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[Infinite]

This will be my first post to the board, with many questions pertaining to IP. Like many other before me, I believe that my partner and I have the "holy grails" of inventions before us. On our second more refined prototype we hope our test results find us in the presence world changing technology!

After reading many threads on the board about the first important steps of protecting your IP I am quite confident of the route we will be taking. Starting with a Non-disclosure agreement with a select sophisticated investor and moving on to U.S.,Canada and abroad for Patent , Trademark and whatever else the technology dictates.

Here are where a few of my questions come into play....
When a "patent law office specializing in intellectual property and technology is hired to work on ones technology...who is it that writes the patent "Claims and Description"? The invention I am working with is a purely mechanical device and researching prior arts to compare where we fit in has left my head aching. It would seem this written desciption could make the wheel seemd complicated!

I have worked with CVT transmission development in the past that was patented before I became involved with the company. I worked on R&D in prototype development and found the patent description very confusing..and I KNEW how it worked! Working on that project is where I first learned how limiting a patent can be. While working with a prototype...I ran into a design flaw that revealed that the original patents protection was void in light of changes I made to the design. It was very discouraging to the company that owned the patent due to the fact it's sole intention was to licence the IP and return dividends to the shareholders.

That moves me on to my second question.....
Is it an unrealistic dream to expect a monopoly on the technolgy for years to come if it was claimed broad enough and the technology was unique enough? It seems in todays market place there are knock offs everywhere in all corners of IP and Trademarks and as a small company with limited resorces it would be devastating if a large corporation was your first litigation case.


Any comments and insights will be greatly appretciated.

[JimIvey]

When a "patent law office specializing in intellectual property and technology is hired to work on ones technology...who is it that writes the patent "Claims and Description"?

I'm not sure I understand completely.  When you hire a patent practitioner or firm, it's generally expected that the hired practitioner/firm will write the application.  If you choose to do it yourself, the practitioner/firm can review, edit, and file it for you.  Or, you can bypass the practitioner/firm altogether and do it yourself, though it's not generally recommended.  In short, you decide who writes your application; it's not decided for you.

Is it an unrealistic dream to expect a monopoly on the technolgy for years to come if it was claimed broad enough and the technology was unique enough? It seems in todays market place there are knock offs everywhere in all corners of IP and Trademarks and as a small company with limited resorces it would be devastating if a large corporation was your first litigation case.

Even the most cash-flush companies don't really file their patent applications in every country in the world.  I have yet to see a situation in which complete coverage in 100% of the world was economically justified.  Pharmaceuticals might be one exception, but I really don't know where such companies file.  And, you can exhaust a moderate budget with just a few foreign applications.

If your product becomes popular, you can readily expect knock-offs.  In theory, you can stop the knock-offs at the border.  However, while Congress has budgeted money for increased port security and increased container inspections for national security, the executive branch hasn't done anything with those funds for three straight years.  I was hoping that an unintended consequence of such increased port security would result in tighter policing of knock-offs entering the country.  Alas, that increased security never arrived and neither did any unintended consequences.

And, you should expect that litigation may be necessary if your invention really is a "Holy Grail".  I hope I'm not destroying anyone's illusions of the marketplace, but business people can be downright nasty.  Be prepared to have bigger companies blatantly infringe any patents you might have if they don't think you have the resources to litigate.  Some companies will try to obscure exactly what company is making the knock-offs.  People cheat.  Yes, they really do!  ;-)

So, in conclusion, I think no one should count on a 100% perfect world-wide monopoly on any invention.  You may achieve it, but you should never expect it.  But, if your idea really is a "Holy Grail," 70% or even 50% of the worldwide market should make a comfortable life for you and your company.

I hope that helps.

[Infinite]

Thank Mr. Ivey, I have been reading many of the threads on the board and have found your responses to be both direct and insightful. Your response the questions I posed did not deflate my expectations. Sometimes when you ask a question...the answer isn't what you want to hear....I liked what I heard.