Patent Office Changes Classification Rules

For as long as I've been working with patents the US patent office has worked within a system which classifies patent applications by group.  This system was known as the USPC system for US Patent Classification System.  Along with the US system there was a European system which used very different categories. 

 And there was also a somewhat hybrid system called CPC [for Cooperative Patent Classification) which  is more like the European system but is based on an agreement between the US and European patent offices.  Now the US Patent office has decided to switch from the venerable USPC to the CPC.

This would seem an arcane issue to most inventors, if it weren't for the fact that it can have a profound effect on how their patent application is prosecuted.

For some time the  patent office has been forcing inventors to divide their patents into several pieces.  This forces the inventor to decide which set of claims to argue, or to file and pay for multiple patent applications.  

With the original class system the classes were somewhat broad.  Now with the much finer detail of the CPC system a patent that fit nicely into a USPC class may have to be divided into several CPC classes.

I faced this issue recently with one of my clients, who had this restriction to CPC classes sprung on him in a patent prosecution that had originally been based on a single USPC class.

The client then had the choice of dividing the patent into new classes as the examiner had requested and then choosing one or more of them.   Or he could contest the examiner's classifications.

If the inventor had accepted the examiners ruling, he would have had to either drop 2 of his 3 sets of claims, or pay for separate patent applications on each group.

Since it was also possible to contest the examiners division of the claims, there was an option available that could result in loosing less claims and filing fewer patent applications.

Of course, the examiner being the final decider, there was no certainty that the revised claim division would be accepted.  In that case the patent attorney recommended a "default" class be chosen and that the examination would go forward with that class if the examiner rejected the clients argument.

This rule change has resulted in added complexity and cost for my client and his attorney.  I have read there are some patent professionals opposing this change by the USPTO.  I may report on their efforts in a later newsletter.

Meanwhile if this happens to you,  checkout our Second Opinion product we may be able to help you deal with it.

1) Technical People

2) Marketing People

3) C-Level Executives

To actually make a sale or license deal you will probably have to deal with a C-Level executive,  and many experts will advise you to start with them because they have the authority to make a deal.  However they are by far the most difficult people to connect with.  If you have or can develop a contact with one of these people you should probably use it,  but realize that C-Level's time is extremely limited and your pitch had better be letter perfect when you make it to them. 

Jeffrey Gitomer has a video on marketing to C level executives that I recommend if you can get it.  There is a also a chapter in the book "Accelerants"  called "access the castle" that may help.

Technical People are often the easiest for inventors to talk to.  They understand the technology of the invention and may often offer helpful suggestions and questions, but they usually don't have the authority to make deals.  The best they can do if they are really interested, is to pass the inventor off to someone in the company who does have the authority to make a deal with a recommendation to consider the invention and with their backing for its technical soundness.

Marketing people are the next easiest to talk with.  If they see a market need for the inventors product or service that  looks like it might be a winner for the company, they can be vital in convincing the C-Level executive who can make a deal. 

 Marketing people are much less interested in the technology and how it works.  What they want to know, is what can the invention Do [its benefits}  and who can it serve [the potential customers] ,  how  big is the market for the invention , and finally who are the competitors and how good are their offerings. 

Recently OA changed its focus to become more of a mastermind group helping its members with issues in their businesses.  As we are respectively, a Business Coach,  An Innovation Coach and a Patent agent we all focus on different aspects of helping entrepreneurs make a success of their endeavors.

Member Bob Lewis of Advicoach has introduced us to the Book  "Scaling Up" but Verne Harnish,  the author of "Mastering the Rockefeller Habits.  Since both Bob and I have used Harnish's One Page Strategic plan for some years it made sense to jointly review this  update of his original work.

One great feature of both the first book and this sequel is that it has links to the scaling up web page which includes many helpful resources.  The book  is organized in 4 sections:  People, Strategy, Execution and Cash. 

We are now reviewing the People section of the book. In this section Harnish invites the reader to fill in three forms.

• The One Page Personal Plan OPPP
• The Function Accountability Chart FACe

"This chart lists the functions that must in all companies. Even startups have them all even if its the founder doing everything."

• The Process Accountability Chart PACe

just email to rblazey@rochester.rr.com or

 visit our website at www.opportunity-associates.com