An Engineer's Journey through the Often Murky Patent Application ProcessAn Engineer's Journey through the Often Murky Patent Application Process
June 25, 2009
John Klinger, a licensed MEand consulting engineer specializing in product and tool design and anindependent inventor, did what many entrepreneurial design engineers dreamabout: He applied for and received a patent for a compact pneumatic actuatorwith high thrust that he designed (US 7,267,044).
The following string ofemails is an extraordinary and behind-the-scenes look at the patent applicationprocess and subsequent market research efforts through an exchange betweenKlinger and an engineering friend, Glen, about their personal impressions whilenavigating 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 seekpatents on the improvements he was making on an existing product line.
The email conversation tookplace between September 2007 and March 2008, 15 months after John first appliedfor his patent. John was granted the patent for his actuator on September 11,2007 and is currently researching potential uses and licensees for thetechnology. His detailed design for a working prototype has been sent out forquotes. Glen's first application, filed through an IP law firm, is pending.Three more applications are in progress.
Subject: 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.
Subject: Patent search
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).
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.
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.
Subject: Pandora's Box
Subject: Almost "Spring"
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.
Subject: Project Update
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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