Comments on: Working Effectively with your Firm’s Patent Attorneys

By: stevekimble9

stevekimble9 — Thu, 18 Apr 2013 05:20:05 +0000

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By: Siddiqi

Siddiqi — Tue, 16 Oct 2012 14:58:02 +0000

How do one file the chalenge to patent with USPTO if an inventor name is not included. I have this situation with documented proof. I proposed several compounds for an invention. I left the company. I noticed company filed the patent but my name was omitted. I am confident it was deliberate act. Is there a way to file a complain with the patent office to rescind the patent?

By: Jaconda

Jaconda — Thu, 12 Jul 2012 22:00:19 +0000

@fetzthechemist,
I smiled when I read your comment. As attorneys, words matter. For example, in claim construction, the use of “a” versus “the” has legal significance and drives some of the questions that I ask. The attorneys don’t mean to constrain or bore you, but we are trying to get the broadest protection possible based upon what you define the invention to be. And, as a matter of law, the invention needs to be more “black-and-white” and less “shades of gray” in case you find yourself in litigation.

By: Jaconda

Jaconda — Wed, 04 Jul 2012 07:22:28 +0000

John’s article is a good overview of the patenting process and the issues that might be faced by a scientist working with a patent attorney. As a practicing patent attorney, I would like to add that the scientist should keep in mind that the patent attorney, while technically trained, is working from a legal standpoint not a technical standpoint. The scientist is the technical expert and must work with the attorney to adequately describe the invention. The attorney will do the legal work by drafting the claims and making the legals arguments; however the technical description and response to technical questions falls to the inventor. As I tell my inventors, if I, the patent office or the industry knew the answers to these technical questions, we would not be having this conversation. Why? Because, by definition, patentable subject matter is new. It’s new because you, the inventor, discovered or created it. As such, you are the only one who has the technical expertise to make the attorney, patent office and industry comprehend what it means. I spend a lot of time when drafting the application asking questions about the invention to ensure that it is adequately described and captured to support the claims to the invention and distinguish it from the prior art. I depend heavily on my scientist in doing this so that we can save time during prosecution and hopefully avoid litigation in the future. As the inventor, your efforts in this, are invaluable.

By: fetzthechemist

fetzthechemist — Mon, 25 Jun 2012 15:21:48 +0000

Patent attorneys are much more complex than just people who deal with the issues of patents and patent law. Their ways are thinking are fundamentally different than chemists. Their world is rigidly in every aspect a black-and-white one. This contrasts dramatically and can even clash with our chemists’ view of only shades of gray. Attorneys are detail oriented to the point of minutae, chemists are more bigger picture thinkers. During a review of one of my patent applications, the two attorneys working on it spend fifteen minutes discussing the exact meanings of a phrase relative to whether a comma or a semicolon was better at a certain place.

To deal with that mindset can be frustrating and maddening to a chemist if he or she does not understand not only the business purposes but the way attorneys think.