Patent Law

Greenhorn

By Gary Odom and Jordan Kuhn

Young James McDonough displayed inexperience in an interview in the Wall Street Journal. McDonough blamed patent trolls for the USPTO tightening examination, when it was media coverage of carping by patent-infringing computer technology corporations that provoked a PTO political response. To blame enforcers of their IP rights is like a bad omelet cook blaming chickens for laying eggs.

McDonough knows better than to slam patent trolls. He took a lesson from Patent Hawk and spun a fine paper on the subject a couple of years ago.

McDonough advises a small company to "work with a skilled intellectual-property attorney to develop a plan for building your IP portfolio" "before patenting." Small companies can't afford such luxury, Diamond Jim. If you have a patentable idea, and think it may have commercialization potential, either by yourself or others, forget the castle-in-the-sky portfolio planning and hustle to a patent agent.

McDonough confused specification with claims.

Often, an inventor's instinct is to describe his invention by describing its specific parts, which can result in inadvertently limiting the scope of the patent. As a general rule of thumb, the claims should include all possible versions of the invention, which can be accomplished by using broad, functional language in the patent.

A patent specification should cover as many variations and potential inventions in the specific area as possible. Each patent is for a single invention. A good patent specification should offer the potential for numerous patents, called divisionals.

McDonough hit a nail on the head:

The inventor and attorney will work together to refine the scope of the patent to ensure it is as broad as possible while still being able to withstand a lawsuit.

McDonough figured it costs $10,000 to $30,000 to get a patent, and up to $1000 for a patentability search. You can get a top-quality patent from Platinum Patents for $10,000 or less. Patentability searches by premier searcher Patent Hawk cost $600 or less.

McDonough on invention development:

An inventor may want to apply for a patent at the wrong time. For instance, it may be too early if the invention is not yet developed to a point that it can be sufficiently described in the patent.

Platinum Patents helps inventors develop their inventions, including pointing out the particular areas that need fleshing out to enable the invention, and suggesting extensions and variations. Top-drawer prosecutors regularly assist this way.

On enforcement, McDonough showed that he's no litigator.

[G]enerally it's pretty difficult to bring an infringement suit against a really large company because of the amount of resources available to large companies as compared to small companies... So, it's often not ideal for a small company to try to sue a really large company.

Patent Hawk can set anyone up for enforcement of a quality patent with a contingency law firm. As Todd Rundgren once sang, "If I thought I knew what was good for you I would have gone and done it for myself."

Apparently, declaratory judgment actions aren't in McDonough's view when he wrongly advised small fry to try to cozy up to infringing large fry:

You might approach the larger company and offer a license, or attempt to establish a partnership.

If you have an infringed patent, the last thing you want to do is approach the infringer. Hire a patent attorney, or, if you don't know a good patent attorney, contact Patent Hawk for referrals.

Full post as published by The Patent Prospector on August 11, 2008 (boomark / email).