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 41 
 on: 05-21-18 at 06:42 am 
Started by ralphael - Last post by ralphael
Thank you.

Quote
As far as how much to disclose up front, they'll want a general idea of the field of the invention in order to check whether you are doing something within the areas they've worked on for others.  After that, they'll decide whether or not they can, and want to, work with you.
I see.
Well, I think this is all I needed to know.

 42 
 on: 05-21-18 at 06:02 am 
Started by ralphael - Last post by MYK
I think I am sure on this but just to be clear, the invention does not have to improve upon prior art, just achieving the same result differently should be sufficient, yes?
Yes.

 43 
 on: 05-21-18 at 06:02 am 
Started by ralphael - Last post by MYK
Thanks. Any chance USPTO has a list of patent attorneys and agents or firms rather than a search form?
You could just leave the form blank and look at all the results.  There are probably less than 100,000 listings.  Probably at least 40,000 of them are still active.

As far as how much to disclose up front, they'll want a general idea of the field of the invention in order to check whether you are doing something within the areas they've worked on for others.  After that, they'll decide whether or not they can, and want to, work with you.

 44 
 on: 05-21-18 at 04:37 am 
Started by ralphael - Last post by ralphael
Thank you.

I think I am sure on this but just to be clear, the invention does not have to improve upon prior art, just achieving the same result differently should be sufficient, yes?

 45 
 on: 05-21-18 at 04:35 am 
Started by ralphael - Last post by ralphael
than you.

Do I have the right idea that I shouldnt provide my invention to a practicioner unless he/she decides to work with me to not risk giving the invention away, or does it not matter as they are legally required not to discolose any invention presented to them even if the presenter is not legally their client yet? Or should I not present the invention for other reasons?

Related question: at which point am I considered their client? A formal written contract is required or any written agreement via say emails is also sufficient to gaining that status?

 46 
 on: 05-21-18 at 04:25 am 
Started by ralphael - Last post by ralphael
Thank you for all the valuable information.
Attorneys are rarely subject-matter experts in the narrow field of the invention and often do not know the technological landscape as well as the inventor does.  Left to their own devices and with scant disclosure to work from, attorneys may produce drawings and descriptions the inadequacies of which do not become apparent until prosecution, by which time it is too late to cure the deficiencies.  Good attorneys recognize these deficiencies during the drafting process and try to squeeze more detail and explanation out of the inventor prior to filing, but everyone is saved time if this work is done prior to the start of the practitioner's work.
Can you please tell me if by attorneys you are also referring to agents? if not please explain why what you explain applies to attorneys only.

And this may be a silly question but I am new to this, do the practicioners make drawings themselves if not provided by the inventor? I assumed this was a job for someone else.

An inventor presenting claims to an attorney is fine, but the inventor shouldn't be upset if the attorney redrafts the claims or throws them out and starts over.  The legal end of things is the attorney's domain, and if properly informed about the prior art and the invention, the attorney is going to take it upon himself or herself to draft claims that secure as broad protection as the inventor is entitled to.

Likewise, an inventor should not be disappointed if a practitioner whittles a history/background section down to almost nothing.  The landscape of the prior art is important for drafting disclosure and claims that get over the prior art, but a good practitioner knows that it is foolhardy to waste ink in the written description making a lot of admissions about the state of the prior art.
No problem by me. As long as it's a patent in a grantable form there's no ego on my side, the reason I want to get my invention patented is I just don't want another patent troll patenting the same thing sooner than me then refusing to let me work on the same invention and ultimately forcing me to drop all my work. Happened before and I was forced to think of a different solution to achieve the same result.

But if I disagree with the practicioner whether a part in the claim or history section should be omitted not from emotional or pride related reasons but objectively believing it is needed and I can provide my reasoning, should I present my concerns to him/her, or is it in this field concidered rude and unrespectful and questioning their professionalism?


Quote
Inventors who have not been through the patent prosecution process before, and particularly those from academia, can be prone to doing a lot of hand-waving, eliding over crucial detail that they expect a person skilled in the art would understand.  The applicant won't want to be in a position of trying to prove such knowledge or universal understanding during prosecution, so it's preferable if everything that can be clarified in the written description is clarified, by the inventor, prior to the practitioner taking things over to draft the application.
I take from this should risk providing too much, possibly unnecessary info to the practicioner as to not risk providing not enough, rather than trying not to burden the practicioner with very long paragraphs at the risk of omitting some details, right?

 47 
 on: 05-20-18 at 09:43 pm 
Started by Weng Tianxiang - Last post by Weng Tianxiang
Hi smgsmc,

1. I have decided to accept your claim method and have finished the first 2 claims' modifications.

2. Your comment is correct and I really have a trend to do what you say: "You seem to want the conditional, not because it is necessary, but because it leads to a more compact claim set. "

3. The reason I repeatedly ask the same question on "if" and "when" is that I found many more "if" words, exactly 8 "if" times, in my claims that lead me to want to get the final unified solutions forever on how to avoid using "if" word completely in claims.

4. Your example wording is very instructive, valuable and I will follow your advice in my next 10 or more application filing that cannot be learned from any books and googling:
" upon determining that the measured room temperature is greater than the first reference room temperature, turning on a room chiller; and
    upon determining the measured room temperature is less than the second reference room temperature, turning on a room heater."

5. I also will follow mersenne's comments: add "first time and second time". But I don' really understand why "first time and second time" is so important and relevant that it would lead to some penalty without them?

6. I have carefully studied the paper "Beware of Conditional Limitations when Drafting Patent Claims", http://www.ipwatchdog.com/2017/08/28/beware-conditional-limitations-when-drafting-patent-claims/id=87242/

And my conclusion is: the paper conclusion is misleading and it has nothing to do with "if" wording!

smgsmc,
I would ask a question: if the patent wording were changed using your "Upon...", the patentability problem would disppear?

No! I don't think so.

Here is the reasoning from PTAB:
The Board found that the method contained “several steps [(specifically steps D, E, and F)] only need[ed] to be performed if certain conditions precedents [were] met.” Id. at 6. The Board reasoned that if the determining step (step C) is not reached then the “remaining method steps” (steps D, E, and F) did not have to be performed. Id. at 9. Accordingly, it was not necessary for the patent examiner to show that both paths of a conditional limitation were anticipated or obvious over prior art. Id. The examiner had to show that only one path was anticipated or obvious. Id.

In another words, if you change "if" to "upon", 2 process paths still exist and one falls into prior art that leads to unpatentable!

In my a non-professional explanation for BRI (good indicator to check what should be paid attention to!):
Check every possible process path generated by "if" or equivalent wording, if one path falls into prior art, the application is unpatentable!


I think that Blueroger's comment about no patentable weight for a step if there is a "if" word, not because "if" itself, but because "if" word leads to a short cut path that enable Examiner to fully ignore the step with "if" wording without any harm. Most importantly, the examiner had to show that only one path was anticipated or obvious.

Thank you.


 48 
 on: 05-20-18 at 08:59 pm 
Started by ralphael - Last post by Robert K S
If you start cold-calling attorneys and a lot of them turn you away or pass you off to other attorneys they recommend who turn out to be dead-ends, don't take it personally.  Some of them just won't take independent inventors, preferring to do business with repeat clients who will bring them a lot of business; others may already have a lot of work in your technology field and don't want to create conflicts of interest with existing clients.  (These motivations for blowing you off are not mutually exclusive.)

If you just keep trying, you will find the practitioner who is the right fit for you.  I agree with the advice given above that you will find it more cost-effective to go with a practitioner who does not reside in one of the larger or more expensive cities in the U.S.  Particularly stay away from New York, L.A., Boston, Chicago, the Bay Area (San Francisco and nearby cities), and most other East Cost cities.  There are plenty of great attorneys and agents in the Midwest whose costs of living, and thus legal fees, are lower.

 49 
 on: 05-20-18 at 08:46 pm 
Started by fb - Last post by fb
Any experience with deferring examination for up to 3 years, by using form PTOSB37 and paying the $130 fee?

First OA's seem faster now, and slowing them down would be helpful in many cases.

 50 
 on: 05-20-18 at 08:33 pm 
Started by ralphael - Last post by Robert K S
In general, the more material you can provide your practitioner, and the better you can explain why it is distinguished over, and preferably an improvement over, the prior art, the stronger the patent you will end up with.

Attorneys are rarely subject-matter experts in the narrow field of the invention and often do not know the technological landscape as well as the inventor does.  Left to their own devices and with scant disclosure to work from, attorneys may produce drawings and descriptions the inadequacies of which do not become apparent until prosecution, by which time it is too late to cure the deficiencies.  Good attorneys recognize these deficiencies during the drafting process and try to squeeze more detail and explanation out of the inventor prior to filing, but everyone is saved time if this work is done prior to the start of the practitioner's work.

An inventor presenting claims to an attorney is fine, but the inventor shouldn't be upset if the attorney redrafts the claims or throws them out and starts over.  The legal end of things is the attorney's domain, and if properly informed about the prior art and the invention, the attorney is going to take it upon himself or herself to draft claims that secure as broad protection as the inventor is entitled to.

Likewise, an inventor should not be disappointed if a practitioner whittles a history/background section down to almost nothing.  The landscape of the prior art is important for drafting disclosure and claims that get over the prior art, but a good practitioner knows that it is foolhardy to waste ink in the written description making a lot of admissions about the state of the prior art.

What the attorney is really going to appreciate are detailed drawings, preferably done PTO standards and fully computer-editable, and disclosure description that is completely clear and has already had all the vagueness/ambiguity bugs worked out.  The description should include definitions--to varying levels of specificity if necessary--and exhaustive examples of contemplated variations.  Inventors who have not been through the patent prosecution process before, and particularly those from academia, can be prone to doing a lot of hand-waving, eliding over crucial detail that they expect a person skilled in the art would understand.  The applicant won't want to be in a position of trying to prove such knowledge or universal understanding during prosecution, so it's preferable if everything that can be clarified in the written description is clarified, by the inventor, prior to the practitioner taking things over to draft the application.

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