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THE ONLINE
INVENTOR –
(c) 2009 Market
Launchers, Inc.
http://www.marketlaunchers.com
Editor:
Paul Niemann
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Dear Inventor –
This issue of our humble little newsletter brings you
another fine article written by guest contributor Ron Reardon, a patent agent
who is also President of the United Inventors Association as well as
past-president of the Inventors Club of Georgia. He has some good stuff –
well worth reading.
Also, 2 other things to mention …
1. I plan to start bringing you a new issue every 2 weeks, instead of the every-month-or-so schedule that we were on. Each issue will continue to have just 1 article.
2.
With the next couple of weeks, you will notice that the appearance of THE
ONLINE INVENTOR has changed. We’re going to be using a company called Constant
Contact to bring you a better format and to help manage the database of
subscribers better. And speaking of subscribers, we will NEVER give your e-mail
address to a third party, meaning that you will not get a bunch of spam as a
result of this newsletter.
If
you change your e-mail address,
please subscribe with the new address in
order to continue receiving it.
Now,
on with this week’s issue …
Best
Regards,
Paul Niemann
Paul
Niemann
http://www.MarketLaunchers.com
800-337-5758
217-224-8194
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CLEVER QUOTE: “To
get what you want out of life, you have to help enough other people get what
they want out of life”… Zig Ziglar
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“Did Your Own Patent Search? Found
Nothing? WARNING!!!”
by Ron Reardon of Patents & More, Inc.
A little learning is a dangerous
thing; drink deep, or taste not the Pierian spring: there shallow draughts
intoxicate the brain, and drinking largely sobers us again. Alexander Pope
(1688-1744) – An Essay on Criticism.
So, you did your own patent search on your invention, you did not find your
exact invention, and you are ready to file a patent application. STOP! WAIT!
WHOA!
One of the challenges of the internet is that we can be lulled into a false
sense of security, due to our assumptions and our eagerness to have a protected
and profitable invention in the marketplace. When it’s your invention and your
resources, you want to know that the outcome is favorable before you go
investing your time, effort and money.
Don Kelly, past Patent Office executive, wrote a great article in the UIAUSA
booklet, THE Inventor’s Master Plan,
outlining the different levels of prior art searches: the word search, the
classification search, the professional search and the examiner’s search.
Let’s say that you invented a better mousetrap, went to the U.S. Patent Office
web site at uspto.gov and conducted a Quick search (also known as a word search)
for ‘mousetrap’ for just the title field of issued patents, you would get
about 25 issued patents listed. Doing a Quick search on ‘mousetrap’ for all
fields would yield about 150 issued patents.
If you entered ‘mouse’ and ‘trap’ for just the Title field, you would
get over 40 issued patents; for all fields – about 3800 issued patents! Whoa!
After examining all 3800, one would think that would constitute an exhaustive
search.
But wait, there is more. What if the title and written specification did not use
the word ‘mouse’, but used the word ‘rat’, ‘mice’, ‘rodent’,
‘vermin’, ‘animal’, or ‘pest’ instead? (I am not making this up;
these are from issued patents.)
All these different words for mouse remind me of Bubba reciting the different
ways to prepare shrimp from the Forrest Gump movie: “Shrimp is the food of the
sea - you can: Barbecue it, Boil it, Broil it, Bake it, Saute' it, Shrimp
Kabobs, Shrimp Creole, Shrimp Gumbo, Pan Fry, Deep Fry, Stir Fry, Pineapple
Shrimp, Lemon Shrimp, Coconut Shrimp, Pepper Shrimp, Shrimp Soup, Shrimp Stew,
Shrimp Salad, Shrimp and Potatoes, Shrimp Burgers, Shrimp Sandwich, That -
that's 'bout it.” So it is with ‘mouse trap.’ You can have rat trap,
rodent trap, pest trap, animal trap, vermin trap, trap for mice, bait station,
lethal trapping device, baffled rodenticide box;’ the list goes on and on.
Your Quick word search might miss issued patents if they do not contain the
words you are entering; one of which might be an exact duplicate of your
invention. To make matters worse, the Quick search only accesses patents from
1976 to the present. That means that if your improved mousetrap was patented
prior to 1976, it is invisible to a Quick search -- not good.
What to do? Ah, there is the trusty Advanced Search, using patent
classifications. A patent classification search goes back to 1790. Once again,
you go to the Patent Office Web site and scan the patent classifications. Here
it is: 043: Fishing, trapping, and vermin destroying. Let’s look there.
Subclass 58: Traps, looks possible. An Advanced Search on ccl/48/53 yields about
90 issued patents. Are we through? Not yet. Your improved mouse trap might also
lurk in the following classifications: 43/60, 43/61, 43/62, 43/63, 43/66, 43/69,
43/71, 43/74, 43/81, 43/82, 43/83, 43/85, 43/98, 43/114, 43/124, 43/131.
Don’t forget the Design Patents. Classifications D22/18 and D11/119 may show
prior art that disqualifies your invention. Then there are off-the-wall
classifications, such as 206/466, that shows a mousetrap in a paper sack for
convenient disposal.
Whew! You searched diligently in all these classifications. Are you finished?
No. Don’t forget the published patent applications on the uspto.gov web site.
These count as prior art also.
In addition, a thorough prior art search examines foreign patents and non-patent
prior art, which are not findable on the uspto.gov web site. You will need to go
to fee-based sites for these or engage a patent professional.
(continued after the break)
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Finally, even if you did find all
the relevant prior art, there is still the need for a patentability opinion from
a Patent Agent or Patent Attorney. Each of the claims in the relevant prior art
should be examined carefully. Knowing the boundaries of the prior art is
essential information for crafting your claims.
Also, a patentability opinion should address if your invention is obvious in
light of the combination of two or more of the prior art (a common reason for
rejection by the Patent Office).
Filing a patent application without a professional search and a patentability
opinion is akin to setting sail over the ocean without charts, GPS and a weather
report.
Inventors' Digest's ninth commandment of Inventing says it best: “Do what you
do well and hire pros to do the rest.” I recommend that you supplement your
search with that of a professional.
Know before you go.
#
# #
Ron Reardon is a
patent agent and President of Patents & More, Inc. in
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