The Intellectual Property Forum

Here's a hypothetical about application of the US first-to-file law. Let's say two people, A and B, invent the same thing. Inventor A is the first to invent. B files first, but does so while first-to-invent is still in force. Inventor A files after first-to-file goes into effect. Obviously, if both filings had occurred under first-to-invent, A would win the patent (all other things being equal); if both had occurred under first-to-file, B would win. Since the filings occurred under different laws, which law will apply? Anyone know?

Would one run into trouble (say, on the grounds of teaching, or usefulness, or anything else) trying to patent an inventive concept that cannot currently be practiced because it relies on technology that does not yet exist? For instance, could one patent a vehicle utilizing a warp drive, even though warp drives haven't yet been invented? Or for a more realistic example, let's roll the clock back a few years and imagine that I have come up with the inventive concept related to windshield wipers. Could I claim -- and have a patent issued for -- something like the following, even though there is not at the time any known means of measuring the amount of precipitation falling on the windshield:

"A method for controlling a windshield wiper, the method comprising determining the desired speed and/or frequency of operation of said wiper as a function of the amount of precipitation falling on the windshield..."
--or--
"A windshield wiping apparatus comprising a piece of wiping material; a mechanism for moving said piece of wiping material across a windshield; and a controller which determines the speed and/or frequency of operation of said mechanism as a function of the amount of precipitation falling on the windshield..."

I ran across an issued patent with one independent claim and several dependent claims. The independent claim says:

"1. A controller for [some device], the controller comprising: a. an input adapted to receive specification by a user of a desired angle and angular rate, the desired angle and angular rate being based on a detected body orientation of the user; b. ...; and c. ..."

As I understand it, I could get around this claim by making a similar controller that uses the desired angle (but not angular rate); or that uses the desired angular rate (but not the angle); or that uses both angle and angular rate, but determines one or both of them through some means other than the user's body orientation. And if I get around the independent claim in this manner, then the dependent claims are irrelevant, so I can practice my alternative device without infringing this patent. Is that understanding correct?

Assuming my new device doesn't infringe, is it possible I could patent it, or would it likely be considered obvious in light of this patent?

I have read and heard the proposition that a reasonably competent and motivated engineer can, with a little study, do an acceptable job of writing most of a patent application, the key exception being the claims. Firstly, do the practitioners here concur with that proposition?

Assuming the proposition is valid, it suggests a possible strategy for an inventor to minimize up-front patent costs while still obtaining an early priority date and avoiding the potential pitfalls of a provisional application:  Writing the application himself, but writing the claim(s) so broadly that they are sure to be initially rejected. The hope would be that by the time the first office action occurs, the inventor will (a) have a better feel for whether pursuit of the patent is warranted, and (b) be in a better position financially to hire an IP lawyer to draft the "real" claims. The original claims could be amended and new claims added; deficiencies in the original application could (?) be addressed at that point via a CIP.

Is this a reasonable strategy, or is it likely that the inventor would just shoot himself in the foot with this approach?

I need a little clarification on the meanings of conception and inventorship. A friend with a marketing background has approached me (an engineer) with a business proposition: she has some ideas for new inventions and wants me to develop them. In general, I think she would have little or no concept about how to implement her ideas; in essence, she would identify market opportunities (problems) and I would define the solutions, or in other words, she would identify the purpose of the invention (what it does), and I would identify how it accomplishes that purpose. My question is, who would be the inventor in this scenario? My understanding is that the inventor is the person who conceives the idea, but conception (as far as patent law goes) requires a fully formed notion of the invention. I also understand that inventorship must be tied to the claims. So... my first guess would be that I would be the inventor, but I wonder if she might be a co-inventor? Any insights would be appreciated.

Also -- and this is probably outside the bounds of this forum, but I'll ask anyway -- is there any reasonable chance of defining an equitable a priori cost/profit-sharing agreement for such an amorphous situation, given all the variables, including cost & time to develop, cost to patent, marketing strategies, business options (licensing, outsourcing, self-producing, etc.), and given that we don't know what the ideas are beforehand? The only approach I've come up with so far is that we use a non-disclosure agreement, she presents each idea, and then we work out an equitable arrangement on a case-by-case basis. Anyone have a better approach?