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Seeking Prior Art Before Filing Patent?

Cliff posted more than 8 years ago | from the due-diligence-leg-work dept.

86

An anonymous reader asks: "I had a sort of out-there idea for computer hardware, and wanted to investigate design and manufacture. I figure the first step would be to patent the idea so that I am protected from it being stolen, while I confer with contractors about fabrication and circuit design. Does anyone know of ways to check for prior art, other than hitting up Google for something similar? I believe this idea is unique, but you never know what could have been out there, and I didn't know if there were any good resources on the web. Since the readership seems to be an inventive bunch, I think discussion on this topic may help more people than myself."

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Dont. (4, Insightful)

Atlantis-Rising (857278) | more than 8 years ago | (#15136599)

Nobody else does- why seperate yourself from the crowd!?

Re:Dont. (3, Informative)

deanj (519759) | more than 8 years ago | (#15136614)

I agree here with this, as long as you don't have to spend a ton of money to get the thing filed. Otherwise, make your best effort and file.

Also, there are going to be a TON of people here that tell you NOT to file. Don't listen to them. This is your only way of protecting your idea that has legit legal recourse if someone infringes.

Re:Dont. (1)

wsherman (154283) | more than 8 years ago | (#15138779)

I figure the first step would be to patent the idea so that I am protected from it being stolen,...
Also, there are going to be a TON of people here that tell you NOT to file. Don't listen to them. This is your only way of protecting your idea that has legit legal recourse if someone infringes.

One problem with using language for physical property for ideas is that introduces considerable ambiguity. When physical property is "stolen", two things happen: the owner no longer has the property and the thief now has the property. Because ideas can be shared, these are separate: there is the issue of being able to use your idea yourself and there is the issue of preventing other people from using it.

If all you want to do is make sure that you can still use your own idea then a patent is not the way to go. Instead, you just need to tell as many people about the idea as possible in contexts where it is clear that you are the one telling people about the idea (that is, don't do it anonymously). Ideally you would publish it in a major journal but even just putting up a website precisely describing the idea would be a good start.

On the other hand, if your goal is to prevent other people from using your idea because you want to make money by leveraging a monopoly on your idea then a patent is the way to go.

It sounds like you are hoping to make money so patenting is the way to go for you but, particularly for scientist who are motivated by a desire to improve the world, this is a distinction that is important to be aware of.

Re:Dont. (1)

jizmonkey (594430) | more than 8 years ago | (#15140761)

f all you want to do is make sure that you can still use your own idea then a patent is not the way to go. Instead, you just need to tell as many people about the idea as possible in contexts where it is clear that you are the one telling people about the idea (that is, don't do it anonymously). Ideally you would publish it in a major journal but even just putting up a website precisely describing the idea would be a good start.

That works in theory for blocking patents on your idea, but in practice it doesn't because the patent office won't find it when they're doing a prior art search for another patent. At least if you file for a patent (A) they're likely to find it because their prior art searches rely mainly on patents and patent applications, not Google (and there's too much garbage on Google for them to ever find your paper anyway) and (B) you can file for an interference if someone else does manage to get a patent that overlaps with your earlier patent.

Second, this question was about manufacturer misappropriation, in which case the problem isn't that they file for a patent and "rip you off" out of getting your own patent, it's that they will make money selling the product you told them about, and without you having your own patent there's not a damn thing you can do about it. Making your idea in the public domain will ensure you never see a dime of royalties. If you're going to a manufacturer, make sure you have a patent first and tell them about it. They won't be tempted to "rip you off," they won't be scared that you will bring an expensive and hard-to-decide-correctly state law case and everyone will be sleep easier at night.

Lastly, even if you do publish your prior art, you'll never find a contingency fee lawyer to defend you against a bogus patent, so it's one step away from being useless. Contingency fees only work on the plaintiff side, or where there is a fee recovery statute, and patent law almost never awards attorney fees to the winner.

Re:Dont. (3, Insightful)

TubeSteak (669689) | more than 8 years ago | (#15136960)

Don't file the patent?
Or don't seek prior art?

If it's the first, then you're entitled to your opinion.
If it's the second, I've only got two words: Due Diligence.

Find a patent attorney who's involved in computer technology & hire them to do the search. Getting a patent done is like going to court: sure, you can represent yourself, but it isn't a good idea.

Re:Dont. (0)

Anonymous Coward | more than 8 years ago | (#15137367)

The key is not just "Don't" but more specifically "Don't do it personally". Like the parent suggested, hire a real patent lawyer if you can at all afford it. However, never look at the patents yourself to the extent possible. With the way the system works, you're asking for trouble.

I work for a large company, and we're pretty much on standing orders to never read any patent for anything because of this. You don't gain anything by looking, because a lay person is not considered qualified to decide if their invention is covered by a patent. However, you can be found liable for willful infringement if you have looked at the patent, even if you think it doesn't apply when you look at it. It's amazing how screwed up the system can get.

Re:Dont. (1)

Peteee (945896) | more than 8 years ago | (#15137969)

Tell me your idea and I'll do a search for prior art :)

Try specific news and portal sites, plus USPTO (3, Insightful)

xanderwilson (662093) | more than 8 years ago | (#15136607)

I'd search gizmodo, engadget, and Boing Boing, as they often post "out there" examples of hardware (I'd imagine you already searched the archive of Slashdot). Also the US Patent office has a search on it and you can search by keywords, like "touch screen," "handlebars," "vibration," and "chocolate" (no, I won't tell you what I'm working on either...).

Alex.

 

Re:Try specific news and portal sites, plus USPTO (3, Funny)

stinerman (812158) | more than 8 years ago | (#15137031)

"handlebars," "vibration," and "chocolate"

Sounds like a fine night at home with the wife!

Re:Try specific news and portal sites, plus USPTO (1)

xanderwilson (662093) | more than 8 years ago | (#15137908)

Yeah, I'm afraid I'm going to need you to sign an NDA...

Alex.

Re:Try specific news and portal sites, plus USPTO (0)

Anonymous Coward | more than 8 years ago | (#15140549)

Sounds like a fine night at home with the wife!

You must be new here...

Re:Try specific news and portal sites, plus USPTO (1)

damionfury (891821) | more than 8 years ago | (#15137479)

xanderwilson said:
"no, I won't tell you what I'm working on either..."
Ah, but we've all figured out that you're working on chocolate handlebars with touch-screen vibration control...you sick sick f*$k! :P

Re:Try specific news and portal sites, plus USPTO (1)

3D-nut (687652) | more than 8 years ago | (#15137731)

There are also Patent Depository Libraries scattered around the country, that have search tools that are unavailable on the web. I suppose that they are mostly in large cities. The USPTO website probably has a list of them.

File the patent (5, Insightful)

SlappyBastard (961143) | more than 8 years ago | (#15136613)

But don't bet on it ever having real value.

The truth is, even if your patent is approved, the teeth of patent is backed by your ability to take it into court.

While it is nice to hold it as a property with the possibility of transfering it in the future (to someone who CAN defend it in court), it is not a hands-down defense of your idea.

Your idea had better be able to make it to market with quality backing by you. If that isn't there, who cares about a patent?

For the price, if you're sold on the idea, skip the BS and just patent it already.

Re:File the patent (1)

ananamouse (943446) | more than 8 years ago | (#15137734)

>But don't bet on it ever having real value.

See below

>The truth is, even if your patent is approved, the teeth of patent is
>backed by your ability to take it into court.

I have learned something else about patents that make them valuable and that is while one patent may not be helpful, a cloud of patents surrounding an area of technology can be quit useful in negotiations with corporations that have big legal staffs. If you are an individual with one patent that is one thing. If you are part of mega-conglomerate and have 40 patents specific to a marketable product or service you can negotiate with you competition and maybe even B.S. your clients.

Attorney (5, Informative)

GigsVT (208848) | more than 8 years ago | (#15136628)

You can search a list of all registered patent attorneys in the US here.

http://www.uspto.gov/web/offices/dcom/olia/oed/ros ter/ [uspto.gov]

This is pretty much the only valid answer to this question, so we might as well shut the story down now.

Re:Attorney (1)

Rydia (556444) | more than 8 years ago | (#15136715)

Parent needs to be modded up. IP lawyers spend years learning how to patent search and identify claims and prior art. There is no substitute.

Re:Attorney (1)

Z0mb1eman (629653) | more than 8 years ago | (#15136797)

Wouldn't you want to get as much of the obvious searching as possible out of the way BEFORE you shell out the hundreds or thousands of dollars for a patent attorney? If it's obvious an idea won't fly and it's something I could find out for myself, I sure wouldn't want to spend the $$ for someone else to tell me that. I'd only want to spend the money to be told it can't work because of something I COULDN'T find by myself, or to confirm my suspicion that I can patent it.

Re:Attorney (3, Informative)

mdfst13 (664665) | more than 8 years ago | (#15137002)

One of the problems that arises is that the very act of searching can increase your legal liability if you are ever found to infringe on someone else's patent. If you pay a patent lawyer to search for you, then you aren't tainted by the results of the search. The lawyer's search will only be relative to your patentable claims.

Inventors should never look at patents. That's why we have lawyers. Lawyers act as an important abstraction layer in the process.

To try to give a concrete (albeit abstract) example:

You have a process that involves method A, which you think is patentable.

Your process also requires method B, which you think is too obvious to be patentable.

Someone has a patent on B.

1. If you search for stuff related to A but find B, you're now screwed. You can't proceed without purchasing a license for B.

2. If you hire someone to search for you, even if they find B, they will ignore it as irrelevant to A. They file a patent application, noting prior art. You can later amend the application if necessary.

Even if method A infringes on another patent, it is still possible to proceed. The buyer of your patent can purchase licenses for the prior art for method A as well as the license for method B. You get paid for your work.

Not the way it has to go down (1)

hackwrench (573697) | more than 8 years ago | (#15137157)

IF Notfound A then GOTO PatentAttorneySearch ELSE GOTO SavedMoneyOnPatentAttorneyAndAbort

Re:Attorney (1)

Znork (31774) | more than 8 years ago | (#15137287)

"Inventors should never look at patents."

Of course, that also negates much of the stated purpose of patents, as they accomplish no dissemination of knowledge or repository to build upon, but rather serves only as a registry of landgrabs.

"Lawyers act as an important abstraction layer in the process."

Frankly, I'd suggest that the lawyers _are_ the process, and in fact that any innovation has become secondary and redundant. Lawyers can handle the application filing on their own, translating random ideas into patent legalese, sit back and sue.

Re:Attorney (1)

smallfries (601545) | more than 8 years ago | (#15137928)

I think the point that you are missing is that the dissemenation of knowledge is not to other inventors. The dissemination occurs because company A makes some product, company B figures they can make it cheaper, and the patent serves as dissemenation of the knowledge from A to B. The landgrab that you refer to, is making sure that company A gets paid for their original idea. Inventors don't generally read patents, they study problems and play with ideas.

Re:Attorney (1)

John Newman (444192) | more than 8 years ago | (#15137342)

1. If you search for stuff related to A but find B, you're now screwed. You can't proceed without purchasing a license for B.

2. If you hire someone to search for you, even if they find B, they will ignore it as irrelevant to A. They file a patent application, noting prior art. You can later amend the application if necessary.

Even if method A infringes on another patent, it is still possible to proceed. The buyer of your patent can purchase licenses for the prior art for method A as well as the license for method B. You get paid for your work.
If you are a lwayer, please help me understand the distinction here. I see two possibilities. First, using a lawyer is advantageous because he doesn't understand the subject matter, and so will either ignore or misinterpret the significance of B. But this ignorance of the subject won't have any significance consequences down the road, because he's a lawyer. Second, using a lawyer is advantageous because he'll talk your licensee into also licensing B, while if *you* had to talk your licensee into also licensing B, you'd be screwed.

Either way, I don't get it. What does involving a lawyer provide, aside from (useful?) technical ignorance and a target for blame?

(Note on "1", to clear up an ambiguity in your logic - you can most certainly proceed with a patent without licensing dependent methods that have already been patented. You can freely patent A. You can license the patent for A. The only thing you cannot do is commercially develop A, without first licensing B. Whether a lawyer is involved or not is irrelevant to the requirement, or lack thereof, of licensing B.)

Re:Attorney (3, Informative)

dtmos (447842) | more than 8 years ago | (#15137640)

IANAPL, but I have spent several dozen years talking to patent attorneys on professional matters, so I'll answer the question anyway. Patent attorneys and agents are encouraged to correct any errors.

In the US, those that hold patents are entitled to sue for damages (e.g., payment for lost sales) resulting from someone infringing on a patent. However, there is an element in US patent law little-known outside the legal profession: If the infringer can be shown in court to have *knowingly* infringed (i.e., known of the patent yet infringed anyway), the patent holder is entitled to sue for triple damages. People attempting to file a patent are therefore frequently advised not to do patent searches, because if they are later sued over some related patent and evidence of their knowledge of the related patent exists as a result of this search (perhaps obtained via the discovery process prior to a trial), their potential losses are three times as great as they would be otherwise.

The use of an attorney, as the GP suggested, provides an abstraction layer to prevent this potential increased liability. The attorney can take the inventor's invention, do a patent search and advise his client accordingly. Since any professional communication between attorney and client is not subject to the discovery process, the client is protected against the potential triple-damages threat whether or not the client is made aware of the prior patent.

In my experience, attorneys will do one of two things: If the prior art is absolutely dead-on, and the attorney can see no way to obtain a patent in light of the art, he will not tell the inventor of the prior art that he has searched (which frequently includes hundreds of patents), and simply advise the client that his invention is not patentable. More often, however, the attorney will give the client the prior patent(s) and the two will examine the relevant claims together, looking for ways that the client's invention is different from that claimed by the earlier patent. This is a team effort, combining the inventor's technical expertise with the attorney's legal expertise. Identified differences will form the basis of the new patent application.

Note that all this applies to prior patents. The inventor is free to search prior art in the form of technical journal articles, conference proceedings, etc. without penalty, AFAIK, and is frequently advised to do so, since the USPTO certainly will when the inventor's patent application is examined. Nothing is more annoying than going through the hassle of applying for a patent, only to have the examiner reject it based on a passing reference in a Byte magazine article from the 1980s (not that I would know what that was like).

[dtmos pauses to don his aerogel suit] The antagonism between /. denizens and patent attorneys has always puzzled me. Like people writing software, the main function of patent attorneys and agents is to write precisely, using terms and phrases the definition of which have previously been determined. A well-written patent application is not unlike a well-written (albeit uncommented) computer program: It has a specific form and internal structure; everything there has a specific purpose and nothing is there that does not have a purpose. Nothing is duplicated. Variables are given specific names the first time they are used, and the names are consistent throughout; definitions are precise (if general). Like computer programs, they are written in a pre-determined and defined high-level language and, like computing, much of the hassle occurs when two different entities interpret the code differently.

Re:Attorney. no! (1)

Mydron (456525) | more than 8 years ago | (#15138828)

Both you and your GP poster are wrong. The attorney you hire to write your patent does not provide a layer of abstraction that makes it likely that your attorney is going to go searching for prior art. You are right about triple damages, if the inventor knew about infringing prior art. However, the penalties for the attorney if they file a patent that infringes on known prior art are even more severe. A patent attorney is obligated by law to disclose any prior art. If they do not, they can be disbarred (the patent bar)!

Knowing about all prior art is the patent office's job! This is why you have to pay such high fees to the patent office. If you are an inventor it is assumed that you will be familiar with the state of the art and thus you can make a judgment about the likelihood of its novelty. But nothing more is necessary. The patent office is the ultimate authority on whether your patent is truly novel. If your patent is invalidated by an obscure reference in BYTE, it probably wasn't very interesting to begin with.

The only way you can have your cake and eat it too is to hire two separate attorneys: one to do the search and one to do the patent.

BTW, doing a patent search will often cost as much as writing the patent in the first place.

Re:Attorney. no! (1)

dtmos (447842) | more than 8 years ago | (#15141322)

Let's start off by saying that we are discussing the most advantageous legal behavior for honorable and truthful people to have, not some scam.

Of course both the inventor and his attorney are required to disclose all known prior art when filing a patent. Not only is it a legal requirement, but it's stupid not to do so. The USPTO has its faults, but its patent search system is not one of them. You waste your money (and the attorney wastes his time, for a first-action rejection without a response limits the hours he can bill) filing if you know of a preexisting relevant patent you do not disclose for, in my experience, the USPTO will find it if it exists. And yes, attorneys can and do get disbarred for such things.

I also agree that it is neither the inventor's nor the attorney's responsibility to perform prior art searches, that the inventor, as one of (presumably at least) ordinary skill in the art, is assumed to be able to make a determination of novelty, and that the patent office is the ultimate authority on what is, and is not, prior art. I note, however, that what we are discussing are informal searches, not those leading to a binding statement from the attorney; we are discussing those typically taken to avoid the somewhat awkward situation that arises in the office of the attorney when he presents the client with a first-action rejection with dead-on prior art.*

Finally, I agree that having two attorneys is a superior solution.

However, if you'll read my comment and the GP's comment carefully, you'll note that we are discussing a somewhat different point. In many fields (e.g., recombinant DNA), ordinary skill in the art cannot be obtained without knowledge of existing patents. We are discussing the situation in which you, as the inventor, are presented with prior art relevant to (future and as yet unanticipated) application B when filing for application A. The danger is that one leaves a paper (or electronic) trail showing that one was exposed to relevant art to application B even years earlier, in a different context. While the attorney is not assumed to be a subject matter expert, the inventor is (as you say), and it's a lot harder for the inventor to say that he was unaware of some relevant art in his field of expertise when he is presented with evidence that he has seen it.

I don't know how you feel about your memory, but mine is like a black hole, and while it's not at all impossible for me to see something yet later have no recollection of it, that's not a position I'd be comfortable taking in court. It's much easier to pay an attorney to be subject to that privilege--especially since he's not presumed to be a subject matter expert.
________
*Attorney: Well, your application was rejected because of Jones' patent. While he claims something completely different, he mentions in the specification something very close to your invention. The examiner says it would have been obvious to one of ordinary skill in the art to use Jones' teachings to produce your invention.
Client: I never can understand this legal mumbo-jumbo. What?
Attorney: Your invention is not novel. It's known in the art.
Client: Eh? I know the art. Jones never published anything in a journal. He's never manufactured his invention, and anyway it's completely different from mine. I've never seen this before.
Attorney: Apparently your knowledge of the art is not as good as you thought it was.
Client: This isn't the art. This is patents. I hired you because you have 20 years' experience in the field. Did you know of this patent before, and just took my money to write and file the application?
Attorney: Hey, look, you're the subject matter expert....
[Etc.]

Re:Attorney (1)

John Newman (444192) | more than 8 years ago | (#15138912)

Thank you. That was one of the most informative summaries I've read on the subject. There are still some things that seem to be constiutively confusing, though. Willful infringement seems only tangentially related to the patent process - because to be willful, you must have seen the prior patent, and you would likely only have seen it if you were doing a search for a new patent. Trying to patent a product that has already been patented won't get you sued for infringement (although your application should be rejected), but selling that product will. So I understand the point about abstraction and anonymization, but the extrapolation is that no one involved in developing or selling anything should ever look at the patent archive for any reason, lest they open themselves up to willful infringement suits. That's patently (sorry) absurd, since it abrogates the whole constiutional point of having a patent archive.
the main function of patent attorneys and agents is to write precisely, using terms and phrases the definition of which have previously been determined
This is surely true, but in most cases it must be easier for the inventor to learn the language than for the lawyer to understand the science and technology behind the invention. As your analogy suggests, scientists and programmers are no stranger to the precise use of specialized language. How much of the current patent morass is due to patents being written very precisely by people who understand imprecisely what it is they're actually writing about?

I realize I'm tiling at long-vanished windmills here, and I recognize the truth in the advice I received a short time ago that the only reason to file a patent is in order to sue someone - and ergo, a patent should be written by lawyers, for lawyers. But these disucssions, to me, just emphasize how little sense the current patent-lawyer system makes, with respect to the constiutional purpose of patents.

Re:Attorney (1)

Mydron (456525) | more than 8 years ago | (#15139903)

in most cases it must be easier for the inventor to learn the language than for the lawyer to understand the science and technology behind the invention.

If you survey the top IP firms you'll find that their attorneys typically have, at minimum, a BSc in the field that they practice in. More often they have an MSc or a Phd. Moreover in such firms it is usual that the work of all attorneys be reviewed by partners and senior attorneys who have practiced much longer than their three year JD/LLB would indicate. Be careful with how far you take your analogies... unless you expect that you can so easily master the language and knowledge that comes with such experience.

Re:Attorney (1)

John Newman (444192) | more than 8 years ago | (#15140572)

If you survey the top IP firms you'll find that their attorneys typically have, at minimum, a BSc in the field that they practice in. More often they have an MSc or a Phd. Moreover in such firms it is usual that the work of all attorneys be reviewed by partners and senior attorneys who have practiced much longer than their three year JD/LLB would indicate. Be careful with how far you take your analogies... unless you expect that you can so easily master the language and knowledge that comes with such experience.
Is this really true? I surveyed the partners at SeedLaw, a prestigious IP law firm in the Seattle area. Only 3 of 15 had PhDs, and four more had MS's. All were undergrad science majors, but an undergrad biology degree, at least, isn't considered a qualification for more than rote technical work (or further training). In any event, you're describing a different world than the one inhabited by the story poster. JD/PhDs with decades of experience don't come cheap - nothing that requires 10+ years of post-graduate schooling and apprenticeship comes cheap - so if you can afford to retain a firm staffed by such wonders, you're a corporate entity with funding to burn. The invention content of the patent is secondary to the legal status it gives to sue and/or cross-license with similarly deep-pocketed corporate competitors. Heck, I imagine that the cost of filing and pursuing a patent with such a firm can easily exceed the average engineer's annual salary.

There are, for example, plenty of scientists who are not programmers, but who learn enough to adequately accomplish their scientific tasks. The results are rarely pretty, but often functional. Is the same not true for patents? Or should small fry not even bother to play this game? Is the only reason to apply for a patent to sue someone? Should patents only be applied for if the immediate stakes are high enough to justify spending obscene amounts of money on gold-plated lawyers, as a means to generating even more obscene amounts of money through legal action?

Re:Attorney (1)

dtmos (447842) | more than 8 years ago | (#15141347)

There are, for example, plenty of scientists who are not programmers, but who learn enough to adequately accomplish their scientific tasks. The results are rarely pretty, but often functional. Is the same not true for patents?
The analogy breaks down. The definitions and requirements of the legal "language" change over time, due to various court rulings and changes in the law, and one has to keep up with such things--and, like programming, subtle differences can have big differences in the outcome. I guess it's analogous to saying that the compiler changes it's interpretations over time :)
Or should small fry not even bother to play this game?
I would say that it depends on how much you depend on the result. You wouldn't have a professional scientist write the code your company depends on for its existence, so don't have an amateur write the patent your company depends on, either. On the other hand, if you're just patenting something that you think is cool, or will pad your resume, go ahead, but don't be surprised if it takes longer and is a bigger pain than you imagined, and realize that your odds of success are lower.
Is the only reason to apply for a patent to sue someone?
To be able to sue someone is the only legal reason. There are lots of personal or business reasons, though--the aforementioned padded resume is one. One can also patent something in a defensive manner--i.e., so no one else can patent it--then open the patent to all, royalty-free, if you're an altruist and you've just invented the water-to-gasoline conversion process or something.
Should patents only be applied for if the immediate stakes are high enough to justify spending obscene amounts of money on gold-plated lawyers, as a means to generating even more obscene amounts of money through legal action?
Um, no.

Re:Attorney (0)

Anonymous Coward | more than 8 years ago | (#15153411)

Heck, I imagine that the cost of filing and pursuing a patent with such a firm can easily exceed the average engineer's annual salary.

You might be surprised!

It depends heavily on the nature and complexity of your patent -- in general though, the more novel the easier it is to write. Software patents from a top tier firm will run you anywhere from 8000 to 20000 in fees, plus extra for the PTO fees, plus maybe extra for subsequent prosecution (responding to the PTO, etc).

Re:Attorney (1)

cgenman (325138) | more than 8 years ago | (#15140170)

The antagonism between /. denizens and patent attorneys has always puzzled me. Like people writing software, the main function of patent attorneys and agents is to write precisely, using terms and phrases the definition of which have previously been determined. A well-written patent application is not unlike a well-written (albeit uncommented) computer program:

The difference is that when we do our job well, your job gets easier. When patent attorneys do their jobs well, our jobs get a whole lot harder.

And an uncommented computer program is the anthesis of a well written one.

Re:Attorney (1)

dbIII (701233) | more than 8 years ago | (#15140998)

The antagonism between /. denizens and patent attorneys has always puzzled me.
Good point - we should be more annoyed at those that drafted the faulty legislation or those that set policy in the USPTO.

It's a simplistic attitude, but for many practical purposes it's just a revenue collection agency and exposed to problems like "rimming" - ie. the Blackberry patent dispute.

But how can willful infringement be established? (0)

Anonymous Coward | more than 8 years ago | (#15140770)

I've never understood that part of the law.

Suppose I've got a patent on a revolutionary new design for toilet seats, another company has copied it closely enough to establish at trial that they've infringed on my patent, and I suspect their infringement was willful. How would I ever go about proving it was willful?

For all I know, they could have sent an engineer on a trip to Canada to find a coffee shop with "free" internet access for paying customers so he can hunt online for interesting patents his company can "harvest".

The guy hunts around until he finds a busy coffee shop without any security cameras, walks in and pays cash for his grande americano with two extra shots of demi-caf espresso, a splash of almond-flavored syrup, three packets of artificial sweetener and room for cream. Then he sits down at the Pentium III with the 12" monitor running Windows 95 over in the corner and starts searching.

As luck would have it (his, not mine) he finds my patent. He's so excited he spills his coffee on the keyboard but still manages to print out a hardcopy on the daisy-wheel printer with the nearly worn-out ribbon, and pays the 50-cent/per page fee at the counter with a roll of quarters. Feeling quite satisfied with himself, he buys two tacky-looking "made for American tourists) jugs of Maple syrup in the duty free store at the airport (one for his Mom 'cause he still lives at home and the other for him 'cause the only thing he knows how to cook is French toast and his Mom is always out playing Bingo at the church on Saturday nights), a copy of Wired magazine to read on the flight, and flies home.

He may be a bit of loser in the eyes of girls he wished he could date, but he's damn smart and works for Steve Balmers's 2nd cousin (no, not that one, the one on his father's side, you know, from Boise Idaho). Between the two of them they make sure no one else knows about their "discovery". They don't mention it in email, on the phone, in elevators, restaurants and so on. They agree to store the single hard copy they have of my patent in the engineer's personal safety deposit box where he keeps his porn so his mother won't find it.

Meanwhile, back at the office, everyone thinks the engineer has come up with this great new revolutionary design for toilet seats on his own. And you can't blame them, 'cause after all, I never did manage to produce one so it's not like they would have ever seen it advertised in one of those in-flight magazines or on that satellite cable, 24-hour, "All News, All the Time, Live from Kenya" station that got that great review from Diane Reems on NPR that everyone is still talking about.

He does, however, worry that I might recognize the design when his company brings their product to market, so he introduces some minor, but legally insignificant, variations and changes (for instance, his come in five fruity flavors whereas the hand-drawn diagram included in my patent just shows an example in an ugly shade of beige) in the hopes of throwing me -- a legally naive, easily confused and even more easily intimidated, unemployed, middle-school drop out and self-styled "inventor" -- off his tracks.

Once their product is in production, he goes to his safety deposit box, retrieves his single hard-copy, drives a couple of hours into a rural, largely uninhabited neck of his woods, pulls over and takes a leak at the side of the road, halls a portable, "diamond-cut" shredder that was on-sale at Office Mix out of his trunk, plugs the thing into the cigarette lighter in his car, shreds the hard-copy, burns the remaining scraps, destroys the shredder (he always did want to live out that scene for the movie Office Space), dumps what's left into a nearby lake, and drives home.

A couple of months pass by and, in a completely unrelated sequence of events, the engineer and his boss begin a torrid office romance, which, as these things are known to do, eventually becomes a widespread secret en-route to becoming public knowledge on account of them getting caught "doing it" in the restroom when the got hammered at the Company's annual "Season's Greetings Party". And it's a personal tragedy for the two of them because they were both raised amidst such intense homophobia that they subsequently become severely depressed and take just enough Prozac to get to the point where they can manage to commit suicide together -- Viking-style, each simultaneously cutting the other's throat with a crude, heavy sword that's way inelegant by the standards of mid-16th century "honor" duels, but effective enough to get the job done, albeit leaving a heck of a mess for the poor maid trying to support three kids on her working the nightshift at Motel 6 after her husband got arrested for statutory rape (he says the girl lied about her age, but even if she believed that it wouldn't have made her the least bit likely to have forgiven him).

Meanwhile, my self-important older sister -- who's constantly complaining about me living for free in her apartment on account of how I'm a slob who doesn't believe in personal hygiene or picking up after myself, snores loudly at night and doesn't respect her privacy -- sees the company's new toilet seat for sale at The Great Indoors (she doesn't own a home or even a condo but she says its a good place to shop for guys with marriage potential). She immediately contacts her boyfriend, the world's greatest patent attorney who owns a blood-red Porsche 911 he won't let me drive (I think he doesn't like me) and the two of them are determined to sue on my behalf so I can finally move out of my sister's apartment and they can have sex without me putting an empty glass against their bedroom wall, 'cause I'm a virgin and way curious about sex and want to learn what it is in case I ever have it.

Now, the question I have is how are they ever going to find any evidence that the infringement was willful?

And lest you think the circumstances I've described are unlikely in the extreme, they're at bottom nothing more than a gratuitous embellishment of serious possibilities included here in a shameless and likely transparent attempt to entertain someone long enough that they might be so kind as to answer the questions, which I've always wondered about and it's driving me nuts.

Thanks in advance,

Drew Bumlett Jr.

"The night was moist..." (0)

Anonymous Coward | more than 8 years ago | (#15141306)

Great... all we needed was a film noir subgenre on IP law.

Re:But how can willful infringement be established (1)

Savantissimo (893682) | more than 8 years ago | (#15144800)

LOL - Having worked in a law office (non-IP), your story is just about how clients usually tell their tales of woe when they first come in - except yours didn't have quite enough irrelevancies and had a bit too much useful information.

IANAL but I believe their infringement becomes willful as soon as you or your lawyer give them notice of the subject matter of your patent and the how their product infringes.

Bottom line, though - if they have lawyers and you don't, you lose. Even if you have lawyers AND you win the case AND actually collect on the judgement a few years down the line, if the court doesn't grant judgement for your legal expenses (and they generally don't) then you are still going to end up owing your lawyers money when the whole thing is done unless the judgement collected is in the millions. You won't get thet that kind of judgement unless the company you sued has sold more than $20M worth of your toilet seats. BUT if they managed to sell that kind of volume before you sent your letter informaing them of infringement, or if you can't find or can't pay a lawyer to file suit on your behalf, then you are in danger of losing your patent for failure to defend it.

Furthermore, obtaining a patent in the first place was just a license to get into this kind of mess.

Re:Attorney (1)

themusicgod1 (241799) | more than 8 years ago | (#15137214)

"so we might as well shut the story down now."
Nah. Let's suggest for him to go to the Patent Commons [patentcommons.org] once he's finished, and *then* shut the story down.

Re:Attorney (1)

alphaFlight (26589) | more than 8 years ago | (#15137776)

Another way of looking at this issue is by considering the economics of career specialization. Most people specialize in some discipline. By becoming a specialist, one can increase their effectiveness by gaining a deep understanding of the problem domain. This has the secondary effect of allowing a specialist to conduct a task as a lower cost because there should be less learning/training involved. When someone gets bitten by the DIY bug it frequently means that they do not properly value the opportunity cost of handling a specialized task on their own. (Admittedly many people take on DIY projects just for the fun of learning something new)

So for your prior art search, you could hire a patent attorney or agent and pay them somewhere in the neighborhood of $500 to get a search report. It would probably take the attorney/agent (or his/her understudy) anywhere from two to eight hours to complete. Because this person has experience with patent searches, you will have the confidence that search report is accurate (not to mention the attorney's mal-practice liability if the report is flawed).

If you were to conduct the search on your own, you would not only need to learn the ins and outs of the PTO search site, you would also need to understand the precise language of patent drafting. It is widely acknowledged that it can take up to five years to become an expert at patent drafting. I'm in no way saying that you are not capable of learning these things. My point is that if you are a specialist in computer hardware, how could it ever be worth the opportunity cost to conduct the search yourself. And can you honestly say that your very first patent search will be of the same quality as that of a person who regularly conducts patent searches? Was your first computer program the same quality as your most recent computer program?

What for? (1)

ect5150 (700619) | more than 8 years ago | (#15136635)

Does any other company really search for prior art anymore? Granted, it might help... but you don't run across something obvious... go for it anyways.

Re:What for? (1)

penguin-collective (932038) | more than 8 years ago | (#15137754)

Yes, most companies that are serious about enforcing their patents search for prior art. Of course, when they find some, they don't just throw up their hands and give up, they start thinking about how they can get the patent even though someone else invented pretty much the same thing before.

File first, ask questions later (2, Funny)

CableModemSniper (556285) | more than 8 years ago | (#15136660)

What's the worst that could happen?

Re:File first, ask questions later (1)

penguin-collective (932038) | more than 8 years ago | (#15137749)

It could get invalidated very easily. It's much harder to invalidate a patent because of a piece of prior art if you actually cite that prior art in your patent (because the patent office is presumed to have actually looked at that prior art and determined that it's not relevant).

Re:File first, ask questions later (0)

Anonymous Coward | more than 8 years ago | (#15140703)

What are the odds anyone will actually fight their way far enough through this grotesque process (wasting their own money every step of the way) to actually get a judge to throw out your patent? You can easily offer a license to anyone prepared to do so, at far less cost to them and no uncertainty.

Before you spend another dime... (2, Informative)

HotNeedleOfInquiry (598897) | more than 8 years ago | (#15136681)

Re:Before you spend another dime... (1)

techno-vampire (666512) | more than 8 years ago | (#15136980)

It has everything you want to know and alot more.

What I need to know more than anything else is if P=NP. Will this book tell me?

Re:Before you spend another dime... (0)

Anonymous Coward | more than 8 years ago | (#15137223)

What I need to know more than anything else is if P=NP. Will this book tell me?

Yes, it's on page 237, just no-one has read that far yet and the author couldn't be bothered claiming the relevant Millennium prize for himself.

IP Law (1, Funny)

Anonymous Coward | more than 8 years ago | (#15136686)

Get an IP lawyer. Seriously. They don't get paid just to defend against SCO. They actually do, you know, IP law.

Um... (0, Redundant)

amcnabb (682951) | more than 8 years ago | (#15136771)

Hire a patent lawyer?

Isn't that what they're for?

Re:Um... no. (1)

Mydron (456525) | more than 8 years ago | (#15136793)

In general patent attorneys do not search for prior art. That's not their job. It's the patent office's job to know what's prior art. After all, they have years worth of patent applications sitting right in front of them -- many of them covering inventions that are still in the lab and aren't public knowledge.

A patent attorney writes a patent that covers your invention and potentially foreseeable implementations of your invention. A good patent attorney produces a document that is defensible in court. In otherwords, a document that threatens your competition's implementation of your idea and incites them to license your patent.

Re:Um... no. (1)

Rydia (556444) | more than 8 years ago | (#15136938)

Not true. Attorneys take courses in patent search, and the major publishers have tools to aid them in this. While it won't be a sure-fire thing, they would at least tell you what patents (if any) you could possibly be infringing, and if neccissary, defend your patent in court.

Re:Um... no. (1)

licamell (778753) | more than 8 years ago | (#15140636)

One of the key steps that a patent attorney partakes in is what is called Due Diligence.

From wiki: Due diligence (also known as due care) is the effort made by an ordinarily prudent or reasonable party to avoid harm to another party or himself. Failure to make this effort is considered negligence. Quite often a contract will specify that a party is required to provide due diligence.

Due Diligence in the patent world means doing checks for prior art.

Get a Lawyer (3, Informative)

Shihar (153932) | more than 8 years ago | (#15136826)

If you are serious about filing a patent, I would highly suggest consulting with a patent lawyer. Write up the patent as best as you think it should be, then go have a chat with an IP lawyer. They will be able to help you with wording it such that you grab up as large of a swath of IP as you can. Yes, a patent lawyer cost a few bucks, but it isn't like you need to higher them full time. You just need to consult with someone, get some information, then throw the finished product back to them so they can give it a once over.

If you are not terribly serious about this and just want to drop the $150 and get a patent, then at the very least go pick up a book on patentning. A lawyer is probably the easiest rout, but picking up a book is probably the cheapest. If you are serious and might want to try and make money off of this though, you really should talk with an IP lawyer. If nothing else, they can give you an idea of the overall cost before wasting time and money.

underpants (-1, Offtopic)

Anonymous Coward | more than 8 years ago | (#15136868)

U N D E R P A N T S

Inventor Services? (0)

ClamIAm (926466) | more than 8 years ago | (#15136876)

You see the ads on late-night TV, and of course they're probably full of crap. But these people might help.

sorry... (0)

Anonymous Coward | more than 8 years ago | (#15136879)

Since the readership seems to be an inventive bunch, I think discussion on this topic may help more people than myself

I have a great idea that can help you, but I've patented it. You can use it for $1,000,000. Please contact my lawyer.

No, seriously, don't. (2, Informative)

TheoB (859132) | more than 8 years ago | (#15136927)

Since people will sue you for infringement on the flimsiest of pretenses, you aren't really protecting yourself from the possibility of a lawsuit. On the off chance you see something similar to your idea which you dismiss as unrelated and you later get sued by the party who controls that idea, they can go after you for treble damages on the grounds of willful infringement. "But it isn't the same?" Doesn't matter: they're in a much stronger bargaining position when it comes to coercing you into a settlement.

There's a reason the legal departments of corporations order their engineers not to so much as Google for prior art. Hold yourself to the same standard; get yourself a patent attorney and let them take on the liability on your behalf.

(IANAL, but I deal with a lot of them. ;-)

Re:No, seriously, don't. (0)

Anonymous Coward | more than 8 years ago | (#15137060)

More basically put, a patent gives you the right to be sued. A copyright gives you the right to make customs and the FBI enforce your IP.

Don't Bother (1)

coaxial (28297) | more than 8 years ago | (#15137196)

Seriously. Don't bother. The patent system is a mess. You've probably already infringed on 5 patents just by creating whatever it is you say you've invented. Just patent it, and don't bother with the prior art. Paul Graham wrote about that in an article that previously featured on /. [slashdot.org] .

Re:Don't Bother (1)

LWATCDR (28044) | more than 8 years ago | (#15142218)

I would say exactly the opposite. The patent system is so messed up you almost have to file for one on any new idea. My company has started to file for several patents. Not so we can sue people but so people can't come and sue us! There was a huge law suit in our industry over a patent not long ago. Someone had gotten a patent on... Sending test over a communications line! You got that right they got a patent on the serial terminal! We had to file a "friend of the court" brief on it and gave evidence of prior art. The patent got thrown out of court. Now we patent just about everything we think we can just so we will not get taken to court! I have been fighting the idea of us doing any software patents but I may loose that battle.

Want the patent to be worth anythng? Hire a lawyer (4, Informative)

JoeShmoe (90109) | more than 8 years ago | (#15137333)

Patents are something that you would be an idiot to cheap out on. Patent searches are important not just to find out if what you are trying to patent has already been patented because 99% of the time, no kidding, it has. You can't find anyone who makes the damn thing, or anyone who's ever written about it, but if it's technology-related, then you're going to find that five years ago someone with deep pockets fired the patent shotgun at everything related to your idea. The real important to patent searches is that they can help you find specific claims that can coexist with all of the other patents out there. By avoiding the landmines you find in other patents, you can figure out something that is a real "gotcha" moment that qualifies as novel and non-obvious to the patent office.

Each patent is really a bunch of little patents called claims. Patenting something like one-click shopping may have dozens of claims related to the interface, the backend processing, the operation, etc. The more claims you have, the more likely that you patent will infringe and the claims will be reject. The fewer claims you make, the more worthless your patent as someone can easily engineer around it. Given the cost of a patent from a reputable source ($8000-$15000 as high as $50000 depending on number of claims) why bother if you only want to patent something trivial?

If you are cheap, but want some level of protection, get a patent pending. You typically draw up some diagrams and descriptions, then pay between $500-$1500 to have a patent mill or patent lawyer file a provisional patent. This gives you the ability to boldly put "Patent Pending" on your documentation and it gives you a reservation in the patent line. Then you go out, market your idea and hope that a) anyone who thinks of stealing will be discouraged by the risk that your patent is granted and you come back and screw them or b) the money you make marketting your idea can pay for the costs to get the real patent filed.

If you are willing to invest the money, then spend a good amount to get a thorough patent search by someone who's actually there at the USPTO and can go through everything they have, not just what as been digitized. With some legal analysis and comparision of the existing claims to your idea, you can figure out what is missing and concentrate your patent on that.

-JoeShmoe
.

You can do some google searches, or pay one of those patent mills $99 to run basically the same type of keyword search but that's really not going to give you much of a guide. The patent doesn't generally matter, it's the claims. If you are trying to get a utility patent on a widget, it's worth thinking...how can someone

where to search. (1)

kninja (121603) | more than 8 years ago | (#15137627)

Joe here had the first real comment worth reading (so far). You need to do a search, and the USPTO has a free search on their website that you can search both applications and granted patents. there are also databases like delphion, and perhaps you can find a university library with access to a service like that.

when reading prior art patents, you need to compare what you do to the claims of the patent, ignore the abstract and all of the text before it, just read the claims, and check if that describes your invention (or parts of it).

Good luck!

Re:Want the patent to be worth anythng? Hire a law (1)

Litsky (968753) | more than 8 years ago | (#15139646)

Good point. I had forgotten about the PPA (Provisional Patent Application). Using the forms on the USPTO site, I filed one myself as I continued to look for a good patent attorney. Total cost: $210. There's very little down-side to filing a PPA, except for the fact that the world gets to see your idea. HOWEVER, the filing of the PPA draws your legal line in the sand and establishes the date of your invention against all other claims - if, of course, your patent is granted. So VoteWord was officially out there in June of 2004 via a PPA, but the patent wasn't granted until this year.

To summarize the last few weeks... (1)

GWBasic (900357) | more than 8 years ago | (#15137462)

During the last week or so there were quite a few articles about patents on slashdot. Here're some points that stayed with me:
  • Most startups violate some patent. Getting sued at some point means you're successful. (Why would a patent holder bother suing you if you have no money?)
  • Having patents is important. It's helping Tivo!
Another point that I've heard in the past is that you can patent a non-obvious improvement of someone else's patent. If your device violates a patent, but also has patentable improvements, you are in a good position to negotiate. (For example, you can create a patent pool or agree not to sue each other.)

patent not necessarily the first step (2, Informative)

caliente3 (761165) | more than 8 years ago | (#15137660)

> I figure the first step would be to patent the idea so that I am protected from it being stolen...

For USA patent protection, you can file up to 12 months after the invention is first offered for sale or disclosed to the public. So it is possible to wait to see if the idea has some commercial merit before filing for a patent. You would lose the opportunity for international patents, but its my guess you can't afford those anyway. Another alternative is to file a provisional patent. That requires no prior art search, just a description of the invention. After filing the provisional patent, you have 12 months to file the acutal patent, plus additional extentions allowed by law. By using both a delayed application and a provisional application, you can end up filing the actual patent application 24 months after first public disclosure. Alternatively, if the provisional patent is filed prior to first public disclosure, it also protects your ability to seek international patents.

FYI, in the short term, use an NDA when working with anyone else to avoid public disclosure, which starts the clock on the various deadlines mentioned above.

Re:patent not necessarily the first step (0)

Anonymous Coward | more than 8 years ago | (#15153734)

I think the OP was suggesting was that his _idea_ would be stolen, which would imply that someone_else_ might file a patent.

Does "patent pending" status provide protection from someone else filing before you?

88754443

USPTO and a good patent attorney (1)

Litsky (968753) | more than 8 years ago | (#15137699)

Having just patented my voting-related invention (www.voteword.org) I can tell you that I spent a lot of time on the USPTO web site making sure I was the first person in that neck of the technology woods. I also purchased a relatively inexpensive book called "Patent it Yourself", which I had hoped would guide me through the process (and probably would've, if I had had more time) After running into those time constraints, I decided to ask around for patent attorneys. I'm very glad I did, because I found a good one and I'm now patented (Patent # 6991161 - woop!) and moving forward with the oh-so-much-less-fun part of it: marketing. In sum: time, time, time, time. And some money.

Re:USPTO and a good patent attorney (0)

Anonymous Coward | more than 8 years ago | (#15147910)

Your newly patented idea is only a partial solution to the whole problem. You've completely forgotten (or else had no idea) of the other half of the problem that secret ballots are to protect. That's to protect the system from vote purchasing/vote coersion.

With your system, you open up a perfect opportunity for vote purchasing/vote coersion.

Imagine a gang that wanted a particular local candidate to win. They could go into poor neighborhoods and round up folks under threat of violence to vote in the manner the gang wishes, and with your vode word scheme, the gang could verify exactly how their "delegates" voted, and punish those that did not vote properly.

Now, you might argue that one of these folks could just give the gang someone else's vote word after the results are out. But that's now how the gang would work it. The gang would demand the persons vote word as they exited the polling place, and unless you knew for certian that a different word would indeed be used, and would have voted the way the gang wanted, the voter has no choice but to go along.

Alternately, someone with deep pockets could "pay" individuals to vote in a particular manner, and in order to "collect" their payment, the individuals would have to give up their vote word as the exited thep olling place so that the purchaser could verify that they voted correctly before paying them their agreed amount.

Given the fact that you've failed to think through this other problem, I hope your idea shrivels up on the vine, dies an early death, and is never implimented, because a system were people can be coerced into voting a particular way, with proof handed to the "mob", or where votes can be easiely bought and sold, with proof of the voting direction, is at least as damaging, if not far more damaging, than an incorrect count.

Search the USPTO database here. (1)

Pigeon451 (958201) | more than 8 years ago | (#15137829)

http://patft1.uspto.gov/netahtml/PTO/search-adv.ht m [uspto.gov]

It may take a very long time to sift through all the related patents, but it's something you should do. For someone new to the IP game, it will take a long time to do your first one.

btw, trying to read all the patent gibberish written is laywer-speak will be difficult and irritating, if you're serious about your patent, you could just hire a patent laywer to do it for you, but that'll cost big money.

seeking prior art (1)

lrm (968763) | more than 8 years ago | (#15137877)

In response to your question regarding prior art, I would recommend a search before filing for a patent. The process of pursuing a patent is a time and money consuming endeavor. The patent office expects you to have completed a prior art search before filing for a patent. If your idea is struck down by the patent office, you could end up wasting hundreds, if not thousands, of dollars on filing fees. Conversely, a prior art search can be fairly inexpensive. Depending on the field being searched and how many similar items are uncovered by the search, it could cost as little as $100. A good patent searcher can look at your invention disclosure and give you an estimate of how much the search will cost. A reputable patent searcher is bound to confidentiality and will sign a confidentiality agreement if you choose to execute one. I have been doing prior art searches for 16 years and have helped small inventors and large companies save hundreds of thousands of dollars in filing fees. I'm not a patent attorney and this posting does not constitute legal advice or an actual estimate for services. Hope this helps.

start at the uspto (1)

josepha48 (13953) | more than 8 years ago | (#15138640)

go the the uspto gov web site and do searches for your idea. pay particular atention to the claims as that is what is used to determin prior art. look at the abstract second and the actual text third.

Then search google or your favorite search engine and lastly hit the library and search for publications that may contain this type of thing that you want to patent.

lastly, if you find nothing, then get your money togeather and file a patent.

how to find prior art (1)

reversible physicist (799350) | more than 8 years ago | (#15138644)

I'm not a patent attorney but I've filed about 40 patents on technology I've developed, written mostly by myself with a patent attorney just doing a final pass over the claims. There is a real art to writing good patent claims and if you're new to it you should get some professional help with at least that part (in addition to reading up on writing patents). In some ways a patent is like a computer program and the claims are the actual code -- the rest is just comments that help make the claims understandable. A court battle revolves completely around the claims. The battle is over whether the defendant's technology "reads" against the plaintiff's claims, and whether the relevant claims are valid, in light of ealier technology ("prior art").

A good prior art search makes your patent much more valuable and you are the best person to do that search, since you understand the subject area. There seems to be a common misconception that other patents are the main place you need to look. In my experience, the earliest prior art is almost never in other patents. For example, the best prior art for hash-based object naming I've seen is in a program called FWKCS that was used with a few BBS systems in the late 1980's. The patents in this area were all filed starting in the mid-1990's. Online mailing lists are a good source of pointers to programs and also descriptions of ideas that themselves constitute prior art, since they are public. Do some searching in Google Groups (formerly usenet groups) and in the archives of specialized mailing lists that are relevant to your topic (e.g., www-talk for early Internet-related ideas).

Academic papers are often an excellent source of prior art. Many papers are available online for free though citseer (http://citeseer.ist.psu.edu/ [psu.edu] ). You may also want to join the IEEE and ACM to gain access to their rather complete databases of all their published journal articles. Finally, you should also search in some patent databases. The USPTO has full text search online at their site (https://sportal.uspto.gov/secure/portal/efs-unreg istered [uspto.gov] ). Subscription to a search database such as Delphion (http://www.delphion.com/ [delphion.com] ) is relatively cheap if you only subscribe for a month or two. Note that the important date for a patent is its priority date, which is when it was filed or when an earlier application it is based on was filed. In the US, applicants are allowed to present proof in a court case that they actually had the idea up to a year before their priority date, so you may need to find art a year older than a filing date to be able to argue that a claim is invalid.

Finally, remember that you're searching for art relevant to claims (usually the broadest claims in a patent). Patents are not invalidated, specific sets of claims are. The more you understand what the most essential differences are between what you've done and what others have done before you, the stronger a set of claims you and an experienced patent writer will be able to put together. Good luck!

Re:how to find prior art (1)

joe_n_bloe (244407) | more than 8 years ago | (#15145949)

In some ways a patent is like a computer program and the claims are the actual code -- the rest is just comments that help make the claims understandable.

The "understandable" claims of which you speak must be in relation to patents from the planet Zargblort.

(They're sure not from Earth.)

File the patent! (1)

jizmonkey (594430) | more than 8 years ago | (#15138851)

This (talking to manufacturers and wanting to make sure they don't "rip off" your idea) is absolutely the best reason to file a patent. I can think of three cases off the top of my head (Colgate, Walmart, and Evans) where a would-be inventor talked to a manufacturer without having a patent. Later the inventor finds out that the company is producing the same product. He sues, and is totally out of luck. Because he didn't file the patent, the "ripped off idea" is now prior art against him.

And he can't really sue in state court, because trade secret misappropriation is really hard to prove as a practical matter. State law claims are messy for everyone. In fact manufacturers historically wouldn't even talk to inventors if they didn't have a patent, in order to prevent groundless state law litigation.

If you're at the point of talking to manufacturers, then $10k (which is what a patent costs from a reputable patent firm) is not going to be a large amount of money.

Also, some people claim that patents are infeasible to enforce, which isn't really true. There are patent contingency firms (mediocre but-good-enough-for-this-purpose lawyers) as well as patent contingency funds like Rembrandt who pay for top-quality lawyers. If the claim is good, it will be brought on contingency, and if the claim is good, the guy who's "ripping you off" will back down rather than waste a lot of money fighting a losing battle. The key here is that your patent is directed towards the product, so you can use narrow claims that describe the product exactly. This isn't a case of someone who has a pie-in-the-sky idea, somehow gets a broad claim through the patent office, and then sues Microsoft ten years later for a billion dollars.

Re:File the patent! (1)

dbIII (701233) | more than 8 years ago | (#15141009)

Also, some people claim that patents are infeasible to enforce, which isn't really true
Watch CSIRO vs Microsoft in the wireless networking patent dispute for details as to why it is a horrible mess and doesn't acheive the aim of protecting people who are obviously the inventors against people who are obviously not. On the other side we had the rimming over the Blackberry despite the patents appearing to be invalid - if you file an invalid patent and pay the money it appears you still get legal protection. Something should be done to iron out such inconsiencies which from the outside make it look like a badly run revenue collection agency.

Do-It-Yourself Patents (1)

ZooDog (714750) | more than 8 years ago | (#15139944)

IEEE's Spectrum Magazine has an excellent article on Do-It-Yourself Patents [ieee.org] this month. To answer your question, from the article:

The first step in conducting a [patent] search is to classify what it is you have invented. Look in the government classification manual to find the class and subclass that apply to your invention. The manual is available online at http://www.uspto.gov/go/classification/uspcindex/i ndexs.htm [uspto.gov] .

[skip example]

The next step is to search the patent database at http://patft.uspto.gov/netahtml/search-adv.htm [uspto.gov] .


It goes on from there. An excellent read.

real world patent search (1)

aminorex (141494) | more than 8 years ago | (#15140455)

Get the Nolo Press book.
Did I mention that you should get the Nolo Press book?
Also, and finally, you really should get the Nolo Press book.

P.S. the first place you need to search is the USPTO web site. the second is a good library, that includes the professional and academic journals relevant to your domain of endeavor. the third is the internet at large. but you can't really stop there, for many cases, well described in....
the Nolo Press book.

Do it. (1)

dbirnbau (640779) | more than 8 years ago | (#15143120)

IAAPA (PA=Patgent Agent)and I can tell you that you should consult with a patent agent or lawyer before proceeding. While you can, in principle, represent yourself, there are enough arcane details of the process that make it very hard to be successful. The professionals can help you with searching. In principle you need to search both the patent database and the technical realm as well. Your patent can be invalidated by an article that describes your invention that was published before you filed, just as much as a prior patent. Legal fees aside, there are fees to be paid to the USPTO. For a not too complex patent these can run in the 2-3K range. Lawyers typically get about another several $K to do the research, write the application and negotiate the details with the USPTO. Also plan on waiting about 3 years (or more) before you actually have a patent. However, if someone infringes your idea, you have protection since you have an application on file.

Not filing a patent... (1)

Shade00a00 (969001) | more than 8 years ago | (#15144073)

Actually, you don't need to file a patent to have your invention protected : if you write a book [sosinvention.com] describing how you came up with it / how you intend to implement it, you can get copyright laws to protect your invention. This works on the basis that an inventor is the creator of an original work.

Copyright does not grant patent-like monopoly .... (1)

joe_n_bloe (244407) | more than 8 years ago | (#15145930)

Copyrighting an idea will in no way grant you the monopoly on its use that a patent will. Copyrighting "My Cool Text Editor" will prevent infringing uses such as outright lifting of a user interface or (obviously) appropriation of source code; but if My Cool Text Editor has some nifty feature like hovering over a word to get a Google tooltip search, don't plan on a copyright helping you preserve anything more than the ad copy for it.

Actually, it can... (1)

Shade00a00 (969001) | more than 8 years ago | (#15146748)

Actually, if you're the first to implement such things, you can claim copyright to its implementation in your written works, and you can exert monopoly rights on that idea. Of course, in this case, it wouldn't stop, anyone from making their software improve on the idea, but that's the same as a patent, anyways.

Re:Actually, it can... (1)

joe_n_bloe (244407) | more than 8 years ago | (#15153770)

Actually, if you're the first to implement such things, you can claim copyright to its implementation in your written works,

Right.

and you can exert monopoly rights on that idea.

Wrong.

Just Hire someone (1)

nurb432 (527695) | more than 8 years ago | (#15145317)

That way if they botch it, they might be liable for the mistake, not you.

Sure you lose your patent, but at least you might be covered for any damages that are incurred..

People don't get the narrowness of "prior art" (1)

joe_n_bloe (244407) | more than 8 years ago | (#15145907)

Where patent law is concerned, the context of a claim, applicable prior art, obviousness, and so on is much more important than most people understand. I doubt that you'd be able to figure out by yourself the relevance of what appears to be - but for the purpose of the patent really isn't - prior art. Nor would I - IANAPL. So if you care about such things, get professional advice.

If your good at searching technical literature... (1)

Cbog (945151) | more than 8 years ago | (#15145917)

Delphion http://www.delphion.com/ [delphion.com] is the best patent search tool there is, IMO. It's $200 USD per month. At the price of filing a patent, it's a bargain. FreePatentsOnline http://www.freepatentsonline.com/ [freepatentsonline.com] is not nearly as slick, but it's free. I used to use Delphion, I love it--especially the 'snapshot' feature which lets you find out who's doing what very easily. I use freepatentsonline now since I don't have an employer paying for Delphion, it works.

Be warned, prior art search is itself an art. If your not experienced at least in the technical literature, better get an IP attorney.

BTW, the guy at the top who posted "Why bother? Nobody else does." was FUNNY, not INFORMATIVE. Do your prior art search and at least have part of a clue that you might have freedom to operate. Otherwise you are wasting a lot of money, and not just yours.

Community Subgroups (0)

Anonymous Coward | more than 8 years ago | (#15147571)

What is a community subgroup?

Does slashdot have subgroups?
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