Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[palmer]

Hello,

I am wondering what do patent attorneys do when they need to draft a patent which is in a field or a subfield, which they are not educated in. It some times take years to get educated in a field, and months to get educated in a subfield, and it take even more time to acquire general knowledge. Without the background education, can a patent attorney really optimize/rebuild a device/method into its inventive concept? or would the patent attorney just rewrite the inventor's draft, in order for it to look professional, but without arriving with the inventive concept device/method?

[Isaac]

I am wondering what do patent attorneys do when they need to draft a patent which is in a field or a subfield, which they are not educated in.

I think you have choices which are variations on bailing, getting educated sufficiently to write the application, and relying primarily on experts including but not limited to the inventors.

Without the background education, can a patent attorney really optimize/rebuild a device/method into its inventive concept? or would the patent attorney just rewrite the inventor's draft, in order for it to look professional, but without arriving with the inventive concept device/method?

If that's the best you can do, I suppose you could refer the client to me.

[khazzah]

would the patent attorney just rewrite the inventor's draft, in order for it to look professional, but without arriving with the inventive concept device/method?

Several thoughts on this topic.

There isn't always an "inventor's draft" to start out with. I've had many written disclosures that were a single paragraph.

Capturing the inventive concept is almost always what the client expects the patent practitioner to do. If so, failing to do that is failing your client.

It's important for a patent practitioner to be able to learn new areas of technology. I suppose some of this is (learnable) skill and some of this is (innate) aptitude. Another important skill is extracting the information you need out of an inventor. Sometimes a lot of what you're given to start out with is irrelevant -- because not all of inventors are knowledgeable about patent law -- so you need to ask the right questions to establish what's important and what's not.

[George White]

I'm a EE who just bought five reference books on orthotics. Learning new topics is one of the best parts of being a patent agent, for me.

---George

[JimIvey]

Without the background education, can a patent attorney really optimize/rebuild a device/method into its inventive concept? or would the patent attorney just rewrite the inventor's draft, in order for it to look professional, but without arriving with the inventive concept device/method?

First, it's never enough to make a document "look professional".  Most do that by sprinkling "said" throughout the document and mixing in other legalistic sounding words like "heretofore", "whereas", "plurality", etc.  Just useless garbage.

That said, the task of the patent application is to satisfy technical and legal requirements.  The practitioner's responsibility is to ensure that all of those requirements are met. 

There are numerous ways to achieve those requirements.  The best is typically the inventor herself.  My disclosure interviews often include numerous questions regarding which parts are new and which are known, I might ask for background papers/references to cite and to help me understand what's already known, and numerous questions regarding the value added by the innovation and other ways it might be achieved.

The bottom line is that any gaps in understanding the essence of the invention must be overcome to prepare a proper patent application.

Regards.

[palmer]

George White, how long would you spend on reading these five reference books on orthotics? Would your client pay for that time? As an EE, you surely know that it takes a semester of hard work to learn a new subject, so if someone would have a patent related to EE, but related to matter taught at a course that you didn't take, you probably can appreciate that it will take you time, and effort to learn it, and even more time for the material to sink in.

JimIvey, Making sure that technical, and legal requirement are met, would not prevent anyone from bypassing the patent. I appreciate that you can interview the inventor, but the inventor is not a patent attorney. Wouldn't the inventor just provide with details about the embodiments? What would you do if the inventor herself would not know the inventive concept of her invention? What would you do if the inventor herself would have had trouble to arrive with the inventive concept of her particular invention even if she had understood what you look for?

Isaac, How do you rely on experts that are not the inventor, and how much does it add to the cost of drafting the application?

[Ghoti]

If you are drafting in an area that is new to you and the inventor is not particularly patent aware, do you perform a prior art search?

Personally (when I have a choice) I prefer to work with attorneys that have been drafting in the area for years. Apart from technically understanding the invention I like them to also know of the general prior art in the area and have a feel for where the technology is likely to move. This results in a much more robust specification that will stand the test of time.

[khazzah]

JimIvey, Making sure that technical, and legal requirement are met, would not prevent anyone from bypassing the patent.

Not directed at me, but I'll comment anyway. Not sure what you mean by "prevent from bypassing the patent." Failure to meet these requirements means that you have a patent that can be invalidated when you try to assert. Failure to capture the inventive concept means you have patent that is unlikely to be infringed by competitors, or even infringed at all.

I appreciate that you can interview the inventor, but the inventor is not a patent attorney.

True. Your job is to bridge the gap what the inventor has -- technical knowledge -- and what he doesn't have -- knowledge about patent law.  To do a good job, you have to know enough about both. But you don't have to be an *expert* in the technical area. Clients might well prefer this, but it's just not always feasible. 

you do if the inventor herself would not know the inventive concept of her invention?

By "inventive concept", do you mean differences between the invention from the prior art?

Or do you mean how the invention works?

Or do you mean invention boiled down to its bare essence, in its broadest form, not any narrower than absolutely necessary?

Or something else?

Palmer, it might help if you told us something about your background. Inventor? Interested in getting into patent law? Already working in patent law?

[JimIvey]

JimIvey, ... but the inventor is not a patent attorney.

No, but I am.

Wouldn't the inventor just provide with details about the embodiments? What would you do if the inventor herself would not know the inventive concept of her invention? What would you do if the inventor herself would have had trouble to arrive with the inventive concept of her particular invention even if she had understood what you look for?

Most often, the inventor knows most of what others have tried and knows how her invention is distinguished.  

If the inventor really seemed to have little awareness of what others in the same technology have done, I'd discuss the pros and cons of a pre-filing search and explain the risk that others might be working in the same space.  One of the cons of a pre-filing search is the cost for my time in reviewing search results and trying to make up for the inventor's unawareness of the potential specificities of novelty of her invention.

In other words, if the inventor can't help you prepare an enabling description of the invention and can't help you divine how to protect the invention, it's your obligation to figure out how to do both of those.  If the inventor/client can't afford to have you do that, then they can't afford a patent application.  There's no option to prepare and file an inadequate patent application, and there's no obligation to work for free.

Regards.

[bald & chained]

In other words, if the inventor can't help you prepare an enabling description of the invention and can't help you divine how to protect the invention, it's your obligation to figure out how to do both of those.  If the inventor/client can't afford to have you do that, then they can't afford a patent application.

<big rant> Perhaps this is true for individuals or small entities.  But some large clients treat patents like commodities and will file an application for anything, no matter how trivial.  Great for the billing partner, not so great for the associate.  You'd often get a single paragraph disclosure without any details, an inventor on a permanent vacation (he already got his 1k bonus), a limited budget, and pressure to file N apps by the end of the year.  I am sure plenty of people here working in firms know what I am talking about.  This happened often enough that I can't take EE/CS patent prosecution seriously anymore, especially after switching to litigation and seeing how easily the original intent of the patentee/attorney is twisted 10 years later when an NPE buys up the patent and starts suing everyone EDTX.  Maybe 1 out of 1000 issued patents adds something novel or useful to our society.  Otherwise, it's all really just a big silly game so that the paralegals, attorneys, judges, experts, and various consultants have something to do. And some of us even delude ourselves into thinking that we are somehow promoting innovation. I'd imagine that most do not. I guess we all have to put bread on the table, but this profession is a very different from what I envisioned it when I started.  </big rant>

[smgsmc]

There's no option to prepare and file an inadequate patent application, and there's no obligation to work for free.

I'll respectfully disagree with the first part.  I see mucho inadequate patent applications all the time.  I'm sure most of us do.  Whether it's ethical to intentionally prepare an inadequate patent application is a separate question ... and a complicated one if the Megacorp client is intentionally contracting for a lower grade product in return for a lower price.

I agree with the second part, but I will recast it:  "There's no obligation to work for free, but there's the option."  You can't expect the client to pay for your education.  But if you want to do a good job AND stay within budget, you can choose to spend extra hours learning the material ... and eat the hours, as I choose to do.

[smgsmc]

In other words, if the inventor can't help you prepare an enabling description of the invention and can't help you divine how to protect the invention, it's your obligation to figure out how to do both of those.  If the inventor/client can't afford to have you do that, then they can't afford a patent application.

<big rant> Perhaps this is true for individuals or small entities.  But some large clients treat patents like commodities and will file an application for anything, no matter how trivial.  Great for the billing partner, not so great for the associate.  You'd often get a single paragraph disclosure without any details, an inventor on a permanent vacation (he already got his 1k bonus), a limited budget, and pressure to file N apps by the end of the year.  I am sure plenty of people here working in firms know what I am talking about.   This happened often enough that I can't take EE/CS patent prosecution seriously anymore, especially after switching to litigation and seeing how easily the original intent of the patentee/attorney is twisted 10 years later when an NPE buys up the patent and starts suing everyone EDTX.  Maybe 1 out of 1000 issued patents adds something novel or useful to our society.  Otherwise, it's all really just a big silly game so that the paralegals, attorneys, judges, experts, and various consultants have something to do. And some of us even delude ourselves into thinking that we are somehow promoting innovation. I'd imagine that most do not. I guess we all have to put bread on the table, but this profession is a very different from what I envisioned it when I started.  </big rant>

You can count me among those who are too well aware of what you are talking about.  I had separate posts a while back on the problems in the IP profession spawned by large volume, low flat rate patent prosecution ... the Walmart business model.

[Wiscagent]

... an inventor on a permanent vacation (he already got his 1k bonus)

Wow, if I worked there I still might be in industry.  Where I worked we got about $100 the year after the patent was granted.

But seriously ... I agree. 

Too often disclosures are inadequate and time-lines are too short.  Filing decisions are frequently made on the basis of bonuses for managers.  Sometimes filings are on the basis that "We're coming out with a 'new' product, so we need to file for a patent."  The product may be 'new' in a business and marketing sense, but from a patent law perspective the product or feature lacks novelty because the same product was publicly disclosed years before.  And as a result the disclosure just vaguely describes the product ... because the "inventor" knows that nothing was invented.  So the patent practitioner can only do his or her best.  The practitioner was hired to write an application, and the practitioner needs to grasp onto anything in the disclosure that suggests there really is an invention.

[JimIvey]

There's no option to prepare and file an inadequate patent application, and there's no obligation to work for free.

I'll respectfully disagree with the first part.  I see mucho inadequate patent applications all the time.  I'm sure most of us do.  Whether it's ethical to intentionally prepare an inadequate patent application is a separate question ... and a complicated one if the Megacorp client is intentionally contracting for a lower grade product in return for a lower price.

By "no option", I meant "not legally excusable."  If a client asks you to file an application and provides inadequate resources for the application to meet the requirements of law, you are not immune from a malpractice claim.

If you accept that work, you accept that risk.

I agree with the second part, but I will recast it:  "There's no obligation to work for free, but there's the option."  You can't expect the client to pay for your education.  But if you want to do a good job AND stay within budget, you can choose to spend extra hours learning the material ... and eat the hours, as I choose to do.

Yes, it's always an option.  At some point, it might be that another practitioner would be a better fit for the project.

I'll respectfully disagree with the statement that you can't expect the client to pay for your education.  Theoretically, lower hourly rates for inexperienced practitioners adjusts for the need to spend more time learning about the technology and ensuring compliance with the law.  It's all up to your negotiation with the client.  If you agree to a budget, yes, you'll eat some time if you go over.  But that's a business decision for the practitioner. 

If you inform your client that you'll need to catch up a bit on the technology to write an adequate patent application and explain that your hourly rate will apply during that work, you can most certainly expect the client to pay for your education.  Whether you can actually do that depends on where you are and what your client wants from you.  And, they might find some way to get you additional disclosure to minimize your education time.

Regards.

[Isaac]

If you inform your client that you'll need to catch up a bit on the technology to write an adequate patent application and explain that your hourly rate will apply during that work, you can most certainly expect the client to pay for your education.  Whether you can actually do that depends on where you are and what your client wants from you.  And, they might find some way to get you additional disclosure to minimize your education time.

Jim, you have that option but many associates in firms do not.  Associates often have to eat the hours spent learning.