IP SAVVYS Blog - select posts by role/title or by category

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...

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...

"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...

Wrong :) You know that they still matter since your invention notebook is your iterative innovation tool. Yes, at one time, when we were First-To-Invent (FTI),  it's role documenting your initial conception, played a more critical role in establishing patent priority and monopoly rights. Even with the new AIA First-To-File (FTF), date of conception can still play a role in certain circumstances, especially during infringement battles that might result in an injunction or the payment of forced royalties. But that's not my point here. The importance of Schwartz's Big-Bang-Theory of IP Capitalization and the factoring of The Schwartz Method (TSM) into Product Lifecycle Management (PLM) has a more fundamental role.

Achieving FTF on a true Preferred-Embodiment (P-E) is a matter of integrating patent preparation into every nook and cranny of the product development road map. The days when the luxury of filing unfocused provisionals and drafting the patent on the P-E as an...