Re: NEC-LIST: Patents

The Nolo Press book on Patenting ("Patent it Yourself" ??) is well worth
getting and reading. It covers the process, all the bizarre terminology
used in prosecuting an application, etc. You'll save a bunch of time (and
money) talking to your patent attorney.

The other thing to think about is whether it's worth hiring an attorney who
practices "across the street" from the PTO. Sometimes it's the personal
contact that helps move things along when there's a quick question, as
opposed to sending letters in the mail. My experience has been mixed on
this.

The ability to do online searches of the patent files is invaluable,
especially if you're doing a lot of the footwork yourself. You can quickly
go through dozens of potentially relevant patents and write up little
summaries for your attorney to take a look at and for the two of you to
decide whether to include in your application. Don't just dump them on your
attorney's desk though, unless you are independently wealthy!

more comments below..

"Chris Trask" <christrask_at_earthlink.net> writes:
> >
> > I have been through the drill of getting an antenna patent
> > using Mid-West attorneys. I did not choose the first firm,
> > and quickly found that they didn't have anybody who knew
> > antenna fundamentals. Further, I discovered the PTO
> > examiner didn't understand antenna fundamentals either.
>
> The first patent attorney I tried had ads in QST and elsewhere. He
> turned out to be pretty worthless, complaining that the patent I wrote had

> The second attorney was by way of a referral from a consulting client.
> This fellow turned out to be a real blessing, and in one month of working
> with me on a consultation basis I had a complete patent ready for filing
> with less than one month to go due to having published the subject. Now,
I
>
> It is a waste of money to have a patent attorney or agent write a
patent
> for you from the ground up. Most of the money you spend goes to educating
> the attorney or agent to understand what you already know intimately, and
> since they don't understand the subject they will make more errors than
you
> would. So, go find some related patents and learn how they are written.
> After a while you'll learn what makes a good patent. Then write your
patent
> as you best understand it. Then find an attorney or agent who will work
> with you to put it in finished form.

This is where the Nolo book helps.. it describes the somewhat unique style
used for patents, particularly in drafting claims. Saves a bunch o'time
when talking to the attorney/agent.

>
> But never, never make a patent application without consulting with a
> licensed patent attorney. Writing the description and making the drawings
> is fairly easy, but it's the claims where you need the expertise. Trying
to
> do it entirely on your own is less than a very bad idea.

Totally agree... unless you get a thrill out of putting "patent pending" on
things and not really caring if you ever have the patent issue. When patent
apps were secret, this wasn't a bad strategy from a business standpoint..
you could file a lame application, pay the fees, mark it patent pending, and
try to sell the concept to someone. "Why yes, we have an extensive
intellectual property portfolio, we have several dozen patent applications
in the works covering key aspects of our technology, invest now!" (before
you actually see the applications and see that we're applying for design
patents on things like the arrangement of cooling vent holes in the case).
Secret applications are also handy as a "club" in intellectual
property/trade secret disputes, because the other side is never quite sure
what's in that application that might come back to bite them. Now, though,
when apps are published after a year, it's less useful.

> Just remember: Most patent attorneys finished in the bottom 10% of
> their engineering class, and patent examiners are patent attorneys who
> couldn't make it in the profession. Do the math.

Not entirely true.. I do know some fairly bright folks who did quite well in
school and decided they liked working at the PTO. There is a certain appeal
to civil service - job security, you can go home every night at a regular
time, do interesting stuff, and not have to worry if your firm is going to
sell out to someone else who will have a different idea of the technological
direction to go. And, every regulatory/permitting organization has their
share of bozos..USPTO is actually pretty good compared to, say, some
municipal building permit folks. At least USPTO is used to seeing unusual
and novel stuff (almost by definition).

James P. Lux, P.E.
Spacecraft Telecommunications Section
Jet Propulsion Laboratory

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