Category Archive:Coaching

ByCarolyn Keane

Patent Search 101: Why US Patent Searches are Critically Important

By Gene Quinn  January 13, 2018

US Patent Search: US Patent Searches are essential.Inventors will frequently ask why they need to spend the money on a US patent search, and all too frequently believe patent searches are unnecessary. There are various iterations of this question, starting out with “why do I need a patent search, I’ve already searched myself and cannot find anything,” to “there is nothing on the market like their invention, so why would a US patent search be necessary?” After all how could someone have ever come up with their invention?

Surveying the market is a wise first step, but there may be patents lurking. There are various reasons for this, but one big reason is because an independent inventor or small company came up with the invention previously, filed and obtained a patent, but then lacked the resources or know-how to bring the product to market. Then when others came up with the same or similar idea and found that issued patent they abandoned the project and never took the product to market because they could not own the exclusive rights, which meant that if the product succeeded on the market a larger competitor could simply copy with impunity.

It is also a wise first step to do your own patent search if you are an inventor. Spending time looking for related patents and perhaps even more importantly reading related patents is a very useful endeavor. If you can find a patent reference that you feel is too close for comfort then you have saved the money associated with paying for a professional patent search and/or hiring a patent attorney or patent agent.

Notwithstanding, I am always skeptical when I hear inventors say that they have done their own US patent search and have found nothing. Patent searching is as much an art as it is a skill, and if you are not familiar with advanced search strategies it is not surprising that you are unable to find anything too close, but rest assured there are always patents to find that are at least similar in some ways. I have put together a patent search tutorial, which will help give you some strategies. So absolutely start with your own patent search, but at some point before spending thousands of dollars to obtain a patent you should obtain a professional patent search and patentability opinion.

If you hire a professional patent search firm you may want to also consider adding an international patent search. Some search firms may already include an international patent search in the price, or at least a search of certain foreign databases. While US patent searches are essential, international patent searches are preferable if you can afford the extra cost.

The patent process can be expensive. The last thing you want to do is spend a lot of money preparing and filing an application when there is easy to find prior art that will prevent a patent. For this reason many inventors and businesses will choose to begin the process by paying for some kind of patent search. The expense of a patent application is saved if knock-out prior art is located. If no serious road blocks are found the patent search will normally lead to a better, stronger patent application and potentially smoother application process.

The reason US patent searches lead to a better, strong patent application is because the first application filed is absolutely critical. All aspects of your invention must be disclosed, nothing new can be added without compromising the all important filing date (aka priority date). After having done a patent search the initial disclosure can be specifically written to carefully define your invention so as to focus on what is most likely the patentable feature or components.

Who can do a US patent search?

Anyone can do a patent search using the online Patent Office database, but this database only contains patents issued since 1976, so such a search is not complete. Google has a patent search engine is very quick, and it includes patents going all the way back to into the early 1800s. Unfortunately, Google Patents has a limited number of searchable fields. Still, Google Patents is an excellent first place to start, particularly where you don’t know exactly what you are looking for.

How can you not know what you are looking for? The answer is simple. You know your invention, but likely won’t know the exact language patent practitioners typically use to describe the features and functions of your invention.

Many years ago I was doing a search on a bubble mailer, but couldn’t find anything initially. After spending a little time searching it became clear that the term “bubble mailer” was not the way that patent practitioners were describing this. I could have given up, but knew there had to be something. After searching I finally found a reference that described something similar. When I revised my search terms I found a trove of related references. To find the best results with a word search  you need to know how patent practitioners describe things in patent applications and issued patents, that is when the most relevant prior art will be located. Using Google Patents at least initially is very helpful because they search synonyms.

Next Steps in Your Patent Search

After you find some relevant patents you might find it helpful to switch over to FreePatentsOnline.com, which allows for specific fields to be searched. Indeed, using both FreePatentsOnline.com and Google patent search makes a lot of sense.

The best and most reliable patent search will be done by a professional that is intimately familiar with both advanced searching techniques and classification systems. If you are not familiar with advanced search techniques and classification you are almost certainly going to miss the most relevant prior art in your own search. So search on your own to see if you can find something without spending any money, and to educate yourself on what information is included in patents. Then before you file remember that it is better to spend hundreds of dollars on a professional patent search now than to spend many thousands of dollars only to learn later that a patent cannot be obtained.

Why can’t I just get a cheap patent search?

Before you purchase a no-frills patent search it is important to know what you are getting. Frequently, overseas providers are the ones offering bargain basement prices. These searchers may not speak English as their first language, and sending technical information overseas can violate US export laws. Respect for propriety rights may also be limited, making it culturally acceptable to take or share propriety information.

Having someone who does not speak English as their first language and who does not live in the US do a patent search is extremely dangerous. I have no doubt overseas searchers are intelligent, but the way you find references is by knowing how patent attorneys and patent agents would or could describe various features and components. Therefore, intimate familiarity with the English language and common usages of the English language are absolutely essential.

A cautionary tale about bad patent searches

One example on this point. Many years ago my firm had a client who literally invented a new hog trap. An overseas search company performed the patent search. We knew immediately that the search could not be relied upon. Of course, one of the problems is sometimes when you obtain bargain basement US patent searches it is hard to know if the search is reliable, which is why pay a little extra for a professional search by a reputable search firm make sense.

In this cautionary example the patents found related to a pipelines for commercial and industrial applications. Devices known as “pipeline pigs” are used to conduct maintenance on pipeline without requiring the pipeline to be shut down. According to Wikipedia these devices originally got their name because when used a high pitch squealing noise is made, which sounds like a pig. Obviously, the searcher who didn’t understand our inventor’s hog trap simply searched synonyms, trading hog for pig. We knew that the search was unreliable, but sadly bad searches frequently lead to elation because the search uncovers nothing even close, which makes the patent search suspect.

Does a professional patent search come with a guarantee?

Unfortunately, no guarantees can be provided. Pending patent applications are published 18 months after filing, which means not all relevant prior art can be found even with a professional patent search. Even with an exhaustive and professional patent search cannot locate everything pending and not yet published. Additionally, when you do apply for a patent it is extremely likely that the patent examiner will rely on at least some patents that you did not know about.  Examiner rejection are sometimes unanticipated. It can also be due to the fact that the description of the invention is unintentionally overbroad.  Sometimes it is because an examiner will weave together multiple patents to make a rejection.

Receiving a rejection from a patent examiner is as normal and common as paying taxes every April 15th. The key to obtaining a patent is to have an application with sufficient disclosure (both broadly defining and narrowly defining your invention) so that if an examiner does make a rejection or find prior art that you can amend your application as necessary to satisfy the examiner and obtain a patent. Therefore, it is important to understand that the goal of a patent search is not to guarantee that there is no relevant prior art that will bar patentability, but rather to investigate whether pursuing with the expense of a patent application makes sense. Patent searches allow you to make fully informed business decisions.

What about US patent searches from invention promotion companies?

There is absolutely a dark side to the invention marketplace, and inventors need to be careful. No better example exists than the Federal Trade Commission winning an injunction against World Patent Marketing, a company charged with devising a fraudulent scheme to use consumer funds to enrich themselves.

Part of the typical invention scheme is to tell you what you want to hear. Suspect companies tell you that they are excited to work with you and recommend a patent search that will cost around $800 (typically). Then they come back with great news, they cannot find any patents that relate to your invention, which should be a red flag. With nearly 10,000,000 issued US patents and many millions of published patent applications it would be quite rare for an invention to address a problem never before considered by anyone.

There are reputable companies you can work with in the invention space. When looking for a reputable company it is important to understand that the hallmark of a legitimate company is they will not do absolutely everything you need. Be careful when a company promises to be a one-stop-shop. While it is perfectly legitimate for companies work together, it is extremely unusual for any company to provide a professional patent search, engineering support, licensing services and legal services. Indeed, the ethics rules largely prohibit patent practitioners from working with these types of companies. So be careful (and suspicious) if you never get any direct contact with a patent attorney or patent agent.

Do I Need a Patent Attorney for a US Patent Search?

There is a longer answer here that deals with whether it is wise to pursue a patent application without a patent professional, but given the topic here relates to US patent searches for now suffice it to say that if you only pay for a professional patent search you are going to get just a list of patents that are relevant, or maybe copies of the patents. When you purchase patent searches you do not get a patentability opinion, nor do you get to talk to someone to help you interpret the results of the search. Most inventors want and need to have the results interpreted and explained by either a patent attorney or a patent agent, so if that is the service you are looking for be careful when you go directly to a patent search firm and purchase only a patent search.

For competent, thorough US patent searches alone you would pay at least $400 for something that is relatively simple and up to $800 to $1,000 for a search alone on something complex, or deals with software. This cost is for the professional patent search alone, and does not include the cost of an attorney to review the search and offer an opinion about patentability.

Before you hire anyone – here is a class you can take on your own time to start the search and save money – https://www.udemy.com/diy-patent-search-how-to-save-on-patents/

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ByCarolyn Keane

San Diego Inventors Forum – Speed Pitch Application

 

TOP DOG DIRECT

SPEED PITCH APPLICATION

San Diego Inventors Forum

DEADLINE FOR APPLICATIONS:  January 18, 2018

EVENT:  Thursday, February 8, 2018, 10:30am

Name:

City/State:

Cell Phone:

Email:

Name of Product:

Short (3 line) Description of Product:

Website (if applicable):

Image (include in body of the email only)

REQUIREMENTS:

  • Prototype or final product available to present
  • Consumer product
  • Reach a mass audience (Please know statistics on the size of potential audience)
  • Can retail from $9.99 – $39.99
  • Demonstrable — WOW demonstration
  • Easy to understand
  • New product that is not on the market
  • Short, two-minute pitch

Please send your application to:

Inventors@TopDogDirect.com

Subject Line Must Read:  February 8, 2018 San Diego Inventors Forum Pitch

 

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ByCarolyn Keane

MIT’s Take on Entrepreneurship

ENTREPRENEURSHIP IS A CRAFT.
HONE IT.

Entrepreneurship and innovation are synonymous with MIT. Big thinkers from around the world come to MIT Sloan Executive Education to take advantage of our renowned faculty, research, and resources that can help turn their ideas into successful ventures or social impact.

We teamed up with Professor Bill Aulet of the Martin Trust Center for MIT Entrepreneurship to assemble a collection of resources to help you get your venture off the ground. The Entrepreneurship Toolkit includes links to articles, a webinar, a 15% discount code, and other sources of business-building wisdom.

We hope these resources help ignite your entrepreneurial spark and guide your next steps. Click below and get the Took Kit

why-mit-sloan-executive-education

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ByCarolyn Keane

14 Incredible Inventions That Were Discovered By Accident

Sometimes the best inventions are discovered by accident.

One day in 1928, Sir Alexander Fleming returned to his lab in London after a two-week vacation to find that mold had developed on a contaminated staphylococcus culture plate. The scientist was searching for a “wonder drug” to cure a wide variety of diseases. A moldy Petri dish was not a part of the plan, but Fleming noticed the culture had prevented the growth of staphylococci. Further examination revealed penicillin, a powerful antibiotic that could be used to treat everything from tonsillitis to syphilis.

Sir Alexander Fleming’s careless mistake became one of the most important medical discoveries in history. Thanks to penicillin, the rate of death due to infectious disease is now 5% of what it was at the beginning of the 20th century.

What could you create?

What could you create?

ACCIDENTAL BREAKTHROUGHS

Today’s infographic, from Broadbandwhatever, highlights some noteworthy accidental inventions in modern history and demonstrates that not all accidents are created equal.

OTHER NOTEWORTHY ACCIDENTAL INVENTIONS

Coca-Cola
The 1880s was the era of miracle elixirs and across America pharmacists were cooking up “cures” for every conceivable ailment. Atlanta-based pharmacist, John Pemberton, capitalized on the trend by selling a French Wine Coca concoction that was touted as a cure for headaches and nervous disorders. Pemberton’s business hit a speed bump in 1885, when Atlanta banned the sale of alcohol, so he omitted the wine and created a coca-based syrup that could be mixed with carbonated water and drank as a soda. He named this new “brain tonic” Coca-Cola.

Velcro
Swiss engineer George de Mestral was out hunting in the Alps with his dog when he noticed burrs sticking to its fur. To satisfy his curiosity about what makes burrs so “sticky”, Mestral viewed one under a microscope and observed the tiny hooks that allow it to latch on to surfaces like fabric and fur. For years, Mestral experimented with a variety of textiles before arriving at a solution: Velcro, which he eventually patented. The technology was useful, but really began to take off in popularity when Apollo astronauts used Velcro to keep objects secure in orbit.

Teflon
Next time you’re making breakfast, remember that Roy Plunkett is the reason you’re able flip pancake with ease. Long before CFCs became the environmental super-villain depleting the ozone layer, the chemist was aiming to create a new type of chlorofluorocarbon. One day, when Plunkett returned to a refrigeration chamber to check on an experiment, a canister that had contained gas had vanished leaving a few white flakes behind. Upon examining the mysterious substance, he realised it had a very high melting point and was very effective as a lubricant. Teflon was first used in military applications and is now famously applied to cookware around the world.

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ByCarolyn Keane

Supreme Court of Canada Promises New Utility Test for Patents

What does “useful”, one of the basic requirements for the patentability of an invention, mean in Canadian patent law? On June 30, 2017, in AstraZeneca Canada Inc. v. Apotex Inc.(AstraZeneca), the Supreme Court of Canada (SCC) ruled that the threshold for utility is low — a mere scintilla will do. In fact, requiring anything more is not only overly onerous; it is incongruent with the Patent Act and antagonistic to the bargain theory on which patent law is based.

 PROMISE AS PART OF PATENT BARGAIN

To be eligible for a patent, the law requires that an invention must be, among other things, new, useful and non-obvious. Should a new, useful and non-obvious invention be denied patentability because a patent application and the resulting patent include a superfluous statement as to a specific level of utility that is not fulfilled at the time the application was filed?

The “bargain theory” of patent law is based on the grant to an applicant of the exclusive rights in an invention for a limited period of time in consideration for disclosure of the invention to benefit society. In recent years, a statement of utility in a patent has been considered a “promise”, forming part of the bargain. If a promise extended beyond that which could reasonably have been understood as a hoped for advantage at the time of filing the application, the patent was held invalid for a lack of utility. This is no longer the case.

In AstraZeneca, in a unanimous ruling, the SCC struck down what had come to be called the “promise doctrine” as “unsound”. In doing so, the SCC reversed years of judge-made law and more closely aligned the utility requirement with that of most of the industrialized world.

THE PROMISE DOCTRINE

The requirement that an invention must be useful is enshrined in the definition of “invention” in the Patent Act (Act). But how is usefulness or “utility” assessed?

In a 1981 decision, instead of defining what utility is, the SCC defined what utility is not. The SCC said that there is a lack of utility if “the invention will not work, either in the sense that it will not operate at all or, more broadly, that it will not do what the [patent] specification promises that it will do“. It is the latter part of this statement that led to the promise doctrine.

Over the years, the Federal Court of Canada has interpreted and applied the above language to construe a statement in a patent that speaks of an advantage, directed to what the invention will or will not do, as a promise. This “promise of the patent [was] the yardstick against which utility [was] measured” and had to be either specifically demonstrated or soundly predicted at the filing date of the application. In Canada, unlike some other countries, evidence of events after the filing of the application is prohibited. Additionally, if a patent included multiple promises, each had to satisfy the utility requirement independently.

BACKGROUND

In the above action, Apotex sought to invalidate AstraZeneca’s patent for the commercially and functionally successful esomeprazole drug, sold under the NEXIUM trade-mark, comprising salts of one of the two mirror image molecules contained in the previously known mixture, omeprazole. Both drugs are used to decrease stomach acid and treat gastric reflux and related conditions; the difference being that the single molecule was found to work better than the mixture.

Apotex succeeded at trial on its argument that AstraZeneca’s patent included a promise of utility beyond a “hoped for advantage”. Specifically, the construed promise said that the new drug is more effective than the previously known mixture and provides less variation in patients’ response.

Esomeprazole did provide an improved therapeutic profile, which did lead to a lower degree of individual variation. However, AstraZeneca did not specifically know this at the time the application was filed and only became aware of it through clinical trials that took place later. The trial court held that, on a purposive construction, the patent as a whole did not provide a sufficient basis to soundly predict this result at the filing date. Therefore, the patent lacked utility and was invalidated. The decision was upheld on appeal.

The result in AstraZeneca was due in part to the fact that the patent was a “new use” case, in which the esomeprazole molecule was previously known and the foundation for the invention was the new (or improved) use. A new use patent is subject to an elevated disclosure requirement, which is meant to prevent an applicant from making an unverified promise to obtain a monopoly on an invention that, but for the promise, would be in the public domain. Importantly, however, even under this standard, if no promise was made in the specification, a “mere scintilla” of utility would have sufficed and the patent would stand.

NEW TEST FOR UTILITY

On further appeal, the SCC considered whether a patented invention that includes a statement that could be construed to be a promise should be required to satisfy that promise at the time of filing of the application.

The biggest challenge the SCC appeared to have with the promise doctrine was that the promise could be found anywhere in the claims or the patent’s description, although the claims alone are traditionally analyzed for the other requirements of patentability and the description is only considered when there is ambiguity in the claims. The SCC concluded that there is no basis in the Act for looking to the description to satisfy utility, and doing so conflates two distinct requirements (utility and disclosure).

The SCC abolished the promise doctrine and replaced it with another, simpler test of utility that requires determination of:

  • The subject matter of invention, as defined by the claims; and
  • Whether that subject matter is capable of use for a practical purpose.

The SCC noted that any degree of usefulness related to the purpose of the invention satisfies this requirement.

WHAT’S ALL THE FUSS ABOUT?

The only reference in the Act to utility is the reference to “useful” in the definition of “invention”. The promise doctrine appears to have gone far beyond this requirement. As the doctrine became entrenched, numerous patents for drugs were invalidated for an absence of utility despite the commercial success of the drugs.

The costs to the innovative pharmaceutical industry of dealing with the promise doctrine were significant. To illustrate, after two of Eli Lilly’s Canadian patents were invalidated by the promise doctrine, it initiated a C$500-million claim against the Government of Canada, alleging that the doctrine violated the intellectual property standards under the North American Free Trade Agreement (NAFTA). Although the NAFTA challenge failed, the value of challenging the promise doctrine demonstrates how significant the SCC decision on utility will be for patentees going forward.

 

http://www.jdsupra.com/legalnews/supreme-court-of-canada-promises-new-94248/

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ByCarolyn Keane

24 Predictions for Social Media and Social Media Marketing in 2017

The end of the year is fast approaching, which means Christmas jingles, New Year’s resolutions and… prediction posts. And while the ever-shifting social landscape eventually renders many such prognostications invalid, it’s still worth analyzing what might be on the horizon as a means of trying to understand where we’re at, and where we’re headed, as we plan for the next 12 months.

Last year, my predictions mostly pointed in the right direction, so again, I’ve decided to get in early and put down a few of my thoughts on where each platform is going, before the upcoming onslaught of ‘looking ahead’ posts.

So here are my 24 predictions for each of the major social platforms in 2017, starting with the big one – Mark Zuckerberg’s ever-expanding giant.

Facebook

2016 has been another huge year for Facebook. They’ve added 197 million more monthly active users and recently crossed a billion mobile only MAU for the first time. The future of the network – as reiterated by Zuckerberg in their most recent earnings call – is video, with more emphasis to be put on live-streaming and 360 content in particular over the next 12 months. And that will cause a significant shift in the platform – here’s what you can expect.

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ByCarolyn Keane

3 TV Shows to Pitch to

Adventure Capitalists

We were invited to participate last season and now the show is a huge success. It is a great premise, 3 venture capitalist personally product test new outdoor adventure products. Talk about Shark Tank, last season they tested a new shark repellent device in the ocean with school of real mean looking sharks, giving new meaning to the term “wetsuit” for one of the capitalists. These guys are crazy and a lot of fun. Check out the show here http://cnb.cx/2eezoKK

They are looking for all types of outdoor products including but not limited to; camping, hiking, adventure, recreation, outdoor transportation, off roading, renewable energy, survival, etc. I suggest you watch the show and present accordingly. Here is the link to apply www.AdventureCapitalists.com   

Harry Wants Women

What a dream come true for the right women, Harry Connick Jr. is looking for women inventors with a great story to tell for his new daytime talk show. This is great exposure! Here is a link to the talent search http://bit.ly/2ddYLZb and here is a link to the show’s website https://www.harryconnickjr.com/

Dave Yonce Show

Below is the information they sent me about the show. Unlike most product hunts, shows are looking more for personality. Their guide lines are an education in themselves that everyone should read.

Asylum Entertainment and a major cable television network known for its loud, creative content is on the hunt for American entrepreneurs with well-developed concepts or prototypes for new inventions. To be considered, the invention must solve a problem, make a job more efficient, or make life more fun. Areas of interest include, but are not limited to, electronics, weapons, outdoor recreation, adventure, home products, automotive, and power tools.

If selected to appear on the program, Oklahoma-raised inventor and entrepreneur, Dave Yonce, will invest money and time into you and your product, developing it into a working prototype, and in some cases, partnering with you to build your business.

For more information, email:  Casting@tikicasting.com.

Thank you in advance!

Kristina Hauser
Casting Director 

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