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An Engineer's Journey through the Often Murky Patent Application Process

An Engineer's Journey through the Often Murky Patent Application Process

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.

Subject:  End of Summer already?

Howdy, Glen:

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."

-John

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.

Subject:  Patent search

Hello John:

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.

Subject:  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:

For searching European patents by number:  http://ep.espacenet.com/numberSearch?locale=en_EP (I only used it to check Euro-patents cited by US patents, but I imagine you can use descriptive terms, too)

For Canadian patents:  http://strategis.ic.gc.ca/sc_mrksv/cipo/search/exsearch-e.html.

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 spot relevancies.

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.

- John

Subject:  November

Hello, John...

No word yet from our Patent Attorney.

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 device.

- Glen

Subject:  Pandora's Box

Hi, Glen:
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 frequently.

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.

 -John

Subject:  Almost "Spring"

Hello John:

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 opportunity arises.

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.

Glen

Subject:  Project Update

Hi Glen:

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.

- John

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