You might be misled.

Science, patenting, best business practice, and much more all need to be based on the best evidence. Here's an example of how you might be misled:

I recently attended a panel discussion hosted by a regional industrial council here in Chicago.  The general topic addressed doing business in China, something that almost all manufacturers in the US are, or should be, considering.  The panel consisted of a group of representatives from a particular province in China, as well as a couple of company owners who have been doing business in China for sometime.

Because of the language barrier, among other problems, most of the information came from the local business owners, who mostly discussed their own experiences in dealing with Chinese suppliers.  There was a lot of talk about culture differences, how to navigate dinners with local officials, business meetings, travel arrangements etc.  In summary, the message was that relationships are everything, be prepared to spend a lot of time cultivating and being cultivated, don’t be surprised by different norms, and of course the time honored “they have a different work ethic over there.”  All in all, it sounded like a big pain and a big risk, though with a possibility of profitability if you manage to negotiate the steppingstones.

I disagree.  My experience, though also anecdotal, is quite different.  I worked for several years for a company doing a lot of business with China, as well as India.  The company was on the small side, maybe 12M to 15M in sales.  They employed agents to act as intermediaries, and I don’t know how they found their agents.  Perhaps by some personal recommendation, maybe at a trade show, I just don’t know.  Now, I should say at the outset that I was in engineering, so I didn’t interact directly with the agents, though I did provide manufacturing drawings for some of the components.

My employer treated their offshore suppliers pretty much like any other contract manufacturer.  We supplied drawings (with metric dimensions), we held discussions with the agents to communicate information that couldn’t, or didn’t, make it onto the drawings, we received samples (albeit with longer delivery times), and we held more meetings to discuss the condition of the samples.  With the exception of the agent acting as interpreter, and the longer lead times, it was pretty much business as usual.  If we were dissatisfied with quality or some other deliverable characteristic, we shopped for another supplier, another agent, maybe another country.

My point here is that I believe offshore manufacturing is becoming a realistic tool for small and mid-sized manufacturers.  My advice is to not be scared off by stories of business deals gone sour due to a proffered business card facing the wrong way, or failure to bow correctly when being introduced.  People all over are hungry for business, and I think all nationalities recognize cultural differences for what they are.  With the exception of out-an-out crooks, who exist in all cultures, I think if you play fair, for the most part you will be treated fairly.

Contributed by David Bremer, owner Sabre Technical Services Corp.

Patent Clinic at John Marshall Law School

The Patent Clinic at John Marshall Law School writes patent applications for mechanical inventions free for needy inventors who are located in and near Chicago.



If you want your invention to be be considered by the Clinic, you must have a working model of your invention and you must have a good story why you can not afford the cost of a patent application.



If you are chosen, you will have to pay all out of pocket costs such as the filing fee, drawing fees, and the issue fee.



Your first step is to contact David Bremer by email via: DJB@sabretechnical.com    



Some History



Late in 1993 Don Reynolds, then head of the Intellectual Property Law Center at John Marshall Law School, called me to begin discussions about the patent clinic at the school. I wasn't there to take the call because I was a few floors above his office enrolling in the intensive preparation for the USPTO patent bar exam, which Don taught.



The seventh of December Don and I and several patent law students met for lunch and they told me about their plan to start a student led patent clinic where they would write pro bono patent applications for appropriate inventors. I was to find the appropriate inventors from attendees in the workshops I was then doing for inventors.



For the first patent clinic client I found Noel Alsbrook. The first of September 1994 Noel's patent application was filed. It issued the twenty-second of October 1996 as patent number 5,567,455. Noel died three weeks after the patent issued. His son is commercializing the invention.



The second client for the patent clinic was told that her invention was not novel by a big patent firm -- they failed to find out what her invention really was. The application filed by the students was allowed in the first office action. The clinic found that the third client's invention was not patentable so that client licensed the rights from the existing patent holder.



For the first and second client there was strong student leadership. However the clinic began to drift without strong leadership. The law school decided that the clinic should become a class so that the clinic work would not drift. I was asked to teach the class.



A few years back David Bremer began co-teaching with me. He taught the class alone for two years since, because of domestic responsibilities, I was no longer able to teach in the evening hours. The class will start meeting Saturday mornings this August and I will again be co-teaching with David.





The Clinic now has an advanced level. See: Approved!



Contributed by Don Moyer.



[This was posted earlier on another blog. It belongs here.]

Frivolous and Overly Broad Patents

You might wonder where frivolous and overly broad patents fit in our science patenting nexus. Nowhere! They mock science and muck up patenting! It's major pain distinguishing useful patenting from useless, frivolous, overly broad, shouldn't happen patenting.



Again, let's start with our Constitution: "Congress shall have the power . . . To promote the Progress of Science and useful Arts, by securing for limited times to Authors and Inventors the exclusive Right to their writings and Discoveries." Congress exercises this power mainly through patent and copyright laws.



The PTO is obliged to allow patent applications within the scope of the law. The law now does not require some examination of how an invention contributes to progress of science or useful arts.  So, examiners are buried under applications with, in my view, no positive connection with science or useful arts or progress.



The PTO tried to dig out a bit with new regulations but overreached and is stymied. Frivolous patenting can only be changed by Congress.



We can hope that overly broad claims will be much harder to obtain after the recent Supreme Court KSR decision changed the tests of obviousness. I now see examiners saying that everything is obvious -- let's hope that this isn't another case of overreaching which backfires.

Contributed by Don Moyer.



The image is from Fables for the Frivolous.

Approved

John Marshall Law school is one of seven approved by the USPTO for "a pilot Law School Clinical Certification Program. This program will allow law students to practice Intellectual Property Law before the agency under the strict guidance of a Law School Clinical Faculty Supervisor."



David Bremer and I will be the faculty supervisors.



Contributed by Don Moyer.

Science and Patents -- Plus and Minus

You may wonder if the science patenting nexus explored here includes the idea that patenting has a negative effect on science. So, here's my view of this:



I know that research universities are happy to patent inventions made on their turf and hope thereby to get royalty income to support the university. But, patented research tools and materials can drive up research costs and limit research. How to I resolve this?



Let's start with the US Constitution which says that "Congress shall have the power . . . To promote the Progress of Science and useful Arts, by securing for limited times to Authors and Inventors the exclusive Right to their writings and Discoveries." This is the basis of the patent right.



Notice that the Constitution does not mention huge drug companies nor software giants nor research universities nor makers of research tools and materials -- it refers only to inventors and authors.



I know that only if a business can expect get a return on investment will it invest in bringing a product to market. I've seen first hand the truth that patenting can be essential for getting a return on investment, for the invention to be made and sold and used at all.



Patenting which is tightly focused on this goal, for me, makes economic and moral sense. I only work for inventors and businesses using patenting this way and I discount fees when an invention can improve things like health, education, and research.



When the investment needed to bring a product to market is minimal, is a patent right needed? I do fully support the goals and principles of the open source movement and do preferentially use open source software. Here obtaining a patent right can be an important tool to make sure that open source principles and goals are respected. So here again for me patenting makes moral and economic sense.



There are also situations where concern about intellectual property rights trumps data sharing. Progress of science -- and public health -- depends on quick and full sharing of information. Good patenting practice can improve information sharing.



However, when patent rights are used by big corporations -- huge drug companies, software giants, makers of research tools and materials, etc. -- to drive income and profits far beyond what is needed to make and sell useful products, then the cost of products can retard health and education and research and progress of science.



This certainly does not "promote the general welfare" which is the starting, and ultimate, point of our Constitution. I do think that this is morally and economically wrong but know that not much will happen to change this until public policy makers forgo contributions from these corporations and their agents.



Contributed by Don Moyer.

Patenting can be Value-Adding and Product-Perfecting

Patent writing must be extraordinarily precise and still be easily understood by lay persons. This can lead to important discoveries and unexpected added value.



Part of a patent examiner's job is to reject claims which are open to misinterpretation. Competitors will look for possible misinterpretation in order to say that, since it is not clear what is claimed, the patent is unenforceable.



Judges and juries not skilled in the technology and know-how of a patent must be able to easily understand what is claimed. If the patent writing is not easily understood this gives litigators opportunities to muddy the water enough to cause trouble for the patent holder.



Combining extreme precision with ease of understanding is part of the fun of patent writing and adds significant value. I've experienced many cases where requirements of extremely precise and easily understood writing led me to ask inventors for clarifications pushing them to look again at their work, which led to new discoveries.



Yesterday I had a phone conversation with an inventor perfecting technology with very important applications in health and medicine. My ongoing prodding for greater clarification is leading to new experiments which can much improve the technology.



Patenting should be seen as value adding and should be started early as part of the process of perfecting new products.



Contributed by Don Moyer.

Business and Technology Know-how and Patenting Together Lead to Success

Matt and Rick came to Sabre back in 2006 with an invention they had co-developed for the construction industry. The invention was a type of segmented piling used for shoring up a foundation that had shifted due to (usually) changing ground conditions.

This invention was very simple. There was lots of prior art that was very close to the invention. Still, there were some small differences that seemed to make these segments especially useful, and their simplicity added to their cost-effectiveness.

In particular, the design enables the segments to link together when assembled and to do so without costly or complicated attachments. Rick and Matt had developed a manufacturing method to produce the segments cheaply and reliably.

I could easily understand how they worked, and I could envision a couple of ways to describe what I felt were the patentable elements. That being said, I don’t know much about the business of foundation repair, so I had no idea if this invention was really sufficient to build a business on (which was what Matt and Rick intended to do.)

I didn’t know the business, but Matt and Rick sure did. They had worked with some of the existing products and they were confident their invention was not only different but superior to anything on the market. We filed their application and, with patent-pending status in hand, they started manufacturing and installing their unique segmented pilings.

Two years later, after a close brush with the USPTO’s new obviousness criteria, we received a notice of allowance for all our claims with only a minor amendment. Matt and Rick have been successfully installing their new product the whole time, which goes a long ways towards demonstrating they had identified a real need for such a product.

Their knowledge of the market and their know-how led to their innovative design and led to success. Their invention, with its “small differences” from the prior art, is succeeding where the others failed. We’ve come to recognize this as a common occurrence in new products; it’s often the details that make the difference.

Contributed by David Bremer, owner Sabre Technical Services Corp.

Adapting to Messy Realities

The 12 June 08 issue of Nature has several pieces on translational research, a term apparently introduced in 1993. Translational research is an incarnation of technology diffusion – aka diffusion of innovations – well known to economic historians and others. The key paper was published in 1957 by Zvi Griliches (on the left) and the state of the art by 2003 is shown in the 5th edition of Everett Rogers' great book.

The key point is that it takes at least the science- technology - patenting - business nexus in order for the science to be translated and the technology to diffuse to useful and used products. Or as we say: to adapt the science to messy realities.

Nature uses bio-medical "bench to bedside" examples, but the lessons relate to all sciences. Advanced translational research thinking also includes "bedside to bench" examples which business persons and economists recognize as market driven examples.

Contributed by Don Moyer.

Science Based Business: SpectraDigital

SpectraDigital is a science based business which is embarking on a new wave of patenting break-through technologies which make quick diagnoses of serious infections and rank efficacies of treatments for the specific infection. Sorry, I must be vague to protect trade secrets.

Like other science based businesses the technologies and patenting follow from extraordinary mastery of the details. It is the discovery of means which make the science applicable to messy realities which leads to useful products.

Two of SpectraDigital's latest patent applications follow from a wholly unexpected discoveries. Again pardon the vagueness. As an unreconstructed physicist and health care advocate I especially love doing their patent work.

Contributed by Don Moyer.

Patenting Can Drive Added Value

Ed devised a product which solved a very serious problem faced regularly by firefighters and other first responders. He hoped that getting his product patented would give him a competitive edge for growing a safety products business.

When firefighters move through a building putting down hose they must block open doors; otherwise a door could close over the hose making it useless and making exit hard. This was usually solved by using axes and oxygen tanks to doors open – both very bad options.

Ed's block was a piece of angle iron with a hook brazed along the vertex so that his block could be hung over the hinge of an open door blocking it open. Unfortunately, on searching prior art we discovered that Ed's solution was anticipated and thus not patentable.

Ed and I went back over his description of the problem. I pointed out to Ed that when he had several of these heavy, sharp edged blocks in the pocket of his firefighter's coat – as is needed – the hooks would tangle and get tangled in tears in the coat made by the sharp edges so that he wouldn't be able to get any out.

I suggested that Ed redesign the block in an appropriate plastic with a retractable hook and connected Ed with a small plastics manufacturer able to do the redesign. A broadly claimed patent on the new block with a retractable hook issued rather quickly. Ed had a better product and the competitive edge for growing his business.

Contributed by Don Moyer.

You ARE Inventing

I’ve been an engineer for over 25 years now. After I got involved in patent issues, about 8 years ago, clients and colleagues would often say things like “with your experience, you must be inventing things all the time.” That’s somewhat true. Engineers can be said to invent for a living, since most of their efforts are directed towards solving problems, usually involving one technology or another. But I’ve never considered myself an inventor along the lines of Edison, Ford, or Kamen.

As successful as I may have been as an engineer, I always had someone pointing me to the problem that needed to be solved. Whether it was an improvement to an industrial process, a new turbine design for higher efficiency, or simply a cheap and reliable dumpster lock, someone else was scanning the market and recognizing a need. I was always good at discovering solutions to problems, but I claim no ability at all in identifying what problems people want solved or, more importantly, which solutions would be most profitable.

Identifying opportunities for adding value is no small skill. Look at how often even the big guys make mistakes: New Coke – need I say more? Still, this is a skill that every manufacturer has developed to some degree to keep their competitive edge. If they didn't, then they probably aren’t around anymore.

My point is this: If you’re making and selling a product, you know your market. You are already getting feedback from your customers, your suppliers and your staff that’s telling you what problems need solving. You most likely have your staff working to solve those problems. Once you have a solution, or even a partial solution, you will incorporate that solution into your production or product line. This is invention!

In 1941, a U.S. Supreme Court ruling called for a requirement that patent applications “reveal the flash of creative genius not merely the skill of the calling.” Perhaps this helped to originate the belief that real invention was only the providence of genius. Fortunately for all of us, around 1952 the “flash of creative genius” test was supplanted by the current statement: “Patentablility shall not be negatived by the manner in which the invention was made.” Recognition, from the highest court in the land, that invention can also originate from 1% inspiration – 99% perspiration.

So, to summarize, if you’re in business, most likely you are inventing to hone your competitive edge. Now the question is: Why aren’t you patenting?

Contributed by David Bremer, owner Sabre Technical Services Corp.

A Fail-Safe Closing Device

Stephen asked our help with an idea for a collapsable handy-man product. After a bit of design work we saw that the key problem was fail-safe connection between members. Otherwise the liability issues would be impossible.

Exploiting some basic physics we designed a fail-safe and fool-proof clamp which would either be safely closed or fully open. We had a prototype made which worked as planned.

We then saw that there are many uses for this device; for example, for fail-safe closing of refrigerators and incubators in research labs, where if a door is left ajar there could be disastrous loss of very expensive and even irreplaceable materials.

A patent search showed that our design is unique and eminently patentable. A patent application is pending.

Misinformation & Reliable Information

There is an incredible amount of misinformation about patents on the internet. Don't be fooled.


One of the best places to find reliable information is the US Patent and Trademark Office site. Their site index is handy. And there's useful information via the "Inventor Resources" link.



Here's a slightly edited version of a warning I wrote years ago:

THE FOOL RULE: Don't be fooled. Things change. Always check everything with the best professionals. That includes checking things which you read here.

Laws change. Court decisions change the effects of laws. Regulations and procedures change. Always check everything with the best pros.

Technologies change, business climate changes, manufacturers change, markets change, and buyers change. Always check everything with the best pros.

There's lots of very bad information floating around about patents, invention development, and finding money. Don't get fooled.

Make sure that you have good evidence that you are going to get a benefit greater than the cost. Don't be a fool.

Contributed by Don Moyer.

Competitive Strategies: Are patents worth the costs for small businesses?

I recently read an interesting on-line article ( IP Business Strategy Blog) about patenting as a means to revitalize small and mid-sized manufacturing in the US. The writer states "innovation is expensive: it requires market research, R & D efforts and sales to identify the market need, invent the appropriate product and to develop the markets."

Put like that, it’s no wonder that many smaller businesses shy away from even thinking about patent strategy.

While I don’t disagree with this statement per se, I believe that many of these prerequisites are already part of ongoing business strategies in many manufacturers. A good example can be found in yesterdays post.

The inventor there is the owner of a contract manufacturing firm. His invention relates to a way of making products, rather than a product itself.

Did he perform market research? Yes, in a way. His business experience told him that cheaper and faster production means lower costs, higher profits and/or reduced prices for his customers. No mystery there, and no additional research costs.

Did his sales force need to identity market need and develop the market? Same answer.

Did he mount an R & D effort? Yes, of course! His inventive process required a good deal of development, from formulating the initial concept to performing experiments with various process steps to designing tooling to tweaking the finalized process.

But, to a large degree, this is business as usual for most companies. They are constantly striving to improve their product or service and don’t really see these efforts as avoidable or unnecessary.

What set the client apart was that he saw patent protection as a way to get the jump on his competitors by denying them access to this valuable improvement.

Take home lesson: Patenting an improvement to an existing way of making a product is often overlooked but can be extremely valuable.

Contributed by David Bremer, owner Sabre Technical Services Corp.

Is patent pending a clever strategy?

A client invented a new way to make a familiar product lowering the cost significantly. The application was tricky to write because the steps were counter intuitive.

Although the invention took extraordinary skill in the relevant art to put these counter intuitive steps together and discover that they could reduce the cost, the USPTO examiner insisted that the invention was obvious and she refused to see that she was wrong.

I called the client to tell him this and alert him to the difficulties ahead in getting his patent allowed. He said that he didn't want to continue prosecution of the application.

He explained his strategy: He wanted to have patent pending status to keep competitors at bay while his company acquired great know-how for making the product efficiently and reliably. Having done that, it is much cheaper for competitors to buy from him rather than make the product themselves.

This could be a clever strategy.

Unfortunately the owner of one of the prior art patents cited by the examiner sued the client for infringement. So the choosing to drop the USPTO fight led to fighting in court instead.

The cost of continuing the fight in the USPTO to get the patent issued would have been lots less than any court battle. So, while patent pending alone can be a good strategy, getting the patent issued is an even better strategy

Contributed by Don Moyer.

Prototyping for Patenting: Positioning Tool Example

Sabre had a client who had a concept for a new type of hand tool for positioning fine medical detail work. We searched the prior art and decided that his approach to the problem was inventive. We constructed a simple prototype for further experimentation.

While messing around with the prototype we realized that, even though his original concept worked satisfactorily, it seemed the real problem was that the tool itself blocked his line of sight while he used it.

This simple observation sent us back to the drawing board and eventually led to a whole family of optical solutions to the problem. Now, we might have arrived at this same solution without the prototype. But there is little doubt that experimenting with the actual, physical device brought us to the solution much faster than otherwise.

Contributed by David Bremer, owner Sabre Technical Services, Corp.

Prototyping for Patenting: General Observations

There is no specific requirement for patentability that the inventor build a working prototype. It’s not at all uncommon, particularly amongst large companies filing lots of applications, for an application to be based on nothing more than a hand sketch. Still, there is a strong case to be made for fabricating a prototype, because you almost always learn something from it.

Lessons from prototypes can be negative, as in “holy smokes, this doesn’t work at all!” This can also be positive, when the prototype works better than expected. Both cases are educational and both often lead to better products and stronger patents.

In our experience, actually holding a product in your hand, operating it, observing its performance, always sparks ideas that may lead you to non-obvious improvements and even to completely different approaches to the problem both leading to stronger patents.

Contributed by David Bremer, owner Sabre Technical Services Corp.

An example will be posted tomorrow.

Patenting Strategies: Get it Right the First Time

Our small-business, emerging-technologies clients need a patenting strategy where we get it right the first time. This costs much less than the kitchen sink strategy and yields the value our clients need.

Our strategy is to aim for claims which are tightly focused on the key to the invention, which leave no opportunity for misunderstanding, which are super clear to show the examiner why they should be allowed, and which have no unnecessary limitations.

We aim to get broad claims allowed on the first office action as happened with the patent used for illustration above (which you can see all of via this link).

Contributed by Don Moyer

Patenting Strategies: Kitchen Sink

Recently we've looked at several published patent applications by big businesses where the strategy seems to be one where everything even the kitchen sink is included. There are very many claims covering very many putative inventive features, often with a surprising vagueness.

Looking also at the prosecution history – which is public after the application is published – we saw lots of churning with many claims canceled and many limitations added. And, we saw lots of continuations.

It looks to us that the aim is to get something – anything – allowed. But, we wonder, what would be the value the allowed patent. We wonder what happens next with a patent of dubious value. Patent trolling? Lots of litigation?

One thing is clear: This strategy is far too expensive and without value for our small-business, emerging-technologies clients.

Contributed by Don Moyer

Santec Hones Its Competitive Edge

Santec Systems devises and manufactures acoustic imaging systems. This is not the pulse-echo technology we're familiar with from our medical centers. Their systems are full field systems so that the whole region of interest is imaged as a whole to a single image without scanning and without computer construction of an image. This is very useful in non-destructive testing.

The basic technology is in the public domain and there are several competitors making systems. However, Santec made a number of unexpected discoveries, which they use to devise systems producing greatly superior results. Patenting broadly claimed implementations of these unexpected discoveries gives Santec a sharp competitive edge.

Though these patents cover small improvements on a basic technology, these small improvements add great value, because it is with these improvements that the basic technology can work well enough to be useful.

There is more value added in the story. Working with a patent agent having a deep understanding of the science behind the improvements and a highly evolved ability to see the broadly patentable gist of the improvements enhanced the patent coverage adding more value. Indeed their patent agent's questions and observations often pushed Santec to refine their discoveries, which further added value.

Santec continues to hone its competitive edge by initiating an new wave of patenting which will add more value and open new areas of application.

Contributed by Don Moyer