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Re: Don't forget about the infringment analysis

Postby apapage » Wed Nov 25, 2009 7:08 am

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The freedom to operate is a different opinion and most of the time the search for that opinion is much more comprehensive. But in all of the patentability opinions that I have given over the years, I always looked at the claims of the patents that were the most relevant to make sure there wouldn't be a problem with infringement.

As to willful infringement, the infringer must have actual knowledge of the patent. This creates an incentive for many to avoid the freedom to operate search. Another way to avoid willful infringement is to get an opinion from a patent attorney that states that there is no infringement.

In terms of the attorney's liability, I think it is rare if at all that an attorney has been liable for a legal opinion. Even so, people worry and they put in all of the disclaimers in the opinion so that the client is aware that the opinion is not fool proof. For example, there is no guarantee that the search revealed every relevant patent out there. When I worked as an in-house attorney I had the benefit of sending a search to two different search companies and performing the same search myself, and in the end each search revealed different art. What this tells me is that each of us could have done more searching, but how much is enough. Clearly in that instance roughly 24 hours was better than the 8 hours each of us spent on the search, but the cost would be three times as much. So which is the right approach? The answer is that it depends on the risk. For example, if you are going to file a patent application for around $3000 in hopes of licensing your invention, then it doesn't make much sense to spend $3000 on a freedom to operate type of prior art search. If instead you are going to invent $1,000,000 to start producing a product, then it makes sense to spend the money on a better search. Interestingly, in litigation defendants typically spend tens of thousands of dollars on a prior art search.

Re: Don't forget about the infringment analysis

Postby Scrupulous » Wed Nov 25, 2009 4:47 pm

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And in most cases, a defense to an infringement suit would be about the only appropriate time to spend that much on a search. By then, the relevant in-process patent applications that would not have been available to the plaintiff, at the time he or she filed for the patent, would be long-since flushed out of the confines of the patent office. Most would agree that it doesn't make too much sense to spend anything more than a few hundred on any search prior to filing for a patent, simply because there could be a number of infringable applications held in secrecy by the patent office itself.

That's fine, too, because it increases the chances that infringing companies are willing to settle out of court...and well before any legal assistance is actually necessary (depending on the case).

Re: Don't forget about the infringment analysis

Postby abacus » Wed Nov 25, 2009 6:22 pm

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Hi apapage,

The opinion I was talking about cost $1240,about 3 hours work,based on a patent search which had been done separately.It was a lot of money to pay for a document riddled with disclaimers.I think it is a contentious issue.My thinking being that the last thing you want to see,having sprung mega-bucks to a highly paid professional,is a bunch of disclaimers.
Do other professions not have some insurance policy to cover practitioners for ineffective work,doctors for instance?Maybe if patent attorneys took a cut in pay,and introduced an element of an insurance premium into their charge,which allowed them to assume liability,then their service and charges would be acceptable.
Apapage,you are a diligent practioner,and are looking out for your client,but disclaimers are a great way to not perform and still charge lucrative costs.
i'm not sure if it is a common thing for a highly paid profession to be able to practice without some liability or guarantee of adequacy,and some sort of back-up,i.e.insurance policy,for cases when it doesn't come up to scratch.

With only 2 or3% of patents ever making money,there is seem to be good grounds for a commercial feasability appraisal,as well as a patent search,patentability opinion and freedom to operate opinion.

It seems to me that a commercial feasbility opinion should be the first step.And it seems to me that inventors have to be able to hear the bottom line,and gradations from there.
And also to think/know that they'll have other ideas,or have other ideas with potential.
The think tank offers a real potential of cooperative inventor support.

i know I'm drifting,but the more you think of it,in any direction,the more you see the need for a framework.
i was thinking of an analogy,and scuba diving provides one of sorts.
You maybe busting to explore the oceans,but there are basic rules and procedures you have to follow to use scuba gear.
Lots of bodies of people subscribe to a constitution which is a product of collective recurring experience.

It seems to me that if there was a consensually arrived at framework of practice[say],that various ranges of experienced inventors developed and signed up to,and that was available at most inventors' networks,resources,forums,etc.with room for cooperative work and support,inventors may be in a better position with less involvement in toxic situations,and achieve greater impact with their efforts.

Re: Don't forget about the infringment analysis

Postby Scrupulous » Wed Nov 25, 2009 10:56 pm

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Hey, now we're talking.

Wow, Abacus!

(I had no idea...)

Re: Don't forget about the infringment analysis

Postby Mike Burke » Thu Nov 26, 2009 5:27 am

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I want to put forward a statements that are open to question by all means.

A patent system that is serving the needs of huge corporations alongside small inventors becomes overly expensive to legally negotiate in part because of the preponderance of law which seeks to throw a blanket over a range of complex issues beyond the specific needs of small inventors. By now we have the situation where if any challenges do exist the legal wrangling takes so long that it is in danger of being outstripped by the fast pace of changing technology. Costs are high and even with a Patent in place given multiple separate jurisdictions and the possibility that you may have to defend the thing in court it is questionable whether the system can faithfully deliver the protection which it purports to. After all if your IP value is in the lower range of perhaps millions rather than billions then your capacity to fund a legal defence probably dictates that you're bluffing with the threat of bringing suit. In that context the infringement analysis you have to make is whether you can afford to protect your IP.

Re: Don't forget about the infringment analysis

Postby Derek Pater » Sat Nov 28, 2009 4:59 pm

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I want to put forward statements that are open to question by all means.
A patent system that is serving the needs of huge corporations alongside small inventors becomes overly expensive to legally negotiate in part because of the preponderance of law which seeks to throw a blanket over a range of complex issues beyond the specific needs of small inventors. By now we have the situation where if any challenges do exist the legal wrangling takes so long that it is in danger of being outstripped by the fast pace of changing technology. Costs are high and even with a Patent in place given multiple separate jurisdictions and the possibility that you may have to defend the thing in court it is questionable whether the system can faithfully deliver the protection which it purports to. After all if your IP value is in the lower range of perhaps millions rather than billions then your capacity to fund a legal defence probably dictates that you're bluffing with the threat of bringing suit. In that context the infringement analysis you have to make is whether you can afford to protect your IP.


This is why this method is the best for Inventors with a low budget (being many Inventors) in the below quote, conventional methods are flawed ask the 98% of all Inventors with Patents why going the traditional method is very costly, because they have a nightmare and not happy dreams!

Re: Prototyping-eyes wide shut.
by abacus » 28 Nov 2009 08:54
“This the right time and the most important time for the Inventor and the Patent attorney to sit down and organize the Patents to be applied and the reason why half of Asian Manufactures prefer a clean skin Invention (That’s with no Patents), this gives them control on how the Patents are written and applied..'
Very good,Derek.
There is a clear difference between a patent written around an invention,and one written around a developed designed,market-ready,invention based product.
Mike said something about it giving companies a more focused defense strategy.
You can see the sense of a 'clean skin' policy,offering designed,invention-based products,using NDA's,and then the patent being written around the finished commercial product,enabling companies to effectively plan around the patent.
Patenting then is at it's most effective,and written within the context of market realities and optimum defense.
It makes compelling sense.


Even if the above method does not work out, you the Inventor have risked a lot less, after all royalties are only from 2.5%- 10% why spend all that money for a possible dream, the other thing I need to make clear there are so many Inventors out there whith Inventions that do not have any Value, so make sure you do your research marketing and Patent, also products that have not been Patented research them also

http://www.inventionsecrets.net
:D :D

Re: Don't forget about the infringment analysis

Postby toad » Sun Oct 03, 2010 3:08 pm

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Hello all,

This is my first post here.I have enjoyed all the info so far.But one question nags at me in relation to the matter of "should I patent it" or "can I patent it". How is one to answer that question? Another question I have is--is it worth going for a U.S. patent or global one?

Re: Don't forget about the infringment analysis

Postby apapage » Sun Oct 03, 2010 7:21 pm

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The question of can I patent is answered in relation to the prior art. The relevant question is what is new about your idea. Once you identify that, it is a matter of determining whether that novelty is obvious. There is a lot of case law to consider in answering that question, so its best to ask a professional.

The question of should I patent should be business decision that takes into account the cost of patenting vs. the value of getting a patent. The cost is fairly easy to ascertain. The value on the other hand is not as easy and will vary depending on the circumstances. For example, assuming you have a product that nets 100m per year and the patent can prevent anyone from copying the product. That patent is then worth 100m per year. If you consider the cost of between 10k and 20k to get the allowance, then the answer is yes you should get a patent. On the opposite end, a product that will gross 10k will likely not need a patent that will cost over 10k to get the allowance. The key here is to determine the potential of the product and to what extent that the patent will keep the competition away.

There is no such thing as a global patent. Unfortunately, each country that you are interested in must be pursued independently except in a few instances (Europe for example). There are International patents, but the international PCT application must be filed national in 30 to 31 months in each country that you are interested in.

Re: Don't forget about the infringment analysis

Postby toad » Tue Oct 05, 2010 12:25 pm

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Thanks for the information Apapage. That makes it a bit clearer.

TOAD
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