Want more videos on patents, inventing and startups? Check out this playlist with all my videos on these topics: ua-cam.com/play/PLp15JXznBjPW-J3hNhX1zYoOm1mQzVeMo.html The playlist and my channel include the following videos and MANY more: How to Patent An Invention Idea: ua-cam.com/video/vEHI-gePr8A/v-deo.html The International Patent Process: ua-cam.com/video/aMT7yQwn69c/v-deo.html How to Know if Your Idea is Already Patented: ua-cam.com/video/Cm_3JqZgLFk/v-deo.html How to Lookup Patents: ua-cam.com/video/00YUOAayTnM/v-deo.html The Best Way to Protect Invention Ideas: ua-cam.com/video/Em_uVQ1qLXY/v-deo.html What Are Patent CLAIMS? : ua-cam.com/video/0MneopTXX5Y/v-deo.html Top 5 Startup Patent Mistakes: ua-cam.com/video/2jmc2xuwVbQ/v-deo.html Prior Art Definition / What is prior art? : ua-cam.com/video/-9SCz3R6j4s/v-deo.html What is a Patent and How Does it Work? : ua-cam.com/video/qZaQxNmcm8E/v-deo.html What is the best patent strategy? ua-cam.com/video/zCbEz3AKVoE/v-deo.html Why You DON'T Need A Patent Search [TOP 5]: ua-cam.com/video/YB_9u5uxcfA/v-deo.html Top 5 Hidden Patent Benefits: ua-cam.com/video/rVbFWgoI9Ps/v-deo.html Top 5 Patent Infringement Mistakes: ua-cam.com/video/8jLX6uUvUR4/v-deo.html Guide to The Patent Examination Process: ua-cam.com/video/TI6IYxo7ppA/v-deo.html Top 5 Patent and Startup SCAMS: ua-cam.com/video/gfBi35Byz2A/v-deo.html Guide to Understanding Patent Numbers: ua-cam.com/video/GNXrO2q_0yM/v-deo.html
Hi Shelly, the doctrine of equivalents related to infringement of an issued patent and makes it so a claim of infringement can still be made even an element of a claim of the issued patent is not literally present in the accused product, but if a substantial equivalent of this element is present in the accused device. This video clarifies patentability vs. infringement in case that's not completely clear: ua-cam.com/video/9hTMXJtONtM/v-deo.html
Hi Dylan, suppose I invent a chair, should I list the screws and Allen key etc in the CLAIMS that need to mount the chair? I am a little confused, thanks.
Whether to include stuff like screws and Allen key in the claims depends on a lot of specifics. For example, what is the overall design of this theoretical chair? What is the thing that's new and special about it and what is the likely universe of prior art going to be like? That being said, you ideally would not want to include details like screws and Allen key in the claims (but would want it in the description and drawings) because this likely would make an issued patent with these claims really easy to design around. For example, someone could probably then use bolts or other couplers or joint to get around these claims. However, there is going to be a lot of prior art related to chairs, so specific details like screws and Allen key (or maybe a more abstracted broad version such as "threaded coupler") might be necessary to overcome the prior art. Great question. Also, here is a video on prior art to make sure we are on the same page about what that is: ua-cam.com/video/n3P6FsviqDQ/v-deo.html
@@PatentsDemystified Hi Dylan, Thank you very much, I viewed a lot of different videos, including USPTO website, I must say your videos are most relative and pragmatic, very appreciated for your explanation, and I get the point. cheers👍👍👍
Question: If in an independent claim a "power source" is claimed and in one of the dependent claims wherein the power source is an "electric motor" is claimed, when referring to this object in the specification/description and drawings which term would be used? Great vidoes!
Thanks! Great question. You would want to have support for both terms in the specification along with other examples of what a "power source" could be, if any. For example. "In various embodiments, the system can include a power source such as an electric motor, solenoid, pneumatic actuator, and the like." However, when discussing it in other places, it's typically best to use the broader term (i.e., power source).
Good question. These videos give a full explanation of what patent claims are: ua-cam.com/video/ZNUEhCtaucM/v-deo.html ua-cam.com/video/0MneopTXX5Y/v-deo.html
I just received over 60+ Utility Patent infringement claims and thanks to you once I reviewed their patent, I realized my product is missing one of the main elements they are claiming to have in their patent.
@@PatentsDemystified Just ordered your excellent reading book through Amazon Germany, actually. Wish I could somehow afford your services for my project dear Dylan.
My lawyer took out all of our claims and left 1 claim which was the least important then he took out all our defenses and we had proof of willful infringement and he left all that out too
Are you talking about taking out allegations of a patent lawsuit or claims of a patent application? Amending to remove claims is something that is done during examination of a patent application, but you might remove allegations of some claims of an issued patent being infringed in a patent lawsuit. Things like defenses and proof of willful infringement seem to be referring to a lawsuit. Could you provide some more detail?
@@PatentsDemystified we gave him our money to fight a huge toy company for patent infringement when he submitted the complaint and all the paper work he left out all the claims and only left in claim 9. We kept telling him to put the claims in and he kept ignoring us and during the litigation he took out indirect infringement and doctrines of equivalence then went right into summary judgment and we lost no settlement or anything. We did not even get a settlement conference.
I'm very sorry to hear that, Shelly. Even if there was a valid reason for him to do this (which there very well could have been), it's not good that this was not well communicated to you such that you felt like you were being ignored and felt that your case was not being properly asserted. Communication is so important to the attorney-client relationship and being able to explain case strategy and setting expectations is unfortunately something that some lawyers fall short on. I'm always sad to hear about when folks have bad experiences with their lawyers because it's stuff like this that breeds distrust in us.
We know he did malpractice. Everything was about how their doll looked just like ours. It was our idea but it was in a bear instead of a doll. Same remote everything. Why would you ever go into a lawsuit and take out all your defense. We are writing a book and need someone to write a chapter about claims and use our invention as an example. Would you please do that. We need help and you seem very intelligent. It would be awesome if you could do that. Why would they take out claim 1 that talks about a transmitter receiver and a remote and a doll. That is our whole invention.
It's really hard to say without all the details of case, issued patent and accused device. However, lawyers can only assert allegations in a lawsuit that they the have done due diligence on and that they believe have reasonable basis under the law. It's possible he may have believed that these allegations has sufficient support for the lawsuit. For example, it does not matter how close their product is to your product or to the drawings or general description in the patent. What matters is whether the accused product meets all the specific elements of a given claim of the issued patent. This video has more detail on claims and might be helpful in your research: ua-cam.com/video/ZNUEhCtaucM/v-deo.html along with the video on infringement vs. patentability that I referenced in response to your other comment: ua-cam.com/video/9hTMXJtONtM/v-deo.html Regardless, it's terrible that you didn't feel like you got a good explanation of the rational for this strategy. Thank you for considering me to assist you with your book, but unfortunately, I'm not available to assist with a project like this. I would definitely suggesting having a patent attorney at least review the content before publishing and ideally help you with writing it. A list of registered patent attorneys can be found here: oedci.uspto.gov/OEDCI/practitionerSearchEntry
I am preparing to file several PPAs for a single NPA protection, or two, to be written by a lawyer later. I'm sure enough to make a solid PPA construction (it is like good engineering :), but not so much in a legal context, so I'm turning to you again with a few questions. Please consider this case; The PPA-1 is applied first, and contains two independent climes, C1 and C2. After that, the second PPA-2 is applied, and contains one independent clime C3, that is an improved version of C2. Before PPA-1 expires, the NPA is applied that contains all climes C1,C2 and C3 from PPA-1 and PPA-2. Are C2 and C3 in conflict within one single NPA application, or does C3 become a dependent clime of C2? I'd like to keep C2 because it's a simpler solution and with C3 will provide broader protection, even though it's likely that C2 will be rejected later by the examiner, so it must be an independent claim. If the multiple PPAs have multiple independent climes, are they all automatically included in NPA or I can select which climes to choose and which one to leave? Does it destroy the integrity of PPA in this way, or is it better if the PPA has one independent claim only? Thank you again, you are helping me a lot with your answers!
It's really hard to reply to this question without knowing more specific details, but I think you might be missing some critical details about how claims work in provisional and non-provisional patent applications and should consult with a patent attorney about your proposed strategy and have them review your provisional(s) before filing anything. This is not something I'll be able to help you with, but you can find a list of patent attorneys that are eligible to help you here: oedci.uspto.gov/OEDCI/practitionerSearchEntry The first issue is that claims are not required in provisional patent application and I don't even include them aside from a single omnibus dummy claim for foreign priority reasons only (e.g., 1. The systems and methods described herein. - that's it). In my experience, when folks put this much thought and energy into drafting a full set of claims for a provisional, it means they are not spending enough time on the detailed description, which is the most important part of a provisional application and what actually gives a provisional application value. In other words, claims in a provisional don't really mean anything and are effectively just part of the overall disclosure. Again, the focus of a provisional application should just be to describe the invention in as much detail as possible along with discussing as many variations as possible to establish a priority date for this subject matter. Focusing on claims at this stage is just a waste of time and effort that should be instead used to flesh out the details of your description. I would strongly suggest sitting down with a patent attorney to discuss you business plan and how to appropriately and cost-effectively structure patent protection and to make sure what you file does not provide worthless illusory protection. Also, without more detail, I would question why two provisionals are being filed instead of just one. Not to say that their might be a good reason for this, but that rationale is not clear from the question. Also, would these provisionals be filed simultaneously or on different dates? Again, another reason to consult a patent attorney about strategy. Honestly, the question raises a lot of red flags for me.
@@PatentsDemystified Thank you for replaying! I didn't want to ask too many questions, but yes, another question I had in mind was, are the climes in PPA relay so important. I'm so happy with your answer, I read somewhere that the claim(s) in the PPA are very desirable, now it's clear to me that I don't need claims in the PPA :). I am working on mechanical device which consists of several interconnected mechanisms. Each mechanism is also independent and can be applied in several different-similar devices. Because I have many innovative solutions that works in that way, I'm trying to set up a licensing system that would allow me to apply these mechanisms separately for different devices and for different clients. I don't have an IP strategy yet, so I would like to leave enough room for different scenarios at the moment, to prepare the final strategy with attorney during the patent protection process (I would not like to protect all these mechanisms with one patent, but maybe I'm wrong). Another reason is that description of all this mechanisms in one application can be confusing, also for me :), to many drawings and different variations just for one mechanism, I need three mechanisms in this case (I have actually more than three, so additional PPA will be applied later on:). Yes, PPAs will be applied on different dates, but now that I understand that climes are not necessary in PPA, I can consider to join all together, I'm not sure, anyway I have some time to clear this up. I have no experience with PPAs so far, my ex patent attorney advice me to not apply it, so I always start with "national- European" NPA. I have confidence to make a good PPA description of invention, I already did this for NPA and although the attorney was of the opinion that the patent would not be granted on this basis, it was later confirmed (he was not so experienced, but he defined good climes out of my description :). I am of the opinion that applying PPA is the right approach, and that the innovator must know how to write it himself, because that way he gets to know the innovation better and, over time, also strengthens himself in strategic IP planning. Thank you for patent attorney list, but at the moment I will not engage one. The beauty of PPA is that is hidden, replaceable and cheap, so if the priority date is not so critical (my mechanisms are 10 years old now, and competition is still far behind me, so I can afford delay :), it can be replaced with new one corrected by attorney later. My goal is to get patent pending status and signing the business or NDA contract with the client first. After testing fully functional prototype (that will not disclose the mechanisms nor PPA, only functionality of the device), the client needs become clear according to specific market needs, then I will engage the attorney to prepare NPA and long term IP strategy. At least this is the my plan, I have to start somewhere, and honestly I don't se a lot of red flags, unless I overlooked anything. If you see red flags also after reading this, than I will consider your suggestion. Thank you again for your willingness to help! It means a lot to me, and i will coming back with questions occasionally if you don't mind :)
@@PatentsDemystified Thank you. Yesterday I found a free 13ed of the book "Patent it Yourself" online that says the following; "However, if possible, it is a good idea to draft some claims before filing the PPA, since this exercise will help you determine whether your detailed description includes everything necessary about your invention. Also some foreign jurisdictions may require that the application contain a claim to obtain priority. " Do you have any idea which foreign jurisdictions are in question? (I do not care about Afghanistan market :) This book also states that climes in PPA are even not considered in examination, why is it important for someone to have a correctly written claims in PPA if it is not considered at the end?!
Yea, provisional patent applications are not examined at all, regardless of whether they have claims or not, which is why claims are not required in PPAs and why I never include them aside from a dummy claim for foreign priority purposes. (I'm not sure which foreign jurisdiction(s) this applies to these days but it's cheap insurance to just include one short dummy claim). I would respectfully disagree with "Patent It Yourself" on this and would say that it's NOT important or a good idea to waste your time with correctly written claims in a PPA. You really just need to have adequate description in a PPA that will provide support for claims at the non-provisional application a year later; otherwise, the PPA can be worthless and provide illusory protection. The rational behind the suggestion to draft claims for a PPA is that this will provide a roadmap for sufficient description that will actually provide protection. This would be true if folks were actually able to draft viable claims. But in my experience, folks spend tons of time and energy drafting useless claims, which then leads to them drafting a terrible description because their claims don't actually inform drafting the description and drawings and they also don't have the time and energy to draft a good description because they spent too much on their precious claims. In my experience, the most efficient way for inventors to draft a PPA is to just focus on drafting an extremely detailed description of the invention and related variations with some simple coaching from a patent attorney to make sure the description has the right details and right level of detail to make sure it's not a worthless PPA.
Dylan, from your experience, what do most "office actions" comprise? Do they mostly relate to prior art problem (existing devices), or do they relate to actual technical problems with the design being patented (that is to say, does the device actually work as claimed)? Or are there other issues that come to the fore? Also, what do patent attorney's normally charge to respond to these office actions? Thanks for your help.
Hi James, An Examiner will essentially never ask about whether the device actually works as claimed. They are technically allowed to in extreme cases, but I've never had an Examiner raise the issue aside from them not understanding the invention in general and wanting me to explain it. I'm sure you can find plenty of examples of inoperable or impossible things (e.g., perpetual motion machines) that are patented. Office actions are pretty much all about whether the claims as presented are new and non-obvious in view of he prior art. I would say responding to prior art rejections is 95%+ of the effort that goes into office action response (35 USC 102 and 103). There are rejections for lack of claim clarity of lack of support in the spec, but those rejections are typically really easy to respond to (35 USC 112). Depending on the type of invention, eligible subject matter rejections can be an issue and can take up a lot of time (35 USC 101). This happens in certain types of software applications and definitely in business method type inventions. The Examiner will point out typos and formalities like that, but again, that's pretty easy to deal with. Pretty much the whole examination is about the claims though, probably 99%. Cost of an office action response depends on the attorney and the complexity and type of the office action and what all goes into it (e.g., doing an examiner interview, extra time talking with the client and doing analysis, etc.) but patent attorneys I know typically charge $1,500 - $6,500 for an office action response.
![Picking The Best Patent Attorney For You [Insider Tips]](/img/n.gif)
Want more videos on patents, inventing and startups? Check out this playlist with all my videos on these topics: ua-cam.com/play/PLp15JXznBjPW-J3hNhX1zYoOm1mQzVeMo.html
The playlist and my channel include the following videos and MANY more:
How to Patent An Invention Idea: ua-cam.com/video/vEHI-gePr8A/v-deo.html
The International Patent Process: ua-cam.com/video/aMT7yQwn69c/v-deo.html
How to Know if Your Idea is Already Patented: ua-cam.com/video/Cm_3JqZgLFk/v-deo.html
How to Lookup Patents: ua-cam.com/video/00YUOAayTnM/v-deo.html
The Best Way to Protect Invention Ideas: ua-cam.com/video/Em_uVQ1qLXY/v-deo.html
What Are Patent CLAIMS? : ua-cam.com/video/0MneopTXX5Y/v-deo.html
Top 5 Startup Patent Mistakes: ua-cam.com/video/2jmc2xuwVbQ/v-deo.html
Prior Art Definition / What is prior art? : ua-cam.com/video/-9SCz3R6j4s/v-deo.html
What is a Patent and How Does it Work? : ua-cam.com/video/qZaQxNmcm8E/v-deo.html
What is the best patent strategy? ua-cam.com/video/zCbEz3AKVoE/v-deo.html
Why You DON'T Need A Patent Search [TOP 5]: ua-cam.com/video/YB_9u5uxcfA/v-deo.html
Top 5 Hidden Patent Benefits: ua-cam.com/video/rVbFWgoI9Ps/v-deo.html
Top 5 Patent Infringement Mistakes: ua-cam.com/video/8jLX6uUvUR4/v-deo.html
Guide to The Patent Examination Process: ua-cam.com/video/TI6IYxo7ppA/v-deo.html
Top 5 Patent and Startup SCAMS: ua-cam.com/video/gfBi35Byz2A/v-deo.html
Guide to Understanding Patent Numbers: ua-cam.com/video/GNXrO2q_0yM/v-deo.html
Great viseo very daunting for a inventor from the UK.
Thanks! Glad it was helpful.
What about doctrines of equivalence?
Hi Shelly, the doctrine of equivalents related to infringement of an issued patent and makes it so a claim of infringement can still be made even an element of a claim of the issued patent is not literally present in the accused product, but if a substantial equivalent of this element is present in the accused device. This video clarifies patentability vs. infringement in case that's not completely clear: ua-cam.com/video/9hTMXJtONtM/v-deo.html
Hi Dylan, suppose I invent a chair, should I list the screws and Allen key etc in the CLAIMS that need to mount the chair? I am a little confused, thanks.
Whether to include stuff like screws and Allen key in the claims depends on a lot of specifics. For example, what is the overall design of this theoretical chair? What is the thing that's new and special about it and what is the likely universe of prior art going to be like?
That being said, you ideally would not want to include details like screws and Allen key in the claims (but would want it in the description and drawings) because this likely would make an issued patent with these claims really easy to design around. For example, someone could probably then use bolts or other couplers or joint to get around these claims. However, there is going to be a lot of prior art related to chairs, so specific details like screws and Allen key (or maybe a more abstracted broad version such as "threaded coupler") might be necessary to overcome the prior art. Great question.
Also, here is a video on prior art to make sure we are on the same page about what that is: ua-cam.com/video/n3P6FsviqDQ/v-deo.html
@@PatentsDemystified Hi Dylan, Thank you very much, I viewed a lot of different videos, including USPTO website, I must say your videos are most relative and pragmatic, very appreciated for your explanation, and I get the point. cheers👍👍👍
Awesome! Thank you so much.
Hi!
Looking for assistance to reformulate my claims. My patent already submitted and examination report issued.
Thanks
Question: If in an independent claim a "power source" is claimed and in one of the dependent claims wherein the power source is an "electric motor" is claimed, when referring to this object in the specification/description and drawings which term would be used?
Great vidoes!
Thanks! Great question. You would want to have support for both terms in the specification along with other examples of what a "power source" could be, if any. For example. "In various embodiments, the system can include a power source such as an electric motor, solenoid, pneumatic actuator, and the like." However, when discussing it in other places, it's typically best to use the broader term (i.e., power source).
whats a claim?
Good question. These videos give a full explanation of what patent claims are:
ua-cam.com/video/ZNUEhCtaucM/v-deo.html
ua-cam.com/video/0MneopTXX5Y/v-deo.html
I just received over 60+ Utility Patent infringement claims and thanks to you once I reviewed their patent, I realized my product is missing one of the main elements they are claiming to have in their patent.
Awesome! So glad to hear this video was helpful.
The best, mostest and clearest patent videoI came across, so far at least. Thanks for bringing in some clarity to this space.
You bet. Thank you so much!
@@PatentsDemystified Just ordered your excellent reading book through Amazon Germany, actually. Wish I could somehow afford your services for my project dear Dylan.
Awesome! I hope you find it to be a valuable resource. Cheers!
Dylan .. would you help with the claims to file a patent application? .. t
Hi Wolfman, thanks for reaching out and considering me to help with this. Unfortunately, I’m not able to accept new clients at this time.
My lawyer took out all of our claims and left 1 claim which was the least important then he took out all our defenses and we had proof of willful infringement and he left all that out too
Are you talking about taking out allegations of a patent lawsuit or claims of a patent application? Amending to remove claims is something that is done during examination of a patent application, but you might remove allegations of some claims of an issued patent being infringed in a patent lawsuit. Things like defenses and proof of willful infringement seem to be referring to a lawsuit. Could you provide some more detail?
@@PatentsDemystified we gave him our money to fight a huge toy company for patent infringement when he submitted the complaint and all the paper work he left out all the claims and only left in claim 9. We kept telling him to put the claims in and he kept ignoring us and during the litigation he took out indirect infringement and doctrines of equivalence then went right into summary judgment and we lost no settlement or anything. We did not even get a settlement conference.
I'm very sorry to hear that, Shelly. Even if there was a valid reason for him to do this (which there very well could have been), it's not good that this was not well communicated to you such that you felt like you were being ignored and felt that your case was not being properly asserted. Communication is so important to the attorney-client relationship and being able to explain case strategy and setting expectations is unfortunately something that some lawyers fall short on. I'm always sad to hear about when folks have bad experiences with their lawyers because it's stuff like this that breeds distrust in us.
We know he did malpractice. Everything was about how their doll looked just like ours. It was our idea but it was in a bear instead of a doll. Same remote everything. Why would you ever go into a lawsuit and take out all your defense. We are writing a book and need someone to write a chapter about claims and use our invention as an example. Would you please do that. We need help and you seem very intelligent. It would be awesome if you could do that. Why would they take out claim 1 that talks about a transmitter receiver and a remote and a doll. That is our whole invention.
It's really hard to say without all the details of case, issued patent and accused device. However, lawyers can only assert allegations in a lawsuit that they the have done due diligence on and that they believe have reasonable basis under the law. It's possible he may have believed that these allegations has sufficient support for the lawsuit. For example, it does not matter how close their product is to your product or to the drawings or general description in the patent. What matters is whether the accused product meets all the specific elements of a given claim of the issued patent. This video has more detail on claims and might be helpful in your research: ua-cam.com/video/ZNUEhCtaucM/v-deo.html along with the video on infringement vs. patentability that I referenced in response to your other comment: ua-cam.com/video/9hTMXJtONtM/v-deo.html Regardless, it's terrible that you didn't feel like you got a good explanation of the rational for this strategy.
Thank you for considering me to assist you with your book, but unfortunately, I'm not available to assist with a project like this. I would definitely suggesting having a patent attorney at least review the content before publishing and ideally help you with writing it. A list of registered patent attorneys can be found here: oedci.uspto.gov/OEDCI/practitionerSearchEntry
Dylan you are a smart and knowledgeable man. This is very very good information. I’m really learning.
Thanks..
Thanks! I really appreciate it. So glad to hear my videos are helping.
thank you this was unbelievable insight
Thanks!
Are domestic products patentable?
I'm not quite sure what you mean by "domestic products," but any utilitarian product can be patentable if it's new and non-obvious over the prior art.
I am preparing to file several PPAs for a single NPA protection, or two, to be written by a lawyer later. I'm sure enough to make a solid PPA construction (it is like good engineering :), but not so much in a legal context, so I'm turning to you again with a few questions.
Please consider this case;
The PPA-1 is applied first, and contains two independent climes, C1 and C2. After that, the second PPA-2 is applied, and contains one independent clime C3, that is an improved version of C2. Before PPA-1 expires, the NPA is applied that contains all climes C1,C2 and C3 from PPA-1 and PPA-2.
Are C2 and C3 in conflict within one single NPA application, or does C3 become a dependent clime of C2? I'd like to keep C2 because it's a simpler solution and with C3 will provide broader protection, even though it's likely that C2 will be rejected later by the examiner, so it must be an independent claim. If the multiple PPAs have multiple independent climes, are they all automatically included in NPA or I can select which climes to choose and which one to leave? Does it destroy the integrity of PPA in this way, or is it better if the PPA has one independent claim only?
Thank you again, you are helping me a lot with your answers!
It's really hard to reply to this question without knowing more specific details, but I think you might be missing some critical details about how claims work in provisional and non-provisional patent applications and should consult with a patent attorney about your proposed strategy and have them review your provisional(s) before filing anything. This is not something I'll be able to help you with, but you can find a list of patent attorneys that are eligible to help you here: oedci.uspto.gov/OEDCI/practitionerSearchEntry
The first issue is that claims are not required in provisional patent application and I don't even include them aside from a single omnibus dummy claim for foreign priority reasons only (e.g., 1. The systems and methods described herein. - that's it). In my experience, when folks put this much thought and energy into drafting a full set of claims for a provisional, it means they are not spending enough time on the detailed description, which is the most important part of a provisional application and what actually gives a provisional application value.
In other words, claims in a provisional don't really mean anything and are effectively just part of the overall disclosure. Again, the focus of a provisional application should just be to describe the invention in as much detail as possible along with discussing as many variations as possible to establish a priority date for this subject matter. Focusing on claims at this stage is just a waste of time and effort that should be instead used to flesh out the details of your description. I would strongly suggest sitting down with a patent attorney to discuss you business plan and how to appropriately and cost-effectively structure patent protection and to make sure what you file does not provide worthless illusory protection.
Also, without more detail, I would question why two provisionals are being filed instead of just one. Not to say that their might be a good reason for this, but that rationale is not clear from the question. Also, would these provisionals be filed simultaneously or on different dates? Again, another reason to consult a patent attorney about strategy. Honestly, the question raises a lot of red flags for me.
@@PatentsDemystified Thank you for replaying! I didn't want to ask too many questions, but yes, another question I had in mind was, are the climes in PPA relay so important. I'm so happy with your answer, I read somewhere that the claim(s) in the PPA are very desirable, now it's clear to me that I don't need claims in the PPA :).
I am working on mechanical device which consists of several interconnected mechanisms. Each mechanism is also independent and can be applied in several different-similar devices. Because I have many innovative solutions that works in that way, I'm trying to set up a licensing system that would allow me to apply these mechanisms separately for different devices and for different clients. I don't have an IP strategy yet, so I would like to leave enough room for different scenarios at the moment, to prepare the final strategy with attorney during the patent protection process (I would not like to protect all these mechanisms with one patent, but maybe I'm wrong). Another reason is that description of all this mechanisms in one application can be confusing, also for me :), to many drawings and different variations just for one mechanism, I need three mechanisms in this case (I have actually more than three, so additional PPA will be applied later on:). Yes, PPAs will be applied on different dates, but now that I understand that climes are not necessary in PPA, I can consider to join all together, I'm not sure, anyway I have some time to clear this up.
I have no experience with PPAs so far, my ex patent attorney advice me to not apply it, so I always start with "national- European" NPA. I have confidence to make a good PPA description of invention, I already did this for NPA and although the attorney was of the opinion that the patent would not be granted on this basis, it was later confirmed (he was not so experienced, but he defined good climes out of my description :). I am of the opinion that applying PPA is the right approach, and that the innovator must know how to write it himself, because that way he gets to know the innovation better and, over time, also strengthens himself in strategic IP planning.
Thank you for patent attorney list, but at the moment I will not engage one. The beauty of PPA is that is hidden, replaceable and cheap, so if the priority date is not so critical (my mechanisms are 10 years old now, and competition is still far behind me, so I can afford delay :), it can be replaced with new one corrected by attorney later. My goal is to get patent pending status and signing the business or NDA contract with the client first. After testing fully functional prototype (that will not disclose the mechanisms nor PPA, only functionality of the device), the client needs become clear according to specific market needs, then I will engage the attorney to prepare NPA and long term IP strategy. At least this is the my plan, I have to start somewhere, and honestly I don't se a lot of red flags, unless I overlooked anything. If you see red flags also after reading this, than I will consider your suggestion.
Thank you again for your willingness to help! It means a lot to me, and i will coming back with questions occasionally if you don't mind :)
@33samogo Ok. Look forward to your future questions.
@@PatentsDemystified Thank you. Yesterday I found a free 13ed of the book "Patent it Yourself" online that says the following;
"However, if possible, it is a good idea to draft some claims before filing the PPA, since this exercise will help you determine whether your detailed description includes everything necessary about your invention. Also some foreign jurisdictions may require that the application contain a claim to obtain priority. "
Do you have any idea which foreign jurisdictions are in question? (I do not care about Afghanistan market :) This book also states that climes in PPA are even not considered in examination, why is it important for someone to have a correctly written claims in PPA if it is not considered at the end?!
Yea, provisional patent applications are not examined at all, regardless of whether they have claims or not, which is why claims are not required in PPAs and why I never include them aside from a dummy claim for foreign priority purposes. (I'm not sure which foreign jurisdiction(s) this applies to these days but it's cheap insurance to just include one short dummy claim).
I would respectfully disagree with "Patent It Yourself" on this and would say that it's NOT important or a good idea to waste your time with correctly written claims in a PPA. You really just need to have adequate description in a PPA that will provide support for claims at the non-provisional application a year later; otherwise, the PPA can be worthless and provide illusory protection.
The rational behind the suggestion to draft claims for a PPA is that this will provide a roadmap for sufficient description that will actually provide protection. This would be true if folks were actually able to draft viable claims. But in my experience, folks spend tons of time and energy drafting useless claims, which then leads to them drafting a terrible description because their claims don't actually inform drafting the description and drawings and they also don't have the time and energy to draft a good description because they spent too much on their precious claims.
In my experience, the most efficient way for inventors to draft a PPA is to just focus on drafting an extremely detailed description of the invention and related variations with some simple coaching from a patent attorney to make sure the description has the right details and right level of detail to make sure it's not a worthless PPA.
Thanks, Dylan, that was a very clear and helpful explanation.
Thanks, Kate. I appreciate it!
Dylan, from your experience, what do most "office actions" comprise? Do they mostly relate to prior art problem (existing devices), or do they relate to actual technical problems with the design being patented (that is to say, does the device actually work as claimed)? Or are there other issues that come to the fore? Also, what do patent attorney's normally charge to respond to these office actions? Thanks for your help.
Hi James,
An Examiner will essentially never ask about whether the device actually works as claimed. They are technically allowed to in extreme cases, but I've never had an Examiner raise the issue aside from them not understanding the invention in general and wanting me to explain it. I'm sure you can find plenty of examples of inoperable or impossible things (e.g., perpetual motion machines) that are patented. Office actions are pretty much all about whether the claims as presented are new and non-obvious in view of he prior art. I would say responding to prior art rejections is 95%+ of the effort that goes into office action response (35 USC 102 and 103). There are rejections for lack of claim clarity of lack of support in the spec, but those rejections are typically really easy to respond to (35 USC 112). Depending on the type of invention, eligible subject matter rejections can be an issue and can take up a lot of time (35 USC 101). This happens in certain types of software applications and definitely in business method type inventions. The Examiner will point out typos and formalities like that, but again, that's pretty easy to deal with. Pretty much the whole examination is about the claims though, probably 99%.
Cost of an office action response depends on the attorney and the complexity and type of the office action and what all goes into it (e.g., doing an examiner interview, extra time talking with the client and doing analysis, etc.) but patent attorneys I know typically charge $1,500 - $6,500 for an office action response.
Thank you Dylan for all the awesome information on patents claims.
You bet. Glad it was helpful!