Seeking Prior Art Before Filing Patent? 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."
Dont. (Score:5, Insightful)
Re:Dont. (Score:4, Informative)
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. (Score:2)
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
Re:Dont. (Score:2)
That works in theory for blocking patents on your idea, but in practice it does
Re:Dont. (Score:4, Insightful)
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. (Score:1)
Try specific news and portal sites, plus USPTO (Score:4, Insightful)
Alex.
Re:Try specific news and portal sites, plus USPTO (Score:4, Funny)
Sounds like a fine night at home with the wife!
Re:Try specific news and portal sites, plus USPTO (Score:2)
Alex.
Re:Try specific news and portal sites, plus USPTO (Score:1)
Re:Try specific news and portal sites, plus USPTO (Score:1)
File the patent (Score:5, Insightful)
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 (Score:1)
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 me
Attorney (Score:5, Informative)
http://www.uspto.gov/web/offices/dcom/olia/oed/ro
This is pretty much the only valid answer to this question, so we might as well shut the story down now.
Re:Attorney (Score:2)
Re:Attorney (Score:2)
Re:Attorney (Score:4, Informative)
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 (Score:1)
Re:Attorney (Score:2)
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 p
Re:Attorney (Score:2)
Re:Attorney (Score:2)
Re:Attorney (Score:4, Informative)
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
Re:Attorney. no! (Score:2)
Re:Attorney. no! (Score:2)
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 th
Re:Attorney (Score:2)
Re:Attorney (Score:2)
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 indica
Re:Attorney (Score:2)
Re:Attorney (Score:2)
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
Re:Attorney (Score:2)
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
Re:Attorney (Score:2)
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.
Re:But how can willful infringement be established (Score:2)
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 w
Re:Attorney (Score:2)
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 (Score:1)
What for? (Score:1)
Re:What for? (Score:2)
File first, ask questions later (Score:2, Funny)
Re:File first, ask questions later (Score:2)
Before you spend another dime... (Score:3, Informative)
It has everything you want to know and alot more.
Re:Before you spend another dime... (Score:2)
What I need to know more than anything else is if P=NP. Will this book tell me?
IP Law (Score:1, Funny)
Re:Um... no. (Score:2)
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 ot
Re:Um... no. (Score:2)
Re:Um... no. (Score:2)
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 (Score:4, Informative)
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.
No, seriously, don't. (Score:2, Informative)
Don't Bother (Score:1)
Re:Don't Bother (Score:2)
Food For Thought (Score:2)
Want the patent to be worth anythng? Hire a lawyer (Score:5, Informative)
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. (Score:2)
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
Re:Want the patent to be worth anythng? Hire a law (Score:1)
To summarize the last few weeks... (Score:1)
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 i
patent not necessarily the first step (Score:2, Informative)
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
USPTO and a good patent attorney (Score:1)
Search the USPTO database here. (Score:1)
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 (Score:1)
start at the uspto (Score:2)
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 (Score:1)
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 understand
Re:how to find prior art (Score:2)
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! (Score:2)
And he can't really
Re:File the patent! (Score:2)
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.
Do-It-Yourself Patents (Score:1)
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.usp [uspto.gov]
real world patent search (Score:2)
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. (Score:1)
Not filing a patent... (Score:1)
Copyright does not grant patent-like monopoly .... (Score:2)
Actually, it can... (Score:1)
Re:Actually, it can... (Score:2)
Right.
and you can exert monopoly rights on that idea.
Wrong.
Just Hire someone (Score:2)
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" (Score:2)
If your good at searching technical literature... (Score:1)
Be warned, prior art search is itself an art. If