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Search Too Good?
What Buyers Also Want
REALLY Listening to the Customer
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 Newsletter - February 2011
  This newsletter is for the benefit of: our customers both current and past, our workers , board members and friends including those of you we haven't talked to recently. Please feel free to forward to others who might be interested in our activities

Can a Patent Search be TOO  good?

 

At BML we work with both inventors and patent attorneys and agents.  Often I have had attorneys and sometimes clients as well suggest that it is risky to make a patent search that is too thorough.

 

Their reasoning is driven by the premise that its not smart to tell a patent examiner about some piece of prior art that he might use against you.  I'm told  the reason for this is that the law requires that you share with the patent office anything that you learn that is relevant to your case

 

This principal is similar to  an attorney telling a defendant not to share information with the police that might then be used against them in court.

 

I disagree with this concept but I'm open to input and I encourage those of you who disagree with me to comment on this article. 

 

Here's my argument.  Unlike the prosecution in a criminal case the the patent examiner has access to the same library of information as does the inventor.  The examiner also has access to the same or superior searching tools.  The examiner will always do their own prior art search,  in fact if you check your bill from the USPTO you will find you have paid for it. 

 

If you don't do a thorough search you risk the examiner finding something out that you and your attorney have had no chance to prepare for.  I've had this happen to my clients several times and it is always a very unnerving and disruptive experience.  This is particularly true when the examiner doesn't show his or her  cards all at once but turns  up a new piece of prior art every time the attorney and inventor succeed in neutralizing an earlier one.

 

My feeling is that it is far better to follow the Boy Scout motto and "Be Prepared"  by knowing what the examiner might use against you and have crafted the claims to defeat arguments that might be made using that information.

 

There is however, one time when I agree with the other side of this discussion .  An examiner may combine pieces of prior art using an "obvious combination" argument.  I agree its not smart to make those combinations and then have to share them with the examiner, because unlike particular pieces of prior art, the examiner has no database of "obvious combinations"  to search and must determine those combinations him or herself.  Its probably better not to share strong combinations if the examiner might devise weak ones when left to use his or her own resources.

 

 

 

 

 

 

 

ITTr Logo

The Other Things Buyers Want. 

At ITTr our job is to connect buyers and sellers of intellectual property such as patents.  However even when a prospect shows interest in a property it is often not enough to complete a sale.  The buyer often wants to know much more about the invention than is described in the patent.  For a chemical patent  samples are often requested as is health and safety information.

For a software patent a demonstration is often requested  and in the case of an electrical or mechanical invention a working model is highly desirable.

Often these elements exist in the laboratory of the inventor or did in the past , but since patents take a long time to be issued  , in too many cases the inventors dispose of the chemicals and break up the demonstrations to make other inventions.

We strongly encourage inventors to keep samples and demonstrations around so that they can be used to support a patent sale.  Also a bibliography of relevant documents such as MSDS sheets on chemicals and other supporting literature is very useful to have.   Its only serious prospects who want to see this information but it is often mandatory to make a sale.

ITTr offers one sale format that can be helpful in these circumstances.  Sometimes a prospect will be willing to fund some of the research needed to prove the invention will work in their application. 

 In that case we suggest they by an option on the invention.  A 60 or 90 day option to buy which is sold at a fraction of the price of the sale or license price can be used to pay for some of this research.  If the prospect decides to buy, the cost of the option is subtracted from the selling price, so its in the buyers advantage to purchase one.

To learn more about Option sales consult the ITTr Website.  

Penguin Logo

Rochester Penguin Group

REALLY Listening to the Customer

 

Penguins Market-Sonar product is a variant of Voice of the Customer calling which is a time honored way of finding out what customers think about your existing products or your potential new ones.  However we have found that the means of listening to the customer vary significantly among the VOC products offered by different companies.

Some companies will provide a questionnaire to be answered by mail or on line.  Other companies will conduct focus groups. Penguin , with other companies conducts telephone interviews with customers based on a customer selected script.

The advantage of our method over the others is that its more open ended and allows the customer to volunteer information and provide elaboration on questions that are constrained when the customer simply provides the pre-selected answers to a questionnaire.

To learn more about what Market-Sonar can tell you about the market's acceptance of your new or existing product, visit the Penguin Website.
We appreciate your responses to our newsletters.  Please send us your comments.  We are always interested in what you want to know.
 
Sincerely,
 

Richard Blazey
Business Metamorphosis LLC

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