The Producer

The job of a patent is to protect an invention and create business value.  The job of a patent professional is to help draft the patent application to maximize this value. They can do this by making sure the invention is explained as clearly as possible through words and figures.  They can also do this by reasonably broadening the invention (for example, if the invention pertains to a glass, can it also pertain to a mug? a jug? any other liquid container?).
Another way patent professional can add value is by using their creativity to help the inventor springboard their idea to new levels, similar to how a music producer helps a musician take their songs to new heights. Often, inventors (engineers, designers, etc.) suffer from tunnel vision: they becomes focused on a single aspect of their invention. This may serve them well when they are focused on a specific product geared towards a specific function with a specific deadline. That’s where a patent professional can help them broaden their horizon by focusing on the hidden layers of the invention and by trying to pry out potential synergies.
They can help expand concepts while taking advantage of all the resources available to them: what all was being done in the prior art? What were the factors that were being considered in the prior art? What was the context of the invention in the prior art? If the patent professional came across inventions in other art that have a similar base concept, there may be features or trends learned there that could be applied to the current invention.
Consider an invention where a gas turbine is being transitioned from using one fuel to another fuel. Maybe the inventor has focused on the general idea of transitioning in a step-wise manner to reduce disturbances. The patent professional can then delve into the layers of this invention.  How many steps are to be used? What is each step size based on? Is each step the same size or do they increase/decrease over time? Is the increase/decrease linear or non-linear? What is the rate at which steps are applied? What parameter would the step affect to cause an engine disturbance? Would that parameter be different for one type of aircraft or another? Would that parameter be different if the turbine was in a conventional aircraft versus a hybrid-electric aircraft?
In essence, the patent professional can use the patent drafting exercise as an excuse to engage in a mini-brainstorming session with the inventors. They can ask the right questions, or even hazard a guess.  The latter approach is a win-win…if they guess it right, everyone is happy that the invention was correctly understood. If they guess it wrong, the inventors will fix it, allowing the patent professional to gain a better understanding of the thought process…something that they can use when the next invention comes along.

Popular posts from this blog

Surprising Uses for Oobleck

Image
Oobleck is a common name for a non-Newtonian fluid comprising cornstarch and water. Named after a substance humorously described in Dr. Seuss’s classic children’s story, Bartholomew and the Ooblek, the cornstarch and water concoction is frequently used in children’s science classes as a fun way to learn about fluid mechanics. You may have fond memories, yourself, of playing with oobleck as a youth. Oobleck behaves as a fluid when touched gently, but becomes hard as a solid when hit with great velocity. For example, a person could run across a swimming pool of oobleck without getting their feet wet. However, if a person stood still on the oobleck, then they would slowly sink. Because oobleck is a children’s plaything and because of its simple recipe (cornstarch and water), one may be surprised to learn that inventors have attempted to patent serious industrial uses for the material. As an example, one current patent application, US 2015/0016885 (now abandoned), is for a system of fi
Read more

Dispensing with the Formalities: Ex Parte Quayle Actions

Image
Checking my email after work one day, I was greeted with some unfortunate news: the application I was prosecuting had received yet another Office action.   Frustrated, I couldn’t resist skimming the substance of the rejection.   After all, like any patent practitioner, I thought my arguments were pretty irrefutable.   The news only got worse… or so it appeared.   The Office action was something called an “ Ex Parte Quayle action.”   Having never received one of these actions, I started mentally preparing myself to pull out the MPEP and research some arcane rejection. To my surprise, I didn’t find myself knee-deep in case law the following day.   Ex Parte Quayle actions, while somewhat inconvenient, are far from insurmountable.   In short, an Ex Parte Quayle action or “Quayle action” is issued when an application has objections remaining as to formal matters, but is otherwise allowable.   Accordingly, the mailing of these actions closes prosecution on the merits of the appl
Read more

Adaptive Headlight IP

Image
The recent Infrastructure bill signed into law by President Biden affects many things, but one aspect that affects the automotive world is adaptive headlights.  As noted by Jalopnik puts it somewhat crudely, this means “our headlights will suck way less” (link to https://jalopnik.com/finally-our-headlights-will-suck-way-less-1848067412 ). But with this sudden change, adaptive headlights in the US may be in for a particular messy IP situation since many companies may have considered it was not necessary to protect their adaptive headlight innovations in the US because of the 50-year old rule preventing such technology. Recent patents in the field from applicants such as Lumileds and Arex indicate that smaller players and startups may be able to break into the market which is expected to explode in the next few years once the final rules are implemented.  For those in the industry that have typically avoided US patent filings in the adaptive headlamp area, they may want to rethink th
Read more