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Yes and NO (I repeat NO NO NO :)). Why am I saying this and what do I really mean? What is the Schwartz ABC rule? (explained shortly-it stands for Always Be Claiming).
The yes part is important to state up front. When you file your patent application, my guidance is that the timely completed draft application along with a review and editing of the independent claims be done by a competent patent counsel in your field of art (if they haven't already engaged in a lot more of the crafting/drafting work by that time). In other words, if you engage patent counsel early or alternatively later on... deferring by creating IDPAW entries in preparation for a utility compliant patent application invention disclosure to counsel, you will want to have their claim language and grammar editing (hahaha but seriously even though each claim is a run-on sentence, it has a semantic format that is nuanced by MPEP rules), before filing.
Then why do I admonish NONONO? In the Intellectual...
When engaging outside counsel to assist you in the process of preparing and filing a patent, you will always be asked to submit an invention disclosure document as part of the work flow. Often, you will be asked for this "early" as possible in the counsel's project plan since this is the basis for the drafting of a preliminary patent application. The invention disclosure will elicit an array of content components starting with the title of your invention, the inventors, the background and field of art, and so forth. It all seems perfectly logical...how can you ask counsel to work on a patent draft if you don't give them "the goods".
That said, it is a common misconception that you MUST give them the invention disclosure EARLY. In fact, if you have a proper internal utility patenting workflow, not only will you be keeping your invention as a trade secret until the time you choose, but you will also be developing an internal form of invention disclosure as part of your product...
We've covered the race track metaphor as a way to explain the nature of FOARs which can occur with even bonafide patent applications filed with the greatest of intent. But how can this happen with a team of dedicated IP professionals? And why do we use the "Hail Mary" metaphor to describe what this type of IP workflow looks like?
A patent application that is drafted and filed under time pressure, due to internal deadlines or 1 year rule restrictions has the greatest risk of carrying potentially Fatal Office Action Rejections (FOARs) in it's DNA. There are many reasons why this pressured delivery is part of the process and none of them are good reasons or excuses for allowing this to happen. If patent drafting is not part of the product development roadmap, then you and your team is susceptible to this ill fated situation. It is important to understand the symptoms of this in your IP workflow and to Use TSM and BBT to rework your IP sequence of events so that the patent application...
Is it possible that people so smart they are seeking Intellectual Property protection, could have even the inkling of a misconception about getting the right kind of protection?
Of course it is...because it's complicated. This is the perfect use case for "what's easy is hard, and what's hard can be easier". It's easy to say we're getting Ip protection but we know that is very challenging at the least. So if it's really hard, it can be easier with 20/20 hindsight and 80 more IP-IQ points...if you have some clarifications and guidance from a trustworthy source.
Welcome to this category and the posts here will seek to identify what you know and don't know, and what you don't know you don't know.
The rules for getting utility patents are complex and the execution of patent preparation, filing, prosecution, and use rights is a daunting task-akin to walking a slippery slope. Why? When you get into this game, can you act as a "player-coach" and both lead and show by example what and how to do it? It all begins with “changing the IP conversation “ by “knowing how the legal systems rules" (Manual for Patent Application Procedures-MPEP) work.
At the outset it is a slippery slope with this part of the execution plan...i.e. you have something you want to protect and there is an execution sequence to achieve it, within the legal framework, along with patent lawyers who run the rule book in real time.
We believe strongly that every IP-Champion, be it the CEO or one of the senior executives in product development, can and should be a “referee/player coach” in the game . . . knowing not...
This series of blog posts seeks to set the record straight on the goal of getting Utility Patents to publish with SCA (Sustainable Competitive Advantage).
In our definition, a patent that publishes with a CLEAN FILE-WRAPPER (no FATAL flaw do-over's) and with CLAIMS that broadly scope the PREFERRED-EMBODIMENT (P-E), will turn out to be patents with SCA.
Why? First, their chain of ownership will be identified with a published patent that has the right look and feel. Second, when ANYONE looks at the File Wrapper ( a public document from the Patent Office), they won't surface any chinks in the armor out of the "starting block". Thirdly, when they look at the object of their invention and what THEY want to go to market with, it will READ on the primary claims in the published patent ( and give them a moment of pause), and in this pause THEY WILL RECONSIDER whether to attempt to file a post publication action in an attempt to invalidate your patent.
Good enough. The simple IP model for...
The BBT takes apart the sequence of events from conception to market exit, assigns time stamps to critical events, and identifies T=O as the instance when the "universe comes into being"...the notice of allowance. This simplification, allows Schwartz to take a look "backwards in time" from T=0 and disect the risk components related to achieving Sustainable Competitive Advantage (SCA) patent applications. As you will see, the greatest risk is from T=-4 to T=-2.
Often what's hard can be easy, and sometimes what should be easy is actually very hard. The single most important catalyst in making hard things easier is a problem solving angle, often called a Point of View (POV). If the right POV is used, then a problem can be dissolved or broken down into solvable components, that in line of a sensible sequence of events, results in "problem solved".
With IP, one of the more complex domains to secure patents with SCA ( Sustainable Competitive Advantage), I have adopted a unifying POV...
"Land-Ho" . . . inventing is a little like sighting land after navigating with no land in sight and nothing but fog on the horizon...
Trying to explain inventing to another is a real challenge, and the exhilaration of discovering "it" can't be easily captured. "Land Ho" is my close approximation for now. All of a sudden, in a flash you know the invention... there's land. The Vikings sensed when they were near shore and would light the tips of their arrows, shoot them into the fog off the bow, and wait until one landed and the flames caught.
So Who Cares about the FLASH-OF-GENIUS, why did it really matter Before AIA(BAIA), and what is it's value After AIA (AAIA)?
This blog category seeks to explore this fundamental principle of inventing, the "AH-HA" moment, in the context of what it means to be First-To-File. Keep in mind that the rule book for any of this is the Manual of Patent Examination Procedures (MPEP). The requirements...
An inventor’s point of view: Schwartz unwinds and simplifies the understanding of AIA and what to do about it.
David C. Schwartz VP Intellectual Property, Eservgo/ Author IP-BC
FIRST, let's look at the key Dates when AIA provisions were enforced:
Leahy-Smith America Invents Act (AIA)/Patent Reform Act of 2011
Sept 16, 2012
Inter Partes Review(IPR) replaces Inter Partes Re-examination(PRE)
Post Grant Review (PGR) go into effect for patents filed after March 16, 2013
March 16, 2013
First-To-File (F-T-T) goes into effect
Ostensibly, the purpose of AIA was to modernize America’s patent laws, and mostly harmonize US patent law with the rest of the world. Specifically, it orders the shift from our long standing First-To-Inent (F-T-I) system to an F-T-F system...