for specific features to counter 103 (obviousness) rejections that suggest that the difference(s) between the claim and the prior art are mere design choices without any appreciable benefit.
Third, selling the invention is just plain helpful. It can't hurt to have the examiner like the invention and want to allow something, even if your broadest claims are perceived to be too broad. And, it certainly helps to have a jury (not to mention a judge) see the importance of your invention and to want to compensate the inventor/assignee for an important and beneficial technical contribution.
Now, of course, selling of the invention should be reasonable to be helpful. For example, you don't want a sales pitch that's obviously hyperbole: "For the first time, people can enjoy the health benefits of practicing yoga while smoking their favorite cigarettes!"
Having said all that, I don't think you need to support your salespersonship with cited references. Stuff that supports your invention are not likely to be used in making a prima facie case of unpatentability or to be contrary to a position the applicant takes during prosecution.
But I'd respectfully disagree that there's no place for salespersonship in a patent application.
Regards.
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James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
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