From: berryh@huey.udel.edu (John Berryhill, Ph.D.)
Subject: Re: Patent info request
Organization: little scraps of paper, mostly
Distribution: misc
Date: Sun, 8 Nov 1992 09:44:48 GMT

In article <1992Nov8.053154.1220@panix.com> oppedahl@panix.com (Carl Oppedahl) writes:
>In <bhayden.721143602@teal> bhayden@teal.csn.org (Bruce Hayden) writes:
>
>>berryh@huey.udel.edu (John Berryhill, Ph.D.) writes:
>
>>>Both Carl Oppedahl and Bruce Hayden have told you that step one is
>>>to get a patent attorney.  
>
>I don't believe either Mr. Hayden or I said this.
>Can the writer back this up with a quote?
>Two quotes, actually.

I'll give you three quotes.
1)  "The first step in getting a patent is getting a patent attorney"
     -Bruce Hayden 3 Nov. 1992 14:25:34 GMT

2)  The guy did not ask for legal advice, he just asked what was
    involved in getting a patent.  You said:
"Anybody (including the poster here) who is making real-life decisions
had better talk to a patent lawyer about all this."

3) "Of course, the U.S. patent law does permit inventors to apply on
    their own (without a patent lawyer).

REMARKS:

First of all, I was quoting Mr. Hayden directly.  Had you been following
the thread, you'd have seen Mr. Hayden's article.  In fact, it is included
in the references line of my article to which you responded.

Second of all, your two quotes above give the impression that there
are only two alternatives since you define "on their own" to mean
"without a patent lawyer."   You then go on to present an argument
that going to a patent lawyer has several advantages.  That may be
very well true.  My point was simply to inform the poster that there
was a cheaper alternative.  viz:

>>>That's not surprising since they are both
>>>patent attorneys.  However, you should know that there is a much
>>>cheaper alternative...
>>>To suggest that a patent attorney is necessary for obtaining a decent
>>>patent is quite simply wrong.  
>
>I don't believe either Mr. Hayden or myself said this or suggested this.

You gave two alternatives.  You know very well that pro se patent
prosecution is a bad idea.  What does that leave?

>>Technically, there are a couple of services that we (as patent attys)
>>can provide that a patent agent cannot. A patent agent cannot tell you
>>whether a patent is valid or not. That would be interpretation of a 
>>legal document for another, and thus the unlicensed practice of law.

Not only can a patent agent, but ANY member of the public can file
a 501 citation or a reissue protest.  My 501 citation is then a
public document.  Are you saying that I couldn't file a 501 citation and
then show it to whomever I please?  I beg to differ.  And that is only
one of several loopholes.


It should also be noted that, except as I just noted, only a patent
attorney can give a validity opinion, there is one other twist.  A patent
is not properly interpreted by one not skilled in the art to which
it pertains (if you want the citation, I'll look it up - Kayton makes
a big deal about it).

>>He possibly may not be able to tell you if the prior art makes your
>>invention unpatentable. However, this latter is borderline since he
>>definately can take the same prior art and write an application that
>>claims around that prior art.

37 CFR 111(c)

>I believe that one factor worth considering when selecting someone
>to prepare a patent application is whether the candidate has
>litigated patents as well as prepared patent applications.  I
>believe that one who has litigated patents will draft a patent
>application with the benefit of the litigation experience, and 
>will be able to choose and fine-tune the language of the application
>informed by that experience.  By definition, one who has litigated
>patents is an attorney.

Also by definition, one who has litigated patents is expensive.  Too
expensive, in fact, to make it profitable for his or her firm to have
him or her actually write the things that go out over his or her
signature in many instances.

There is quite a bit to be said for familiarity with litigation issues
as can also be had, for example, by preparing expert witness testimony.
However, there is no substitute for understanding the client's
invention.

>I have tried to imagine what made the commenter think that Mr. Hayden
>or I said those things.

Rather than using your imagination, go back and read Mr. Hayden's
article.

>disclaimers that all lawyers must necessarily place in their
>writings.  I often will say something like "This is not legal 
>advice.  For legal advice on this subject, see a lawyer."
>But it would be wrong to try to stretch such a disclaimer into 
>the sorts of things above which were being put into my mouth.

The original poster simply wanted to know about the patent process
and what was involved.  Mr. Hayden answered with the "step one"
quote, and you answered with the "anybody...better talk to a lawyer."
You further defined pro se application as "without a lawyer."

>
>And it is true that patent agents cannot give "legal advice", but
>can only represent inventors before the patent office.

And it is true that the only place to get a patent is the patent
office - that's what the guy was asking about.
-- 
                                                John Berryhill, Ph.D.
Newsgroups: misc.legal.computing