Anything Under the Sun Made by Man

There are times when an inventor can be very myopic. There was one inventor several years ago who insisted on very specific definitions of his invention and would not permit any variation from his vision of the invention. The inventor would not consider any expansive definitions or alternatives to his idea. He was so fixated on his little view of the invention that he could not see how it could possibly be expanded.

As I work with a client to understand an invention and begin writing an application, I spend a considerable amount of time and effort to come up with different embodiments and alternatives for the concept. Since my background includes many years as a practicing engineer, patent holder, and entrepreneur, I have a unique vantage point to expand the scope of coverage for a patent application.

I have some cases that have been pending for years and private PAIR still says that first action in the case is 60 months away.

However, I recently had a first Office action come a mere 111 days after the date of filing. The case was filed in October of last year and I received a full Office action in January of this year. This is for a utility application in the mechanical arts, and I also filed a Petition to Make Special due to the inventor’s age. I received approval for the Petition to Make Special on one day and the Office action the next.

Inventors sometimes file their own patents. Often, I consult with inventors who are considering writing their own patents or those who have already done so. In general, these pro se patentees are looking to save some very valuable cash and are willing to invest their time and effort into learning how to write and file a patent.

I have been developing my inventor interview over several years, and I have a technique that seems to work for me.

The key is to know what the inventor wants.

The USPTO has a new Accelerated Examination Program that promises an issued patent within 12 months. This program has a couple essential elements. The first element is that the applicant must perform a thorough search prior to applying for the patent. The second element is that the applicant can only have three independent claims.