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Featured Article
Surviving Patent Examination
Finding the Right Buyer
Lean Startup and OA
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 Newsletter - November  2014
 
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Second Opinion

Surviving Patent Prosecution


 

Filing a patent application is just the first step in  long process.  This chart lays out the steps along the way.  In this article we are going to talk about what happens when the patent office finally gets around to reviewing your application (which is taking longer and longer).  Sometime ago I made a video on this subject which likens the patent 
examination stage (called patent prosecution) to a trial.  In this trial you are the defendant and the examiner is judge, jury and executioner (doesn't seem fair does it).

 

 

I should say at the outset that this article applies to non-provisional applications, not to provisional applications which are not examined (at least when first filed).


 The first time that you will hear that your patent is being examined is when you get a call or email from your patent attorney saying that they have received an "Office Action" regarding  your invention from the patent office.


 Don't get your hopes up just yet.  That first office action is often a disappointment.  It will be written in what constitutes incomprehensible legalese to most inventors and it will usually find one or more reasons to reject or alter your claims.


 The reasons vary.  Lately the office has been requiring inventors to divide their applications into multiple patents or abandon some of their claims.  See last months newsletter for an article on Division.


 The most common form of rejection is that the patent office finds earlier patents "prior art"  that alone or  in combination with other patents "teach"  the concepts disclosed in the application.


 

The numbers of  those patents will be disclosed in the rejection letter in legal language similar to this "Your Claims 1-10 are rejected as  being taught by Smith [US Patent x,xxx,xxx]  and claims 11-14 are rejected as taught by Smith when combined with Jones [US Patent y,yyy,yyy]]. 


 

The first thing you should do when getting such a rejection is to get copies of the  cited patents and read them.  Pay most attention to the claims.  The patents themselves  may  show inventions that look nothing like yours .  But if their claims "teach"  your invention it doesn't matter.


 So, for example, if your invention contains a novel filter which you claim for one use and their patent uses the same filter a different way, they still have "taught" the use of that filter.


 After you have read the cited patents and understand how your invention differs from theirs , its time to talk to your  patent attorney.


 Your attorney will likely offer you one  or more options such as- 1) Accept the patent office position and abandon some of your claims  2) reject the  patent office position with a contrary argument  3) Change the language of the claims to get around the office's objection.


 Changes such as described in the last paragraph are usually contained in a document Called a "Request for Continued Examination [RCE].  The patent office will give you a set period of time to file an RCE such as 60-90 days.  If you don't respond they will mark your application "abandoned".


 If you need to make changes to the patent outside of the claims you will need to file another document called a CIP for Continuation in Part.  This kind of an application allow you to add information anywhere in the body of the patent but it amounts to a new application and is more expensive than an RCE.  I think it also will reset the filing date to the date of the CIP.


 So as you can see, the patent prosecution process is complex confusing and expensive.  I've just touched the surface in this article.  If you are in prosecution and need help beyond what your attorney can supply (or to help  you understand what they he or she is telling  you) checkout our "Second Opinion" product.  We'll be glad to help you (and often save you money too).


 

Just call or email.

 

 

email  rblazey@businessmetamorphosis.com 

or  give us a call at  (585) 520-3539  

 


Where to find  the Right Buyers 
ITTr Logo
Most clients who come to ITTr with a patent to sell or license have at least some idea of who they want to sell it to.  The inventor is usually familiar with the field of the invention and who the big players are in that field. That is  usually who they want to sell their invention to,  and while we always put these companies on our target list they are often not the best prospects.

Big companies by their nature are very conservative and what's more they often have internal staff devoted to product development who view outsiders as a threat.  For this reason the better choices are often found among the less known companies who don't have the internal resources to develop their own products and have to rely more on outside sources.

Another important thing to consider is where in the value chain your product is best sold or licensed.   Most inventors focus on the end user of their invention , but unless you are selling to a retail store that is not the place to look.

For example, if you have invented a hardware product you might expect Home Depot to carry it, but Home Depot would be a very unlikely licensee.   What you need to find out is the manufacturer that Home Depot might buy your hardware product from.  They are  is a far more likely target.

Its sometimes tricky to find these manufacturers particularly as many retailers make use of their own "private" labels which don't identify the manufacturer.   Finding that manufacturer is one thing ITTr does for its clients.

Once you have found the best targets the next thing to do is to find the person at that company that would be both receptive to the idea of the invention and have the power to purchase or license it.

That is the person we need to contact for you.  They are not often found where you expect them in the company.  Often marketing people are much more receptive than engineering departments.  Marketing people want to get to the market faster with new products and don't care as much as the engineering department if the invention originated within the company.  They also don't care as much about abiding by company standard practices.

When I worked for a large company our engineering department laughed down a competitors product because it didn't pass our "Keeping Test #42 (or such).  That didn't matter to the customers who bought the competitors product in droves because. It served an unmet customer need . The customers could have cared less about Keeping Test #42.

So if you need help finding companies that might want to buy or license your product, contact ITTr.  We've been through this process many times and can help you navigate it.


For more information write to rblazey@ittrifecta.com or call (585) 520-3539

Lean Startup and Opportunity Associates

OA Logo

Recently I heard an excellent talk which described the technique called Lean Startup.  This process and its mantra of "Build, Measure, Learn".  This seems very will suited to companies that want to try out new product concepts or build new companies and do it quickly and and low cost.

As I read the Lean Startup  book which is linked here, I was struck by how well it aligned with the processes that we teach at Opportunity Associates.

OA helps customers identify and characterize growth opportunities facing their business.  What Lean Startup brings to this process is a method of testing these ideas in cost effective way.

In OA we help the customer develop what we call an "Opportunity Inventory"  which is a rank ordered list of opportunities facing the company.  When the company has a process in place to test these ideas rapidly and inexpensively, it can try out more ideas and find its new direction faster and cheaper. 

That is exactly what the Lean Startup method is about. If a company is already using that method then the OA process is a way to provide ranked content to be used with LS.  For example, Lean Startup teaches the generation of something which is called the MVP or Minimum Value Proposition.  The MVP is the lowest level refinement of a product that can be introduced into a marketplace to test the customer response to a new product.  Its a product that isn't in final form and lacks all the bells and whistles that you might want to put into it but it will gauge customer reaction and most importantly test the "hypothesis" the company is making that a particular type of customer will be attracted to a particular version of a product.

As a simple example, a product may be provided in a variety of colors but in the MVP it can be launched in only one color.  It may be that customers won't care about the color or they may request a different color product.

One of our clients has an automotive product that comes currently in one color.  In early tests it was found that some customers wanted it in a color that matched the interior decor of their cars.

Another place where OA and LS align is in the concept of "Pivots".  LS teaches that after you have tested out a business model and product , you may find its not working out the way you anticipated it would.  At some point then they recommend you "Pivot"  to a different business strategy or product design and do an other iteration of LS.   But which pivot should you choose? Its by no means clear.  OA will give you an organized  way to compare the Pivot strategies that are being considered in the company on the same basis.  That is a big improvement over fights or political battles.

To learn more contact OA


to rblazey@rochester.rr.com or
 visit our website at www.Opportunity-Associates.com
 or call us at (585) 520-3539
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
Disclaimers 

 
Please realize that this newsletter contains only our opinions on patent matters.  We are not authorized to give legal advice.  If you are seeking such advice please contact an attorney.
 

 

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