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Can I appeal a patent application that was denied
Boston, MA
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Posted about 1 year ago in Patent Application
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Patent Application (idea) rejected:
My Brother and I invented a device used in a vehicle to govern top speed when teenagers were given the family car to drive. Without going into detail for obvious reasons, let me just say that I saw on the news yesterday that a major American Auto company will be introducing a device on a new car to be released in model year 2010 that is almost* identical to my Brother and my invention. *ours did not include programming the sound system maximum volume or emit a warning chime if the seat belts were not buckled. Otherwise, it looks to be an exact duplication of our idea. Now here is the problem. We came up with this idea 2 years ago and documented the idea with a detailed description and drawings. We contacted a Patent attorney and hired him, for $3000, to do a search after handing over our invention information. Several weeks later we were told by the attorney that our idea was not patentable because it needed revisions to make it unique and give it a better chance of being patented. We felt that our idea (and the methods in which we achieved our intended goal) were exactly what was needed after doing extensive research and study. Bottom line, our idea was never patented based on what this attorney told us. Considering that this newly revealed device coming from a major automotive company is exactly like ours (from what we could tell from the news article), do we have any case or recourse in this situation. Either against the Auto company or the Patent attorney...or are we just out of luck? After a lot of hard work (and considerable monetary investment), we want to make sure that there is absolutely nothing we can do to get the credit we deserve for this (literally) life changing idea of ours. As a second question, we have talked with some attorneys that have told us that "you can not patent an idea". This I find unbelievable as I am sure most inventors like ourselves, can not afford to create working prototypes of their ideas yet have ideas that could make a large (and small) contribution to all our daily lives.
We are looking forward to your response. Thank you. - Is this your question? Add additional information Answers (7)
Frank A Selden
This attorney is licensed in Washington.
Posted about 1 year ago.
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You can not patent an idea. Sucks for small inventors. There is also talk about changes to patent law recently that allows for a first to file process which will also disadvantage small-cap inventors. However, you have more substantive issues to deal with than the ethics of the US patent system.
Auto companies are periodically in the news for "stealing" patents from small-cap inventors. Even if you do not get the patent you might get a settlement to allow them to have the patent. One thing to consider, though, is whether the patents that the attorney's search revealed (requiring you to make revisions to get a patent) were ones behind the recently revealed technology. Just because your idea wasn't visible in the market at the time doesn't mean some automaker didn't have any patents in development to create that idea. I recommend you find an aggressive patent litigator. then go after the auto company depending on that consult. 
Oscar Michelen
This attorney is licensed in New York.
Posted about 1 year ago.
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You should consult with a different patent attorney to review your documents. It is possible that the patent for the device that Ford released yesterday was pending at the time and that was the reason your lawyer told you it was not unique.
To answer your second question - it is true that you cannot patnet or copyright an idea. To be sure, the "idea" is always the first step and the most important, but until it is embodied in an invention (or in the case of copyright a work of art, say) it is not protected as intellectual property. The ideas must be written down and the product or process or invention must somehow be be put onto paper in a demonstrable fashion. You need to develop a game plan of sorts of how to produce the product in the marketplace. You then move your "idea" to the next phase which is calling it a "Conception." From there you would go to a provisional patent application and so on. If you cannot afford to move off of the idea phase and you need investment to get beyond that you can have a lawyer draft confidentiality agreements that would provide some protection for your idea from theft by would-be investors. You may want to see "Falsh oif Genius" the new moivie about the man who invented intermittent wipers only to have his invention taken by the auto companies. 
Dylan O Adams
This attorney is licensed in Washington.
Posted about 1 year ago.
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It is not entirely correct that you cannot patent an “idea.” Generally, processes and physical products are patentable. Accordingly, as long as your idea is embodied in a process or product, it may be patentable. The standard is simply whether you would be able to enable “one of ordinary skill in the art” to make and use the invention based on your patent application. An actual prototype is NOT required — a patent application is constructive reduction to practice.
Additionally, your invention must be new and non-obvious in light of previous “prior art,” which may be patents or other publications. It sounds like your patent attorney discovered prior art that he thought would render your idea not new or obvious. It’s impossible to know whether this assessment was correct without doing knowing what your attorney found. It sounds like you came up with a good idea, but needed to develop it more before it could be patentable. Often times, in crowed fields of art like the auto industry, it’s the minor details that that make an idea patentable over the prior art. Even if you did have something that could have been patented, it’s not clear whether you would have any patent rights remaining or if you could even claim benefit of inventing before the auto company did. Consult another patent attorney to determine if you have any remaining patent rights and whether it would even make sense to pursue a patent at this point. Even if you were to eventually obtain a patent, it still does guarantee that you would have any claim against the auto maker. Moreover, patent litigation is very expensive, especially against large companies. 
Craig Andrew Redinger
This attorney is licensed in Michigan.
Posted about 1 year ago.
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For an invention to be patentable, it must be novel and non-obvious in light of the prior art. If an invention already exists, either physically or in a published description that would allow skilled persons to make the invention (i.e. a patent or patent application), it is not novel. If the invention departs from the prior art only in trivial respects, it is considered obvious.
From the information that you provided, I would guess that the attorney that you hired discovered one or more prior art patents that disclose the exact invention that you proposed. You should carefully review the documents provided to you by your attorney. If you believe that the invention is not clearly disclosed in the documents provided by your attorney, you should hire another attorney to review the documents, provide a second opinion, and counsel you regarding your options. Keep in mind that while many inventions are patented, and few actually make it to the marketplace. I often work with inventors that have commercially viable ideas that we discover had been previously patented (sometimes 50 to 100 years ago), but never made it to market. With regard to patenting an idea, patents are available for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof". There is no requirement that you make a prototype. You simply need to be able to describe the invention, embodied in a machine or in process steps, in a manner that would enable a person of skill in the art to make and use the invention. 
Nancy Baum Delain
This attorney is licensed in New York.
Posted about 1 year ago.
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Speaking exclusively to your second question, the patent attorneys are right: you cannot patent an idea; the idea must be reduced to practice -- i.e., you must be able to build and use the invention.
That, however, does NOT translate into "You must have a working prototype built." A prototype for an invention is the patent application itself. The US Patent & Trademark Office gave up on requiring working prototypes to be submitted with a patent application years ago, basically when they ran out of warehouse space. Now, constructive "reduction to practice," required of all ideas to be thrown into the patent system, is a full disclosure in a patent application as to how a working prototype would work if it were built. THE INFORMATION PRESENTED HERE IS GENERAL IN NATURE AND IS NOT INTENDED, NOR SHOULD IT BE CONSTRUED, AS LEGAL ADVICE. THIS POSTING DOES NOT CREATE ANY ATTORNEY-CLIENT RELATIONSHIP BETWEEN US. FOR SPECIFIC ADVICE ABOUT YOUR PARTICULAR SITUATION, CONSULT YOUR ATTORNEY. 
Daniel Nathan Ballard
This attorney is licensed in California.
Posted about 1 year ago.
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I think Mr. Adams and Mr. Redinger provide the most salient advice.
You hired a patent attorney to opine on whether your invention could be protected under patent law. He said no -- but he apparently either did not provide you with the specific reasons or you have excluded them from your question. You now see that a similar invention will soon be in the marketplace. Assuming your patent attorney failed to tell you why your invention was not patentable, it's reasonable for you to simply ask him for an explanation -- especially in light of the Auto Company's apparent use of a similar invention. Be prepared to answer the question of what you did to the invention to "make it unique" since the last time he reviewed your description of the invention. Bear in mind that the issue is not whether there is a need for your invention in the marketplace, the issue is whether your invention can clear the legal hurdles to justify the issue of a patent. NOTE: just because Auto Company is using a similar invention to the one you conceived does not mean that either it or your invention are patentable. In fact, the vast majority of components used in sophisticated machines and other articles are not patent protected -- either because the protection has expired, was never sought, or was not patentable at all because it was either obvious in light of other existing inventions or just too similar to an existing invention. 
Sadiq Aziz Ansari
This attorney is licensed in California.
Posted 9 months ago.
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As other posters have said, the statement "you cannot patent an idea" is not necessarily true. If your idea is simply, "let's limit the speed of cars when teenagers drive," then it is true that you cannot patent that. However if your idea is for a DEVICE that can limit the speed of cars, and you have an idea of HOW TO MAKE that device, then your "idea" is patentable, as long as your patent application describes how to make the device (this is referred to as "enablement").
As for the first question about what your recourse is, it doesn't seem like we are getting the full picture. When you say "it needed revisions to make it unique and give it a better chance of being patented," it seems that your attorney did a search, and advised you on potential ways to modify your invention in order to make it patentable over the prior art. At that time, you (or preferably an attorney) should have filed a patent application which included some modifications to make it novel in light of what your attorney found in the search. It seems that perhaps your attorney did not do a good job explaining that at the time, and I'm so sorry that an application was not filed on your device at that time. One thing you might want to do is consult an attorney about filing an application now. You may still be able to, provided you haven't made your invention public within a year of your filing date. And you may also get the benefit of your invention date if you can prove date of invention as well as diligence since then. **This post does not constitute legal advice, nor does it create any attorney-client relationship between Sadiq Ansari and any other individual or entity.** |
