John Klinger, a licensed ME
and consulting engineer specializing in product and tool design and an
independent inventor, did what many entrepreneurial design engineers dream
about: He applied for and received a patent for a compact pneumatic actuator
with high thrust that he designed (US 7,267,044).
The following string of
emails is an extraordinary and behind-the-scenes look at the patent application
process and subsequent market research efforts through an exchange between
Klinger and an engineering friend, Glen, about their personal impressions while
navigating this unfamiliar territory. John was pursuing the patent for his actuator,
while Glen was working with an IP law firm on behalf of his employer to seek
patents on the improvements he was making on an existing product line.
The email conversation took
place between September 2007 and March 2008, 15 months after John first applied
for his patent. John was granted the patent for his actuator on September 11,
2007 and is currently researching potential uses and licensees for the
technology. His detailed design for a working prototype has been sent out for
quotes. Glen's first application, filed through an IP law firm, is pending.
Three more applications are in progress.
End of Summer already?
the only real
professional excitement here was hearing from the Patent Office - the
examiner looked at my application (15 months after filing), asked for copies
of two British patents I cited, asked if he could simplify my Abstract
("Yes, by all means!"), then sent me a Notice of Allowance, meaning
my application was accepted as patentable. I sent the Issue Fee a month
ago and am still waiting for them to send the Patent Number - a copy of the
Deed of Patent is supposed to follow a month later.
My father-in-law has a
friend whose son is a patent attorney and I talked with him. His firm
bundles technology patents (mostly) into portfolios for licensing and
sale. My pneumatic actuator didn't fit with their market (no surprise
there). The interesting (and shocking) thing is that even this law firm
can't really gain the attention of the corporations in the position to
license or buy the portfolios unless firm has detected an infringement.
That's the business model: Find an infringer, send a letter to the
infringer's legal department which says "Let's talk about licensing."
p.s. I tried to find out
what's happening with my Patent through the PTO's web site, but there was no
info. I did discover, by accidentally mistyping my application number,
that the application just before mine was rejected.
Boy, have I learned a lot
about obtaining a patent (most likely, I've only scratched the surface):
You MUST do a patent
search first, to make sure that there are no other designs out there that you
will be infringing on. There is so
much red tape and many hoops you must jump though, if I had to do it on my
own, I am sure I would give up out of frustration alone.
Our Patent is almost
done and the Patent Attorney's office claims that it will be released to the
patent office by the end of the year.
I will not be holding my breath.
I am sure you all ready
know about how to do a patent search, but I found that Google's patent search
engine: http://www.google.com/patents was
fun to search though, or The U.S.
Patent and Trademark Office web site: http://www.uspto.gov/
(Just type in key words to search). I Also Googled: (How to Conduct a Patent
Search), just to get tips and ideas about the process. I made our drawings.
One thing is for certain,
and that is; we would have never made it this far, this fast without a Patent
Attorney. In fact, I would never try
to do a patent without one. They have been invaluable.
Your Arizona Patent Contact.....Glen.
re: Patent search
Dear Arizona Patent Contact
I expect you'll get more comfortable
with the patent reading & writing (which is the bastard child of
engineering and accounting/law).
In addition to the PTO website, here are some other search aids:
I did not know about the Google search aid, nor have I tried to find
Japanese, Taiwanese, Chinese, Indian, Russian, or South American
patents. For an overseas patent application I would definitely need an
attorney versed in such.
Naturally, it is only the claims at the end of the patents where you are
concerned about infringement - I think you almost have to make Venn diagrams
to figure out just what they cover and don't really cover. Also, if
aspects of your invention are described in either active or inactive patents
(and not actually part of the active claims), those aspects are already
disclosed and not patentable - but that doesn't mean your invention is not
patentable. Pictures are probably the quickest way for guys like us to
As I probably mentioned before, I found every component of my actuator
described in principle -some even in detail- in other patents, both active
and inactive - so I made sure that those could ALL be traced back to old
expired patents (and therefore not claimable by the new ones). In fact,
I cited the very oldest patents relating to those details to indirectly
emphasize (is that an oxymoron?) they are not currently protected. What
my actuator had which prior art did not was the combination of all those
components, and it is the combination which presents the advantages.
The hardest thing about patents is that although they are granted for the
dissemination of knowledge, the language is concise to the point of
incomprehensibility (for the purposes of legal action). Like you
wouldn't know all this!
I like the drawings - thanks, and I enjoy hearing about your travails.
No word yet from our
However, I did receive a
$75 retainer from my employer for my efforts thus far, and looking forward to
receiving 1K more for my part in the feeble attempt to improve the
The subject "Pandora's Box" is my comment on the patent
business. If you haven't been through this part yourself, you might
find it funny. I AM going through it,
and it's still funny!
The Deed of Patent arrived last Friday, and with it three letters from IPFs
(Invention Promotion Firms) all congratulating me and saying how eager they
are to develop and promote my invention (and they each cite my patent
number). None, clearly, had actually looked at the patent nor had any
idea what it was because they all brag about selling or licensing inventions
to Walmart and such (yeah, right!). One had a 6-page, full color
brochure, but no actual information about just what THEY do or how they do
it. Another, from a local company in SF, was more circumspect, but when
I looked at their website, it didn't work. There was only a clickable logo,
but clicking on it only brought the logo up again. And again.The third one
had a full page warning inventors about the sneaky tricks of other IPFs.
So I googled IPFs and found not only lots of businesses out there
"promoting" new patents, but an inventors' Internet forum in which
a significant amount of space is given to sharing stories about IPF scams,
frauds, and other nasty things - apparently many if not all IPF want the
inventor's money up front before they do anything significant, and they also
pressure the inventors to sign exclusive licensing rights to the IPF and so
on. Those kvetching inventors (and they have a right to kvetch) seem to
feel we're better off without the IPFs. Maybe so.
The USPTO has a page for complaints about IPFs on its website. The
Patent Trademark Office does not investigate the complaints (Congress does
not empower it to do so - they have a hard enough time just examining the
applications with the limited resources allocated), but lists the complainers
for each IPF. The three that sent me letters were not on the list, but I
gather from the forum that some of the worst IPFs change their names
Then, in Monday's mail, came four letters from companies making plaques (with
either a fine laminated copy of your patent or an etched plate, mounted in
handsome oak or walnut frames) ranging in price from $80 to $300. I'm
almost looking forward to seeing what today's mail brings.
The Deed, by the way, is a soft-bound copy of the patent with an official
looking seal on the cover. It's in the fire-resistant document box with
our pink-slips and diplomas. I might just print a copy of the patent's
1st page to frame - the PTO enables one to download TIFF files of every
patent, albeit one page at a time.
More curious patent news:
All this commotion got my enthusiasm worked up, and I wanted to see if I
could identify the killer-app for my actuator in the drilling industry (they
need things actuated down in the boreholes, presumably, and there isn't much
space, and that industry has mucho dinero). Not knowing anything, really,
about drilling technology I thought looking at patents for borehole devices
would be a good turtorial - and it turns out that was a good guess. In
fact, patents seem like good tutorials for almost any technology. Still
want to build your own personal submarine? You can learn how to do it
studying patents, I'm sure. So I've been trying to figure out just what
drillers do besides chewing through the lithosphere - and what they do it
with. There are Packers, which brace against the bore walls and
typically form a seal as well. There are Whipstocks, which jam in the bores
and force milling and drill heads to deviate off at some angle for lateral
drilling. There are Formation Testers, which seem to sample stratum effluvium
and maybe more - that's as far as I've gotten.
That is kind of tedious, even to an avid novice like myself, and I relaxed by
doing a USPTO search on my grandfathers. My folks told me that my Dad's
dad (also a John H. Klinger) had a patent for a frame that one fits in one's
suitcase to keep one's suit unwrinkled. This seemed like a good family story,
and a copy of the patent would make it better. Didn't find it, but I
did turn up two (2) of my grandfather's patents for dishwashers from the
early 1930s. That was a real surprise because no one ever mentioned those,
nor did my Granddad ever show a hint of interest in things mechanical (he was
a prison warden while I was growing up, and an important pioneer in Penal
Rehabilitation). So far, none of the family members I've asked knew
anything about those patents.
My mother's dad, Frederick A. Wagner, also had some patents for the machine
tools he manufactured when I was small - those I'd heard about but had never
seen. It turns out he had 9 patents, from 1933 to 1955, and I
recognized every invention as something I used while working for him in the
70s, and that was a nice sensation.
When I asked my baby sister about the dishwasher patents, she knew no more
than I, and she mentioned that she was notified she was on 2 patents but
didn't know what they were for. I looked them up: They are both
titled "Human Genes and Gene Expression Products" (she worked for
Chiron for 15 years) and one runs to almost 90 pages and the other over 100.
My sister is the 5th inventor listed of 23 (and it isn't alphabetical, so I
think it's an indication of level of contribution). Anyway, I'm again
impressed and proud of my baby sis.
And the bottom line is that if you wish to distinguish yourself in my family,
better think of another way.
For the time being, my
patent application experience has come to an end. My view is that it is a
huge amount of trouble, but not something I plan on abstaining from when the
First you need a damn
good idea. Next, your idea needs to be something that can be profitable for
others. The more folks you can get interested and on board; the better chance
of success you will have. I suggest you hire a patent attorney at a
highly prestige's law firm, and pray for a miracle. But most of all - DON'T stop Designing. Come up with
something new, that you can have patented; as often as possible. There is
this one Guy that I found during my patent searching, who creates one patent
then goes onto the next Patent, leaving others in the dust. You must become
well versed in Intellectual Property Law.
On the actuator
front: My studies in down-hole technology continue. To Packers
and Whipstocks, I add Downhole Deployment Valves, Lining Expanders, Fishing
Tools (for retrieving junk in the wells), Expandable Sand Screens, Anti-blowout
Devices, and Lubricators (which don't 'lubricate' anything as far as I can
tell, but are sort of pressure-locks for removing & inserting tools which
require the well head to be opened). There is OPB (over pressure
balance) drilling where the drilling mud pressure prevents formation fluids
from erupting, and UPB (under pressure balance) drilling where drilling fluid
(often gases) pressure is lower than formation pressure to prevent damage to
the bore-formation interface. There Fracing, where the formation
material is fractured to improve formation fluid production rates. And
the pressures are large, typically in the 1,500 to 3,000 psig range, meaning
that a high-force actuator is not entirely irrelevant.
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