Hi Dylan, a lot of great advice buried in one of your edgiest ever videos. I’m in the process of updating my now long-in-the-tooth video on whether a patent search is worthwhile and I keep coming back to this essay of yours. It's really a tour de force, and I believe, the most thorough video currently on the internet covering the cons and pros of patent searching. There is a good reason it has garnered a ton of views - I have watched it several times myself. Although you and I are a bit misaligned on your assertions that patent searches are a scam (that was a great hook, though), there is a lot here we agree on in this video and I always enjoy your content. Perhaps at some point in the future we could do a collaborative video, jointly discussing the merits of patent searches and PPAs for inventors, startups and public companies. I think it would be a lot of fun to shoot a video with you and exchange some of our differing views. Keep up the great work; I always learn from your content. 😊 Warmest wishes, -john
Hi John, great to hear from you and thanks for the kind words. Very pleased to hear that you've found this video useful. Excited to see your updated video on if/when a patent search is worthwhile. Yea, I would certainly agree that lots of patent searching is not actually a scam, but having a hook like "patent searching is a nuanced issue" probably would not have done as well. :) That being said, I still have tons of new clients or consultations come in who show me the absurdly expensive patent searching and analysis that was done for them, which is just a bunch of fluff and boilerplate that provides no actionable information. Definitely not in the same realm as invention submission companies though. I would love to do a colab video with you! Whether it's discussing patent searching or something else, I'm up for it. I've also noticed that your production quality has been really kicked up a notch recently - your videos are looking great. I need to get back in the studio and shoot some new content; unfortunately, it has been awhile since I've posted something new. Cheers!
@@PatentsDemystified Having just revisited the whole topic of whether novelty patent searches are worth commissioning, I have concluded that it’s a complicated topic and so context dependent, especially in view of the growing library of AI resources that are freely available. Except maybe for your tongue-in-cheek hook, it’s really hard for me to disagree with anything you opine in your video. Your’s really is, however, a tour de force on the topic of patent search value. There is just no shortcut to practice when it comes to making YT Videos. Counting the 20 or so videos I have delisted and tossed, I’m at about 150 long forms and still am learning at a glacial pace. Our social team has grown, so for sure I am responsible for very little if any of the small improvements we have made over the last nearly four years of recording and posting. Are you attending Vid Summit or Vidcon Mexico? ‘Would love to grab a beer or horchata and swap YT notes, if you are at either. Keep posting your great stuff; not only is it motivating for to me to watch your content, but also an awesome benefit to the community that we both serve. Warmest wishes, Dylan. -john
Thanks, John. No, unfortunately, I'm not going to be able to make it to Vid Summit or Vidcon Mexico this year. I would indeed love to sit down with you and chat about your YT experience. I certainly agree with the feeling that learning comes at a glacial pace, but I think that's a typical experience with learning the process of planning, producing, editing and promoting video content. My goal is just to improve my videos a little bit each time and glean as much as I can from analytics and video performance to see what's working and what's not, and then double down on the things that are working and remove the things that aren't. I think communication via video and learning how to making compelling content is going to become increasing important, and I think of this as a vehicle to learn those skills. I look back on how terrible by earlier videos were and hope to look back on my current videos the same way at some point. Your content is a great motivator to me as well - please keep on posting! As you say, it's a huge benefit the inventor, entrepreneur and startup communities, even if it does not feel like it at times. Cheers! - Dylan
The benefits of a patent search are: 1) if the patent search finds the idea already exists, you save the money on the patent application; 2) if there are similar patents already, you can write your claims around those existing patents, and 3) you can be aware of patents that your product might INFRINGE. Easily worth the expense of a search.
Thanks for the comment! Yes, you are absolutely correct that these would be the benefits of doing a patent search, but I respectfully disagree that it's worth the expense of a search and analysis aside from the exceptions I address in the video (see link below). I'll address each of the benefits you note below: *1) if the patent search finds the idea already exists, you save the money on the patent application* This may be true for the exceptions I discuss in the video here ruclips.net/video/NCajt0lRXnA/видео.htmlsi=69f10yc7FC4mweM6&t=1055 , but for the vast majority of inventions, in my experience it's typically going to be more of an issue of how broad or narrow of claims you are going to be able to get through and not just a binary patentability issue. I would much rather spend this budget drafting a better application to give us more options to navigate around art rejections. Honestly, I can't remember the last time I wasn't able to find some way to get a case allowed with a well drafted spec and drawings. *2) if there are similar patents already, you can write your claims around those existing patents* Personally, I've never been a fan of preemptively limiting my initial claims based on speculative and theoretical rejections that an examiner might come up with. Given the variability between examiners and how subjective examination can ultimately be, I would again much rather spend this budget on drafting a better application and structuring claims well to give us more options to navigate around art rejections and/or give the examiner some claims that likely have allowable subject matter. *3) you can be aware of patents that your product might INFRINGE* Again, I'm not a fan of expensive patent searching and infringement analysis. In my experience, a better way to address this is to bake this into the client's own market and competition analysis and have them identify specific competitors with specific patents that might be of concern, if any. Otherwise, doing a general patent search and patentability analysis is so speculative and super-low ROI in my experience. In terms of allocating patent budget and managing risk, money is typically better spent elsewhere. Thanks again for your insights here. Curious to hear your comments and criticisms. Is there anything you think I'm missing here or completely wrong about? Are there specific types of clients, business plans or inventions where you think one strategy would be better than the other or do you advocate patent searching, patentability analysis and infringement analysis in all cases?
@@PatentsDemystified No, prior art search is key. Not doing it will help you, patent attorney, make hours going around prior art you should have found from the very beginning, and wasting your client's money. It is called "quality at source": a crap patent application can only lead to a crap patent that will not stand in court...
@@PatentsDemystified re " I've never been a fan of preemptively limiting my initial claims based on speculative and theoretical rejections that an examiner might come up with. " sounds like you are not aware of the Festo loss of patent rights consequences of narrowing claims to avoid prior art during prosecution? There is no risk in later broadening allowed claims, so most all your arguments fall flat. In my experience attorneys that advise to skip patent searches are talking their own book to boost their income by drafting and prosecuting what would otherwise be very low value or worthless patent applications. Of course, the bigger the company the less likely patent searching matters because the technical contributors are already well aware of the literature so in those cases maybe, but for startups and individual inventors, IMHO you're just talking your book.
After the patent examiner examines the application, before issuing a patent, how does he know that he has found and looked at all the prior art? Does he look at the provisional patents waiting in the vault?
Examiners can’t know they have found all the relevant prior art. Provisionals alone are still secret and can’t be used as prior art and Examiners can’t find them. Even unpublished non-provisional applications can’t be used as prior art yet. Also, Examiners have extremely limited time on each case and often miss extremely relevant prior art due to limited search time.
Excellent video! As someone on the precipice of being a patent practioner, I found this all very helpful. Any recommendations on gathering data/analytics on the particular examiner that works on your application?
Once you file a non-provisional it can often be awhile before an examiner is assigned to your case, but once they are, there are a bunch of tools out there there that give you stats on Examiners and can help plan out strategy. There are a bunch of paid tools, but a free one that I found by doing some searching is the following: www.smartpat.us/examinerreport/ There are probably some other free ones out there as well.
@@PatentsDemystified Thank you Dylan. I was recently informed that staying up to date on examiner trends is paramount to doing a job... and keeping it, quite frankly. This is a great place to start!
When it comes to Examiners, it also help to keep up on general trends with them, such as new pressure from supervisors to make certain types of rejections, changes in internal guidance on how certain rejections are made and knowing when Examiners might be especially motivated to allow cases. Examiner interview are also really helpful in getting insider info on what Examiner are up to and also expediting allowance of cases.
It's not possible to re-patent the exact same thing because the new patent application would be rejected for not being novel and non-obvious over the previous patent. However, if there is a new and non-obvious improvement to the old product, then someone could get a patent on the product with the improvement.
How do specific details make it easier to get a strong patent? Wouldn't the more specific you detail the patent the smaller the box you put yourself in in regards to what will be protected?
Great question! That can absolutely be true with the claims of a patent given that the the more elements/detail you have in a claim, the harder it tends to be to infringe that claim. However, that's not true of the description and drawings. Having a great amount of detail in the description and drawings is what allows you to amend the claims during examination to overcome prior art rejections to make the claims new and non-obvious over the prior art while having them be as broad as possible. It's the specific details in the description and drawings that make a stronger patent application that is more likely to be successful in examination and that will result in the broadest claims possible in the end. For more on the parts of a patent application, including the claims, description and drawings and how they interact. Check out these videos: ruclips.net/video/whUe4FfxQ1I/видео.html (Parts of a Patent) ruclips.net/video/0MneopTXX5Y/видео.html (What Are Patent Claims?) ruclips.net/video/0MneopTXX5Y/видео.html (Patent Claims Explained)
I’m about to file a patent, and I want to create a startup to develop my invention. What you seem to be saying is that I should start trying to talk to investors the day after the patent is filed, rather than wait to the day the patent is granted or it goes into examination. Am I correct?
Absolutely! Start talking with investors and getting the invention/product out there immediately after filing your patent application (typically a provisional patent application). Do not wait until examination begins or especially until the application issues as a patent. This video discusses this in more detail: ruclips.net/video/zCbEz3AKVoE/видео.html
It really depends on the specifics of the invention and business plan and where you need this partner with industrial robotics experience to fit into everything. Do you need the because you lack technical experience in certain areas of robotics for purposed of developing the product? Do you need someone who knows the market for industrial robots and would be helping with making sure the product aligns with what the market needs at the right price point and possibly having connections to potential buyers? All these things are going to influence the person(s) you are looking for. Figure that out first and then get out there and network to find that person or at least people who might know that right person.
@@PatentsDemystified Thanks, I have an economics background and have no experience with industrial robotics. I came to my idea by studying the automation of a certain service industry and noticing a key gap in automation at a stage of the process. The idea came to me and I designed my invention. However I need a robotics engineer who has actual experience building robots. And who knows the right vendors and suppliers to procure components.
Thank you Dylan , aside your great examples on true patentability importance, I've watched dozens of patent videos and your section on the spectrum of protection was invaluable. Thanks so much#4
Definitely don't use services like InventHelp! Companies like this are typically a scam and charge tons of money for worthless research, R&D and supposed invention submissions. Unfortunately, the idea that you can pay your way to success with an invention with companies like this is a total myth.
Well! I already spent money for a prior art search, I could off save some money, I have a question though... my Provitional patent has expired and I am outreaching to licensees to offer my product.... Should I file a new Provisional patent application before I sell my idea? any advice ... I appreciate your help
Yea, it would probably make your licensing pitch much stronger if you had a provisional patent application pending. However, make sure you still have patent rights if your first provisional expired and you've been making public disclosures, public uses or offers for sale. This video discusses this issue: ruclips.net/video/fJXeDodC5pM/видео.html Also, be sure to call it a provisional patent *application*, not a provisional patent. This video discusses why: ruclips.net/video/yfT8U-8PxGY/видео.html
Hello- Greatly appreciate your channel! I couldn’t find any videos you’ve done on paying various patent fees ourselves. We have many US, European (unitary), Canadian and Australian patents. On the advise of our patent attorney, we’ve been using a “monitoring” service, that handles payment of renewal fees for us when due, and we pay them. Recently our patent attorney told us a payment was missed, and now there’s a 50% late charge. WE never got any notice, and the monitoring service says it’s not responsible, but wants to charge us additional for “urgency” to get the fee paid before our new patent lapses. Is it difficult for us to handle these fees ourselves? Appreciate your help- patent attorney didn’t answer this question for me.
Yea, maintenance fees and annuities are notoriously a pain in the ass and one of the biggest pain points and sources of anxiety for my clients managing their patent portfolios. You are definitely not alone in your frustration. I'm the same way - I always have my clients hire a provider help them track and pay their annuities and maintenance fees and I don't take this on mostly for liability reasons. Unfortunately, issues like missed payments and lack of notice are not uncommon - especially as you are getting up to speed on working with the provider. In addition to making sure you give the provide a list of all your patent assets, one thing that your patent attorney and their staff might be willing to do is coordinate with the provider to give them an updated list of your patent assets so the provider has the full list of what to track. We do that for folks and that seems to make a big difference. As far as tracking and paying yourself, I wouldn't suggest it. In a lot of countries there aren't any notifications provided until you've already missed a deadline, and figuring out what is due and when and how much can be extremely difficult. I would suggest sticking it out with a provider - in the long run that will be easier and fewer problems than trying to do it yourself.
What if the examiner misses a preexisting patent and issues a duplicate patent? So now you have a patent and some other person has a patent for the same thing. Wouldn't a patent search prevent that situation? You could invest a lot of time and money into the business/product only to realize that someone else already has the rights to what you thought was your original invention.
It's certainly possible that an Examiner misses an earlier patent, published patent application or other prior art and issues a patent that is actually invalid because it's not new and non-obvious over the prior art as required. However, just because your patent is actually invalid, even in part, does not mean that you can't successfully enforce it, derive value from it or that you would infringe the earlier patent. Similarly, you could infringe on the claims of someone's issued and enforceable patent, but that's an infringement analysis instead of a patentability analysis. Keep in mind that infringement is totally different than patentability. It seems like you might be blurring the two or mixing them up. This video explains the important differences: ruclips.net/video/9hTMXJtONtM/видео.html Also, yes, a patent or prior art search along with patentability analysis and/or infringement analysis could theoretically help if someone else has rights. However, as discussed in detail in the video, it surprisingly does not make sense to spend the time and cost on this for the many reasons discussed in most cases. Let me know if there are specific rationale discussed in the video that don't make sense or are unclear.
Probably not aside from possibly for some of the exceptions I talk about later in the video (ruclips.net/video/NCajt0lRXnA/видео.htmlsi=OZYM3PfDJbRYyzEd&t=1054). Most of the time determining whether you file a design and/or utility application depends on the specifics of invention and not the prior art. The one exception might be for a product where both design and utility would be relevant. In this case, knowing that it would be hard to get a utility application through could inform a choice to also file a design application or even skip the utility application and just file a design application. That being said, most of the time it's possible to give a general ballpark estimate of success to inform this choice without having to actually do a search as I discuss in this section of the video: ruclips.net/video/NCajt0lRXnA/видео.htmlsi=85amrc54OBll45NN&t=879 Great question!
Patents are for corporations or people who already have money. Patents are not designed for poor or broke people trying to invent something that could make them rich. If a poor person comes up with a brilliant idea or invention and he can't afford to patent it and can't even afford the attorney fees. What happens? Well, he ends up sitting on the idea until someone one else who's wealthier finally comes up with a simular idea and patents it or he puts it on the market without a patent but cant afford to manufacture it cheaply and with no marketing so he still ends up broke. Hand-made inventions are more expensive and time-consuming to make for sale and have fewer customers than mass production. Or he tries to sell the product without a patent, and someone steals it. Either way, he's screwed. Yet, rich people can file a patent on anything. Thomas Edison had over 2000 patents because the entire patent process only cost about $45 back then, which is equivalent to about $1200 today. Yet nowadays, a full patent doesn't cost $1,200. It's more like $8000 to $15,000. You could literally buy a good car for what a patent cost. 🤔
Yes! Individuals can file patent applications and represent themselves before the USPTO during the examination process. Also, you can work with a patent agent instead of a patent attorney. This video discusses patent agent vs. patent attorney: ruclips.net/video/aQC3nQmri40/видео.html
You mention a prior art search/patentability analysis can be worthwhile for very simple inventions. I've already seen your "stealing idea" patent video, and I'm wondering if there are exceptions to going to revealing your idea to a patent attorney. Like if the idea is very simple and is something that the attorney is confident would have a high pay off, that they may try to execute/license it themselves; as they may make more from the income on it then they would in the remainder of their career.
It's an interesting idea and nothing is impossible, but this is so extremely unlikely that I would still strongly suggest that inventors not be paranoid about something like this. As discussed in the "Will Patent Attorneys Steal Your Idea?" video (ruclips.net/video/pXEa8XRFJ7o/видео.html) folks tend to wildly underestimate how hard it is to implement and idea and make it a successful business and product - even for very simple inventions. I can't envision a plausible scenario where there is an idea where a patent attorney would be so "confident [it] would have a high pay off" such that they would "make more from the income on it then they would in the remainder of their career." This is something out of a movie or a crazy conspiracy theory and not something that has any remote plausibility in real life.
I am learning a lot from your video. Thank you for the information! I have a few questions though. So let’s say you get a provisional patent without a patent search. You then sell your product to a company before getting a full patent, then a few years later find out there was already a patent on it. 1. Are you able to keep whatever profits you made? 2. Are there going to be any legal issues related to this?
Definitely a lot to unpack in these questions. The first thing to note is that patent infringement and patentability are completely different issues and analyses (check out this video for more on this ruclips.net/video/9hTMXJtONtM/видео.html). When you say "a few years later find out there was already a patent on it." Are you referring to an issued and enforceable patent that the product would infringe or a previous patent that would be prior art against your patent application that would make it not new or obvious and therefore unpatentable? Regarding keeping profits etc. if you are referring to infringing a patent, it depends on your agreement with the company you sell to. Unless you provide warranties that the product does not not infringe any patent that could make you directly liable, you'll probably be able keep profits from the sale to this company and it's on them. It really depends on contract specifics. Also, just because the product infringes a patent does not necessarily mean you or that company would get sued for damages. The company that owns the patent would have to actively enforce it against you or the company you sold the product to and there is no guarantee that this would even happen. If you are referring to a patent that is prior art against your non-provisional application, you likely can keep profits unless the sales contract requires that you get an issued patent, which is unlikely. Again, it's very contract specific. Also, note that there is no such thing as a "provisional patent" just a provisional patent application. (Check out this video for more detail on this: ruclips.net/video/yfT8U-8PxGY/видео.html). Provisional patent applications are not examined - only the non-provisional application that you have to file before the provisional application expires one year from filing. Hopefully this helps address your questions and concerns.
I myself start to see that all this time I can't get help or truth out patent situation because everyone wants money.not to say that people that come up with in idea got money when I'm trying to make something to eat and make a a living
Narrow patents aren't worthless at all in many cases that is the whole point and you don't need more then to have the patent for this specific configuration in the specific field it is relevant to. Where 99% of the value of that patent is in that field anyway since you likely made it for that.
I actually completely agree with you! Narrow patents can actually have tons of value even if it could never possibly be infringed because the general public and even folks like investors don't understand patents and think that everything in the drawings and description is "patented," when it's actually on what's in the claims. Also, being able to just claim and market "patented" or "patent" pending status is extremely valuable - regardless of how broad or narrow the patent or application is. Also, as you mention, a narrow specific patent can still have lots of value if it covers an important specific configuration.
@@PatentsDemystified Thanks for shearing knowledge. I wasn't trying to call you out or anything. You know so much more on patents then me that's just how I see it from my perspective. I am glad I got it right since you seem to agree though. Thank you for informative videos and I will keep on learning from you.
No worries! I really appreciate great comments and questions like this. That's how everybody in the Patents Demystified community learns, including me.
If those details are not in the specifications, they will a rejection. The attorney drafted the application and broadly described my invention, I thought it was standard practice but when I tried describing it in detail, I mean who can better describe an invention better than the inventor, it was rejected. Lol
Yes, that's correct. You are not allowed to add details to the claims that are not fully supported by the text and/or drawings. Sorry to hear that your application was not granted.
Yea, this makes no sense either for the exact same reasons that a patent attorney would not steal ideas as discussed in the video, plus it make even less sense given that patent examiners are dealing with patent applications that already have an early priority date. If they were to sell the idea, they would be selling an idea that someone else has already patented or is in the process of patenting. Moreover, patent applications are published by default 18 months from when they are filed, so they become public record at that point anyway.
Hi Dylan, I have been building prototypes for a product I hope to sell commercially. It would compete with an existing product that performs similar tasks even though the design is my own. They have patent for their product, but I am not familiar enough to understand how broad their patent is or if my design would infringe on their patent. Is it typical for patent attorneys to be consulted by someone like me to provide guidance on whether it's worth continuing to work on my product and take it to market?
Yes, consulting a patent attorney or patent litigator would be a good idea in this situation - especially since you are aware of a specific competitor with a specific patent. You'll need to analyze how likely it is that any of the claims of their patent read on your product, possibly if you have any arguments for invalidity of their patent and possibly how you can design around it. The main downside is that doing this kind of analysis correctly can be time consuming and therefore expensive in many cases - often thousands if not 10s of thousands of dollars depending on where the analysis takes you. For more on patent attorneys vs. patent litigators, check out this video: ruclips.net/video/Ww-RhMh8xBU/видео.html For more on what infringement analysis is: ruclips.net/video/9hTMXJtONtM/видео.html Also for more on patent claims check out these: ruclips.net/video/0MneopTXX5Y/видео.html ruclips.net/video/ZNUEhCtaucM/видео.html
Thanks! Regarding patent attorneys stealing ideas, this video discusses that issue in detail: Patent Attorneys Stealing Invention Ideas: The Real Truth ruclips.net/video/pXEa8XRFJ7o/видео.html
If these people or anybody try to steal my idea on my product I'm going to court civil court and I got a hell of a paper trail photos sketches since 1986
Well. Are you promoting "your" business model? Of course, a patent drafted from a well done prior art search is more likely to succeed quickly at the patent office, meaning less actions needed from the attorney who is then not allowed to bill useless hours of work... Public should also know that patent offices are giving for "free" tools to search existing patent litterature. Google Patents and Google Scholar will also help greatly. You are just advising people to cross a mine field blindfolded...
I'm promoting a way of doing patents that minimizes unnecessary cost while maximizing quality. I strongly disagrees with the assumption that "a patent drafted from a well done prior art search is more likely to succeed quickly at the patent office." As discussed in the video, it's counterintuitive, but doing a prior art search is not as informative and does not provide as much actionable information as you would think. Having fewer office actions comes from howl you setup the claims generally, how you approach the examination process and the luck of the draw with the Examiner you get. It's actually a patent search that let's patent attorneys "bill useless hours of work" - not the examination process. Regarding whether this strategy is just for my benefit as a patent attorney, I strongly disagree. Honestly, I could make way more money if I charged people extra for worthless analysis and prior art searching up front that would not actually help them in the long run. I prefer to work with clients who actually succeed - it's way more enjoyable and we both make more money in the long run. That's why I promote this strategy.
@@PatentsDemystified Let me still disagree. If it is not the patent examiner rejecting your patent application for lack of novelty or for obviousness with regard to the prior art he will interpret, your competitors will find it to get your patent revoked. Again, you do not enter a mine field without a map, or a solid mine detector. You are also more likely to prepare fall back positions in your application if you know what to expect. Added subject matter will prevent you overcoming nasty surprises... And patent search should not cost that much compared to the attorney"s fees...
I'm curious where your strong belief in prior art searching comes from. Have you been through the patent process multiple times and found prior art searching in advance to actually be helpful in examination? What sorts of inventions have you seen through the examination process? Also, your repeated analogy of "you do not enter a mine field without a map" does not really hold up and the reality actually supports exactly what I'm saying. Specifically, a military does not fully map our a mine field before crossing it, since doing so would be extremely time and cost inefficient. Instead, they just neutralize the few specific mines that come up in the path they end up crossing. Similarly, it's time and cost inefficient to try to map out the prior art landscape and this is unnecessary to navigate the specific prior art path that the Examiner ends up setting out. Instead, just like navigating a real mine field, it's better to neutralize the prior art that ends up in your path instead of trying to anticipate and neutralize prior art that will never come up. In other words, it's more efficient to let the Examiner frame the issues and deal with those issues than to do wildly speculative research and analysis on what the prior art might end up being.
Yes, that's correct. The Examiner must show that all elements of the claims are met by the prior art in novelty or obviousness rejections - that includes elements that are not the core of the invention.
@PatentsDemystified sounds like you are not aware of the Festo loss of patent rights consequences of narrowing claims to avoid prior art during prosecution? There is no risk in later broadening allowed claims, so most all your arguments fall flat. In my experience attorneys that advise to skip patent searches are talking their own book to boost their income by drafting and prosecuting what would otherwise be very low value or worthless patent applications. Of course, the bigger the company the less likely patent searching matters because the technical contributors are already well aware of the literature so in those cases maybe, but for startups and individual inventors, IMHO you're just talking your book.
It sounds like you didn't even watch the video. Do you have any specific rebuttals to the numerous reasons I give for why prior art searching does not make sense in most situations and the exceptions I give where actually doing a prior art search would be important?
I started taking your course, and I remember Stephen stressing to get a patent a search/prior art search done. Safe to say I'm not sure what to believe now!
His advice is ridiculous. Please note when you’re negotiating a contract, you must know the prior art because it’s going to be brought up in discussions. It allows you to discuss your point of difference compared to similar product ideas that’s why you need to know the prior art. I can tell you when listening to this type of advice this individual is not in negotiations. But then again that is not his job. He’s trying to save you money in time. Knowing the prior art allows you to overcome the issues, companies are going to have. You need to give them confidence you know exactly what you’re doing and you know the marketplace. Stephen Key
Hi Stephen, thanks for your feedback on my video. However, it seems like what you are talking about here doing market analysis and identifying competitors along with how your product is different, which is completely different than prior art searching and patentability analysis. As specifically addressed in the video (ruclips.net/video/NCajt0lRXnA/видео.htmlsi=Mvo3CajM8aksy1NR&t=960) market and competition analysis is absolutely essential and I'm certainly not saying that folks should not do that. To the contrary, not doing such analysis is a recipe for disaster and would indeed be "ridiculous advice." On the other hand, I maintain that doing prior art searching and patentability analysis on the vast majority of inventions (aside from the exceptions I discuss here: ruclips.net/video/NCajt0lRXnA/видео.htmlsi=k1ZKK6wemQ2VBlWG&t=1054) is a waste of time, money and energy. In my experience dealing with investors, they naturally expect folks to understand the market and how their product or service is differentiated over competitors products, but I can't say I've ever been in a situation where doing a prior art search and patentability analysis would have been necessary instead of or in addition to market and competitor analysis. Could you expand on what you mean by "you must know the prior art because it’s going to be brought up in discussions. It allows you to discuss your point of difference compared to similar product ideas that’s why you need to know the prior art." and "Knowing the prior art allows you to overcome the issues, companies are going to have" and why market and competitor analysis won't adequately allow you to "discuss your point of difference compared to similar product ideas" and overcome the issues, companies are going to have"?
It’s quite simple. It’s all about getting paid. They want make sure you have a point of difference compared to the prior art. The smart companies are going to question your intellectual property ownership..They are going to question and challenge you. They will do their homework. So you must know.
I certainly agree that companies are going to question IP ownership in due diligence, but in my experience, prior art searching and patentability analysis is not how this is addressed. I've been involved directly and indirectly in lots of deals and have been on both sides of patent due diligence, and I literally can't remember the last time prior art searching was a part of it, or where I felt like prior art searching would have actually provided actionable information or where I wish I would have had one. I'm very curious to hear about your experience with this - do you have any examples or anecdotes where prior art searching and patentability analysis was critical to a deal or where it provided actionable information that helped a deal? Maybe it's the type of clients, investors, or technology that I/you work with? Do you have any thoughts on how our experience with IP due diligence could be so different? If there is something you think I'm missing, I would love to hear it, including if you think the exceptions I mention are incorrect or incomplete ruclips.net/video/NCajt0lRXnA/видео.htmlsi=k1ZKK6wemQ2VBlWG&t=1054
Very clear and solid information, the level of detail is priceless, thanks for sharing
Thanks!😊
Hi Dylan, a lot of great advice buried in one of your edgiest ever videos. I’m in the process of updating my now long-in-the-tooth video on whether a patent search is worthwhile and I keep coming back to this essay of yours. It's really a tour de force, and I believe, the most thorough video currently on the internet covering the cons and pros of patent searching. There is a good reason it has garnered a ton of views - I have watched it several times myself.
Although you and I are a bit misaligned on your assertions that patent searches are a scam (that was a great hook, though), there is a lot here we agree on in this video and I always enjoy your content. Perhaps at some point in the future we could do a collaborative video, jointly discussing the merits of patent searches and PPAs for inventors, startups and public companies. I think it would be a lot of fun to shoot a video with you and exchange some of our differing views. Keep up the great work; I always learn from your content. 😊 Warmest wishes, -john
Hi John, great to hear from you and thanks for the kind words. Very pleased to hear that you've found this video useful. Excited to see your updated video on if/when a patent search is worthwhile.
Yea, I would certainly agree that lots of patent searching is not actually a scam, but having a hook like "patent searching is a nuanced issue" probably would not have done as well. :) That being said, I still have tons of new clients or consultations come in who show me the absurdly expensive patent searching and analysis that was done for them, which is just a bunch of fluff and boilerplate that provides no actionable information. Definitely not in the same realm as invention submission companies though.
I would love to do a colab video with you! Whether it's discussing patent searching or something else, I'm up for it. I've also noticed that your production quality has been really kicked up a notch recently - your videos are looking great. I need to get back in the studio and shoot some new content; unfortunately, it has been awhile since I've posted something new. Cheers!
@@PatentsDemystified Having just revisited the whole topic of whether novelty patent searches are worth commissioning, I have concluded that it’s a complicated topic and so context dependent, especially in view of the growing library of AI resources that are freely available. Except maybe for your tongue-in-cheek hook, it’s really hard for me to disagree with anything you opine in your video. Your’s really is, however, a tour de force on the topic of patent search value.
There is just no shortcut to practice when it comes to making YT Videos. Counting the 20 or so videos I have delisted and tossed, I’m at about 150 long forms and still am learning at a glacial pace. Our social team has grown, so for sure I am responsible for very little if any of the small improvements we have made over the last nearly four years of recording and posting.
Are you attending Vid Summit or Vidcon Mexico? ‘Would love to grab a beer or horchata and swap YT notes, if you are at either. Keep posting your great stuff; not only is it motivating for to me to watch your content, but also an awesome benefit to the community that we both serve.
Warmest wishes, Dylan. -john
Thanks, John. No, unfortunately, I'm not going to be able to make it to Vid Summit or Vidcon Mexico this year. I would indeed love to sit down with you and chat about your YT experience. I certainly agree with the feeling that learning comes at a glacial pace, but I think that's a typical experience with learning the process of planning, producing, editing and promoting video content.
My goal is just to improve my videos a little bit each time and glean as much as I can from analytics and video performance to see what's working and what's not, and then double down on the things that are working and remove the things that aren't. I think communication via video and learning how to making compelling content is going to become increasing important, and I think of this as a vehicle to learn those skills. I look back on how terrible by earlier videos were and hope to look back on my current videos the same way at some point. Your content is a great motivator to me as well - please keep on posting! As you say, it's a huge benefit the inventor, entrepreneur and startup communities, even if it does not feel like it at times.
Cheers! - Dylan
@@PatentsDemystified This was so cool, I'm now subscribed to both of you.
The benefits of a patent search are: 1) if the patent search finds the idea already exists, you save the money on the patent application; 2) if there are similar patents already, you can write your claims around those existing patents, and 3) you can be aware of patents that your product might INFRINGE. Easily worth the expense of a search.
Thanks for the comment! Yes, you are absolutely correct that these would be the benefits of doing a patent search, but I respectfully disagree that it's worth the expense of a search and analysis aside from the exceptions I address in the video (see link below). I'll address each of the benefits you note below:
*1) if the patent search finds the idea already exists, you save the money on the patent application*
This may be true for the exceptions I discuss in the video here
ruclips.net/video/NCajt0lRXnA/видео.htmlsi=69f10yc7FC4mweM6&t=1055 , but for the vast majority of inventions, in my experience it's typically going to be more of an issue of how broad or narrow of claims you are going to be able to get through and not just a binary patentability issue. I would much rather spend this budget drafting a better application to give us more options to navigate around art rejections. Honestly, I can't remember the last time I wasn't able to find some way to get a case allowed with a well drafted spec and drawings.
*2) if there are similar patents already, you can write your claims around those existing patents*
Personally, I've never been a fan of preemptively limiting my initial claims based on speculative and theoretical rejections that an examiner might come up with. Given the variability between examiners and how subjective examination can ultimately be, I would again much rather spend this budget on drafting a better application and structuring claims well to give us more options to navigate around art rejections and/or give the examiner some claims that likely have allowable subject matter.
*3) you can be aware of patents that your product might INFRINGE*
Again, I'm not a fan of expensive patent searching and infringement analysis. In my experience, a better way to address this is to bake this into the client's own market and competition analysis and have them identify specific competitors with specific patents that might be of concern, if any. Otherwise, doing a general patent search and patentability analysis is so speculative and super-low ROI in my experience. In terms of allocating patent budget and managing risk, money is typically better spent elsewhere.
Thanks again for your insights here. Curious to hear your comments and criticisms. Is there anything you think I'm missing here or completely wrong about? Are there specific types of clients, business plans or inventions where you think one strategy would be better than the other or do you advocate patent searching, patentability analysis and infringement analysis in all cases?
@@PatentsDemystified No, prior art search is key. Not doing it will help you, patent attorney, make hours going around prior art you should have found from the very beginning, and wasting your client's money. It is called "quality at source": a crap patent application can only lead to a crap patent that will not stand in court...
@@PatentsDemystified re " I've never been a fan of preemptively limiting my initial claims based on speculative and theoretical rejections that an examiner might come up with. " sounds like you are not aware of the Festo loss of patent rights consequences of narrowing claims to avoid prior art during prosecution? There is no risk in later broadening allowed claims, so most all your arguments fall flat. In my experience attorneys that advise to skip patent searches are talking their own book to boost their income by drafting and prosecuting what would otherwise be very low value or worthless patent applications. Of course, the bigger the company the less likely patent searching matters because the technical contributors are already well aware of the literature so in those cases maybe, but for startups and individual inventors, IMHO you're just talking your book.
After the patent examiner examines the application, before issuing a patent, how does he know that he has found and looked at all the prior art? Does he look at the provisional patents waiting in the vault?
Examiners can’t know they have found all the relevant prior art. Provisionals alone are still secret and can’t be used as prior art and Examiners can’t find them. Even unpublished non-provisional applications can’t be used as prior art yet. Also, Examiners have extremely limited time on each case and often miss extremely relevant prior art due to limited search time.
thanks I was worried about a pipeline artwork I could not see. I have no problem going into detail of what my design is for examiners sake
Thanks! Glad the video was helpful.
Excellent video! As someone on the precipice of being a patent practioner, I found this all very helpful. Any recommendations on gathering data/analytics on the particular examiner that works on your application?
Once you file a non-provisional it can often be awhile before an examiner is assigned to your case, but once they are, there are a bunch of tools out there there that give you stats on Examiners and can help plan out strategy. There are a bunch of paid tools, but a free one that I found by doing some searching is the following: www.smartpat.us/examinerreport/ There are probably some other free ones out there as well.
@@PatentsDemystified Thank you Dylan. I was recently informed that staying up to date on examiner trends is paramount to doing a job... and keeping it, quite frankly. This is a great place to start!
When it comes to Examiners, it also help to keep up on general trends with them, such as new pressure from supervisors to make certain types of rejections, changes in internal guidance on how certain rejections are made and knowing when Examiners might be especially motivated to allow cases. Examiner interview are also really helpful in getting insider info on what Examiner are up to and also expediting allowance of cases.
Oh man you are God-sent, my product is fully detailed and ready to launch, Ive been suck on what to so next. Thank you.
Thanks! So glad to hear it!
I've seen someone that claims to have a patent, on a product that had already been patented in the 1980's. Is that really possible?
It's not possible to re-patent the exact same thing because the new patent application would be rejected for not being novel and non-obvious over the previous patent. However, if there is a new and non-obvious improvement to the old product, then someone could get a patent on the product with the improvement.
@@PatentsDemystified got it! So, all we have to do is to improve the original patented product?
@user-fx3sj1vf5q Assuming the improvement is new and non-obvious over the prior art, then yes, you could patent the improvement.
Thanks!@@PatentsDemystified
Excellent video! I'm sorry I can't put at least three thumbs. Greetings from Bulgaria, the city of Varna. Thank you for the very valuable information!
Thank you very much! I appreciate it.
How do specific details make it easier to get a strong patent? Wouldn't the more specific you detail the patent the smaller the box you put yourself in in regards to what will be protected?
Great question! That can absolutely be true with the claims of a patent given that the the more elements/detail you have in a claim, the harder it tends to be to infringe that claim. However, that's not true of the description and drawings. Having a great amount of detail in the description and drawings is what allows you to amend the claims during examination to overcome prior art rejections to make the claims new and non-obvious over the prior art while having them be as broad as possible. It's the specific details in the description and drawings that make a stronger patent application that is more likely to be successful in examination and that will result in the broadest claims possible in the end.
For more on the parts of a patent application, including the claims, description and drawings and how they interact. Check out these videos:
ruclips.net/video/whUe4FfxQ1I/видео.html (Parts of a Patent)
ruclips.net/video/0MneopTXX5Y/видео.html (What Are Patent Claims?)
ruclips.net/video/0MneopTXX5Y/видео.html (Patent Claims Explained)
Thank you and you are absolutely right with my few days of looking into what a patent is, sometimes i think its stupidity but well got to o shit...
I’m about to file a patent, and I want to create a startup to develop my invention. What you seem to be saying is that I should start trying to talk to investors the day after the patent is filed, rather than wait to the day the patent is granted or it goes into examination. Am I correct?
Absolutely! Start talking with investors and getting the invention/product out there immediately after filing your patent application (typically a provisional patent application). Do not wait until examination begins or especially until the application issues as a patent.
This video discusses this in more detail: ruclips.net/video/zCbEz3AKVoE/видео.html
@@PatentsDemystified Thanks, first though I'm going to have to find someone with expericance with industrial robotics to parter with.
If it's possible, may I ask if you have any advice on how to locate such a person?
It really depends on the specifics of the invention and business plan and where you need this partner with industrial robotics experience to fit into everything. Do you need the because you lack technical experience in certain areas of robotics for purposed of developing the product? Do you need someone who knows the market for industrial robots and would be helping with making sure the product aligns with what the market needs at the right price point and possibly having connections to potential buyers? All these things are going to influence the person(s) you are looking for. Figure that out first and then get out there and network to find that person or at least people who might know that right person.
@@PatentsDemystified Thanks, I have an economics background and have no experience with industrial robotics. I came to my idea by studying the automation of a certain service industry and noticing a key gap in automation at a stage of the process. The idea came to me and I designed my invention. However I need a robotics engineer who has actual experience building robots. And who knows the right vendors and suppliers to procure components.
Thank you Dylan , aside your great examples on true patentability importance, I've watched dozens of patent videos and your section on the spectrum of protection was invaluable. Thanks so much#4
Thanks! Very glad to hear it!
What about services like InventHelp...?
Definitely don't use services like InventHelp! Companies like this are typically a scam and charge tons of money for worthless research, R&D and supposed invention submissions. Unfortunately, the idea that you can pay your way to success with an invention with companies like this is a total myth.
Well! I already spent money for a prior art search, I could off save some money, I have a question though... my Provitional patent has expired and I am outreaching to licensees to offer my product.... Should I file a new Provisional patent application before I sell my idea? any advice ... I appreciate your help
Yea, it would probably make your licensing pitch much stronger if you had a provisional patent application pending. However, make sure you still have patent rights if your first provisional expired and you've been making public disclosures, public uses or offers for sale. This video discusses this issue: ruclips.net/video/fJXeDodC5pM/видео.html Also, be sure to call it a provisional patent *application*, not a provisional patent. This video discusses why: ruclips.net/video/yfT8U-8PxGY/видео.html
Hello-
Greatly appreciate your channel!
I couldn’t find any videos you’ve done on paying various patent fees ourselves. We have many US, European (unitary), Canadian and Australian patents. On the advise of our patent attorney, we’ve been using a “monitoring” service, that handles payment of renewal fees for us when due, and we pay them. Recently our patent attorney told us a payment was missed, and now there’s a 50% late charge. WE never got any notice, and the monitoring service says it’s not responsible, but wants to charge us additional for “urgency” to get the fee paid before our new patent lapses. Is it difficult for us to handle these fees ourselves? Appreciate your help- patent attorney didn’t answer this question for me.
Yea, maintenance fees and annuities are notoriously a pain in the ass and one of the biggest pain points and sources of anxiety for my clients managing their patent portfolios. You are definitely not alone in your frustration.
I'm the same way - I always have my clients hire a provider help them track and pay their annuities and maintenance fees and I don't take this on mostly for liability reasons. Unfortunately, issues like missed payments and lack of notice are not uncommon - especially as you are getting up to speed on working with the provider.
In addition to making sure you give the provide a list of all your patent assets, one thing that your patent attorney and their staff might be willing to do is coordinate with the provider to give them an updated list of your patent assets so the provider has the full list of what to track. We do that for folks and that seems to make a big difference.
As far as tracking and paying yourself, I wouldn't suggest it. In a lot of countries there aren't any notifications provided until you've already missed a deadline, and figuring out what is due and when and how much can be extremely difficult. I would suggest sticking it out with a provider - in the long run that will be easier and fewer problems than trying to do it yourself.
@@PatentsDemystified Timely answer- thank you so much! Not what I was hoping to hear, but it is what it is. Will take your advice.
What if the examiner misses a preexisting patent and issues a duplicate patent? So now you have a patent and some other person has a patent for the same thing. Wouldn't a patent search prevent that situation? You could invest a lot of time and money into the business/product only to realize that someone else already has the rights to what you thought was your original invention.
It's certainly possible that an Examiner misses an earlier patent, published patent application or other prior art and issues a patent that is actually invalid because it's not new and non-obvious over the prior art as required. However, just because your patent is actually invalid, even in part, does not mean that you can't successfully enforce it, derive value from it or that you would infringe the earlier patent.
Similarly, you could infringe on the claims of someone's issued and enforceable patent, but that's an infringement analysis instead of a patentability analysis. Keep in mind that infringement is totally different than patentability. It seems like you might be blurring the two or mixing them up. This video explains the important differences: ruclips.net/video/9hTMXJtONtM/видео.html
Also, yes, a patent or prior art search along with patentability analysis and/or infringement analysis could theoretically help if someone else has rights. However, as discussed in detail in the video, it surprisingly does not make sense to spend the time and cost on this for the many reasons discussed in most cases. Let me know if there are specific rationale discussed in the video that don't make sense or are unclear.
Is it worth doing a search to determine whether you pursuit a design or utility patent?
Probably not aside from possibly for some of the exceptions I talk about later in the video (ruclips.net/video/NCajt0lRXnA/видео.htmlsi=OZYM3PfDJbRYyzEd&t=1054). Most of the time determining whether you file a design and/or utility application depends on the specifics of invention and not the prior art. The one exception might be for a product where both design and utility would be relevant. In this case, knowing that it would be hard to get a utility application through could inform a choice to also file a design application or even skip the utility application and just file a design application. That being said, most of the time it's possible to give a general ballpark estimate of success to inform this choice without having to actually do a search as I discuss in this section of the video: ruclips.net/video/NCajt0lRXnA/видео.htmlsi=85amrc54OBll45NN&t=879 Great question!
This was so helpful! Thank you!
Thanks! I appreciate it. 😀
How can I retain your services to see if my invention is possibly patent possible?
Thanks again for your righteous support is there who I can work with
Patents are for corporations or people who already have money. Patents are not designed for poor or broke people trying to invent something that could make them rich. If a poor person comes up with a brilliant idea or invention and he can't afford to patent it and can't even afford the attorney fees. What happens? Well, he ends up sitting on the idea until someone one else who's wealthier finally comes up with a simular idea and patents it or he puts it on the market without a patent but cant afford to manufacture it cheaply and with no marketing so he still ends up broke.
Hand-made inventions are more expensive and time-consuming to make for sale and have fewer customers than mass production. Or he tries to sell the product without a patent, and someone steals it. Either way, he's screwed. Yet, rich people can file a patent on anything. Thomas Edison had over 2000 patents because the entire patent process only cost about $45 back then, which is equivalent to about $1200 today. Yet nowadays, a full patent doesn't cost $1,200. It's more like $8000 to $15,000. You could literally buy a good car for what a patent cost. 🤔
Wow..thank you..Great insight free of charge.
Glad to be of help! Thanks for watching.
Can you file for a patent without using a patent attorney?
Yes! Individuals can file patent applications and represent themselves before the USPTO during the examination process. Also, you can work with a patent agent instead of a patent attorney. This video discusses patent agent vs. patent attorney: ruclips.net/video/aQC3nQmri40/видео.html
@PatentsDemystified thank you
You bet. Glad to help!
Love the vids & channel! Thanks!!!
Thanks!
You mention a prior art search/patentability analysis can be worthwhile for very simple inventions. I've already seen your "stealing idea" patent video, and I'm wondering if there are exceptions to going to revealing your idea to a patent attorney. Like if the idea is very simple and is something that the attorney is confident would have a high pay off, that they may try to execute/license it themselves; as they may make more from the income on it then they would in the remainder of their career.
It's an interesting idea and nothing is impossible, but this is so extremely unlikely that I would still strongly suggest that inventors not be paranoid about something like this. As discussed in the "Will Patent Attorneys Steal Your Idea?" video (ruclips.net/video/pXEa8XRFJ7o/видео.html) folks tend to wildly underestimate how hard it is to implement and idea and make it a successful business and product - even for very simple inventions. I can't envision a plausible scenario where there is an idea where a patent attorney would be so "confident [it] would have a high pay off" such that they would "make more from the income on it then they would in the remainder of their career." This is something out of a movie or a crazy conspiracy theory and not something that has any remote plausibility in real life.
I am learning a lot from your video. Thank you for the information! I have a few questions though.
So let’s say you get a provisional patent without a patent search. You then sell your product to a company before getting a full patent, then a few years later find out there was already a patent on it.
1. Are you able to keep whatever profits you made?
2. Are there going to be any legal issues related to this?
Definitely a lot to unpack in these questions. The first thing to note is that patent infringement and patentability are completely different issues and analyses (check out this video for more on this ruclips.net/video/9hTMXJtONtM/видео.html). When you say "a few years later find out there was already a patent on it." Are you referring to an issued and enforceable patent that the product would infringe or a previous patent that would be prior art against your patent application that would make it not new or obvious and therefore unpatentable?
Regarding keeping profits etc. if you are referring to infringing a patent, it depends on your agreement with the company you sell to. Unless you provide warranties that the product does not not infringe any patent that could make you directly liable, you'll probably be able keep profits from the sale to this company and it's on them. It really depends on contract specifics.
Also, just because the product infringes a patent does not necessarily mean you or that company would get sued for damages. The company that owns the patent would have to actively enforce it against you or the company you sold the product to and there is no guarantee that this would even happen.
If you are referring to a patent that is prior art against your non-provisional application, you likely can keep profits unless the sales contract requires that you get an issued patent, which is unlikely. Again, it's very contract specific.
Also, note that there is no such thing as a "provisional patent" just a provisional patent application. (Check out this video for more detail on this: ruclips.net/video/yfT8U-8PxGY/видео.html). Provisional patent applications are not examined - only the non-provisional application that you have to file before the provisional application expires one year from filing. Hopefully this helps address your questions and concerns.
I myself start to see that all this time I can't get help or truth out patent situation because everyone wants money.not to say that people that come up with in idea got money when I'm trying to make something to eat and make a a living
You see my idea they've nothing out there like sounds like or look like my product
Narrow patents aren't worthless at all in many cases that is the whole point and you don't need more then to have the patent for this specific configuration in the specific field it is relevant to.
Where 99% of the value of that patent is in that field anyway since you likely made it for that.
I actually completely agree with you! Narrow patents can actually have tons of value even if it could never possibly be infringed because the general public and even folks like investors don't understand patents and think that everything in the drawings and description is "patented," when it's actually on what's in the claims. Also, being able to just claim and market "patented" or "patent" pending status is extremely valuable - regardless of how broad or narrow the patent or application is. Also, as you mention, a narrow specific patent can still have lots of value if it covers an important specific configuration.
@@PatentsDemystified Thanks for shearing knowledge. I wasn't trying to call you out or anything. You know so much more on patents then me that's just how I see it from my perspective. I am glad I got it right since you seem to agree though. Thank you for informative videos and I will keep on learning from you.
No worries! I really appreciate great comments and questions like this. That's how everybody in the Patents Demystified community learns, including me.
If those details are not in the specifications, they will a rejection. The attorney drafted the application and broadly described my invention, I thought it was standard practice but when I tried describing it in detail, I mean who can better describe an invention better than the inventor, it was rejected. Lol
Yes, that's correct. You are not allowed to add details to the claims that are not fully supported by the text and/or drawings. Sorry to hear that your application was not granted.
You can add corrupt examiners too, working for someone else.
What do you mean by this? How are patent Examiners corrupt and who would they be working for?
@@PatentsDemystifiedI’ve heard that they steal ideas at the patent office and sell them
Yea, this makes no sense either for the exact same reasons that a patent attorney would not steal ideas as discussed in the video, plus it make even less sense given that patent examiners are dealing with patent applications that already have an early priority date. If they were to sell the idea, they would be selling an idea that someone else has already patented or is in the process of patenting. Moreover, patent applications are published by default 18 months from when they are filed, so they become public record at that point anyway.
Hi Dylan, I have been building prototypes for a product I hope to sell commercially. It would compete with an existing product that performs similar tasks even though the design is my own. They have patent for their product, but I am not familiar enough to understand how broad their patent is or if my design would infringe on their patent. Is it typical for patent attorneys to be consulted by someone like me to provide guidance on whether it's worth continuing to work on my product and take it to market?
Yes, consulting a patent attorney or patent litigator would be a good idea in this situation - especially since you are aware of a specific competitor with a specific patent. You'll need to analyze how likely it is that any of the claims of their patent read on your product, possibly if you have any arguments for invalidity of their patent and possibly how you can design around it. The main downside is that doing this kind of analysis correctly can be time consuming and therefore expensive in many cases - often thousands if not 10s of thousands of dollars depending on where the analysis takes you.
For more on patent attorneys vs. patent litigators, check out this video: ruclips.net/video/Ww-RhMh8xBU/видео.html
For more on what infringement analysis is: ruclips.net/video/9hTMXJtONtM/видео.html
Also for more on patent claims check out these: ruclips.net/video/0MneopTXX5Y/видео.html
ruclips.net/video/ZNUEhCtaucM/видео.html
thanks for the great video. eye opening. should we be afraid of disclosing ideas to patent attorneys?
Thanks! Regarding patent attorneys stealing ideas, this video discusses that issue in detail: Patent Attorneys Stealing Invention Ideas: The Real Truth
ruclips.net/video/pXEa8XRFJ7o/видео.html
If these people or anybody try to steal my idea on my product I'm going to court civil court and I got a hell of a paper trail photos sketches since 1986
Just tell me is it a real deal (is it worthless Or not ?)
It depends on the specifics of your situation as discussed in the video.
Great information. Thanks
Thanks!
I write my patents with several iterations.
What do you mean by that? Could you expand on how you draft patent applications with iterations?
Well. Are you promoting "your" business model? Of course, a patent drafted from a well done prior art search is more likely to succeed quickly at the patent office, meaning less actions needed from the attorney who is then not allowed to bill useless hours of work... Public should also know that patent offices are giving for "free" tools to search existing patent litterature. Google Patents and Google Scholar will also help greatly. You are just advising people to cross a mine field blindfolded...
I'm promoting a way of doing patents that minimizes unnecessary cost while maximizing quality. I strongly disagrees with the assumption that "a patent drafted from a well done prior art search is more likely to succeed quickly at the patent office." As discussed in the video, it's counterintuitive, but doing a prior art search is not as informative and does not provide as much actionable information as you would think. Having fewer office actions comes from howl you setup the claims generally, how you approach the examination process and the luck of the draw with the Examiner you get. It's actually a patent search that let's patent attorneys "bill useless hours of work" - not the examination process.
Regarding whether this strategy is just for my benefit as a patent attorney, I strongly disagree. Honestly, I could make way more money if I charged people extra for worthless analysis and prior art searching up front that would not actually help them in the long run. I prefer to work with clients who actually succeed - it's way more enjoyable and we both make more money in the long run. That's why I promote this strategy.
@@PatentsDemystified Let me still disagree. If it is not the patent examiner rejecting your patent application for lack of novelty or for obviousness with regard to the prior art he will interpret, your competitors will find it to get your patent revoked. Again, you do not enter a mine field without a map, or a solid mine detector. You are also more likely to prepare fall back positions in your application if you know what to expect. Added subject matter will prevent you overcoming nasty surprises... And patent search should not cost that much compared to the attorney"s fees...
I'm curious where your strong belief in prior art searching comes from. Have you been through the patent process multiple times and found prior art searching in advance to actually be helpful in examination? What sorts of inventions have you seen through the examination process?
Also, your repeated analogy of "you do not enter a mine field without a map" does not really hold up and the reality actually supports exactly what I'm saying. Specifically, a military does not fully map our a mine field before crossing it, since doing so would be extremely time and cost inefficient. Instead, they just neutralize the few specific mines that come up in the path they end up crossing. Similarly, it's time and cost inefficient to try to map out the prior art landscape and this is unnecessary to navigate the specific prior art path that the Examiner ends up setting out. Instead, just like navigating a real mine field, it's better to neutralize the prior art that ends up in your path instead of trying to anticipate and neutralize prior art that will never come up. In other words, it's more efficient to let the Examiner frame the issues and deal with those issues than to do wildly speculative research and analysis on what the prior art might end up being.
You are the only lawyer telling the truth, how do we work with your company to get a patent?
Also, the examiner will find prior art on the faction of the invention not the actual invention.
Yes, that's correct. The Examiner must show that all elements of the claims are met by the prior art in novelty or obviousness rejections - that includes elements that are not the core of the invention.
Would love to work with you. It's going to be amazing, just like the this popping up lol
I will get my patent, one broad and another narrow !!!
oh, that 2 companies by the way...
@PatentsDemystified sounds like you are not aware of the Festo loss of patent rights consequences of narrowing claims to avoid prior art during prosecution? There is no risk in later broadening allowed claims, so most all your arguments fall flat. In my experience attorneys that advise to skip patent searches are talking their own book to boost their income by drafting and prosecuting what would otherwise be very low value or worthless patent applications. Of course, the bigger the company the less likely patent searching matters because the technical contributors are already well aware of the literature so in those cases maybe, but for startups and individual inventors, IMHO you're just talking your book.
This video stinks. The Prior Art search is extremely valuable. This guy must not know how to search.
It sounds like you didn't even watch the video. Do you have any specific rebuttals to the numerous reasons I give for why prior art searching does not make sense in most situations and the exceptions I give where actually doing a prior art search would be important?
This is terrible advice.
I started taking your course, and I remember Stephen stressing to get a patent a search/prior art search done. Safe to say I'm not sure what to believe now!
His advice is ridiculous.
Please note when you’re negotiating a contract, you must know the prior art because it’s going to be brought up in discussions. It allows you to discuss your point of difference compared to similar product ideas that’s why you need to know the prior art. I can tell you when listening to this type of advice this individual is not in negotiations.
But then again that is not his job. He’s trying to save you money in time.
Knowing the prior art allows you to overcome the issues, companies are going to have. You need to give them confidence you know exactly what you’re doing and you know the marketplace.
Stephen Key
Hi Stephen, thanks for your feedback on my video. However, it seems like what you are talking about here doing market analysis and identifying competitors along with how your product is different, which is completely different than prior art searching and patentability analysis. As specifically addressed in the video (ruclips.net/video/NCajt0lRXnA/видео.htmlsi=Mvo3CajM8aksy1NR&t=960) market and competition analysis is absolutely essential and I'm certainly not saying that folks should not do that. To the contrary, not doing such analysis is a recipe for disaster and would indeed be "ridiculous advice."
On the other hand, I maintain that doing prior art searching and patentability analysis on the vast majority of inventions (aside from the exceptions I discuss here: ruclips.net/video/NCajt0lRXnA/видео.htmlsi=k1ZKK6wemQ2VBlWG&t=1054) is a waste of time, money and energy.
In my experience dealing with investors, they naturally expect folks to understand the market and how their product or service is differentiated over competitors products, but I can't say I've ever been in a situation where doing a prior art search and patentability analysis would have been necessary instead of or in addition to market and competitor analysis.
Could you expand on what you mean by "you must know the prior art because it’s going to be brought up in discussions. It allows you to discuss your point of difference compared to similar product ideas that’s why you need to know the prior art." and "Knowing the prior art allows you to overcome the issues, companies are going to have" and why market and competitor analysis won't adequately allow you to "discuss your point of difference compared to similar product ideas" and overcome the issues, companies are going to have"?
It’s quite simple. It’s all about getting paid. They want make sure you have a point of difference compared to the prior art. The smart companies are going to question your intellectual property ownership..They are going to question and challenge you. They will do their homework. So you must know.
I certainly agree that companies are going to question IP ownership in due diligence, but in my experience, prior art searching and patentability analysis is not how this is addressed. I've been involved directly and indirectly in lots of deals and have been on both sides of patent due diligence, and I literally can't remember the last time prior art searching was a part of it, or where I felt like prior art searching would have actually provided actionable information or where I wish I would have had one.
I'm very curious to hear about your experience with this - do you have any examples or anecdotes where prior art searching and patentability analysis was critical to a deal or where it provided actionable information that helped a deal?
Maybe it's the type of clients, investors, or technology that I/you work with? Do you have any thoughts on how our experience with IP due diligence could be so different? If there is something you think I'm missing, I would love to hear it, including if you think the exceptions I mention are incorrect or incomplete ruclips.net/video/NCajt0lRXnA/видео.htmlsi=k1ZKK6wemQ2VBlWG&t=1054
Neeentendoooo
I am my own attonery