All posts for the month April, 2018

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Patent Trial and Appeal Board – What Does it Mean for Inventors

The article listed at the end of this post was originally posted on the Washington Free Beacon. There are many articles like this on the Internet, but the question is the Patent Trial and Appeal Board bad for inventors, as these articles claim, or are inventors not really affected negatively.  I spent 40 years in industry, primarily as a business developed person and marketer before becoming a patent agent, and I can see both sites of the issue.  But the new patent and Appeal board as it currently is set up definitely could use some adjustment.

A Little Background

The problem the patent office always has had is that its examiners have incomplete information.  They know about previous patents and applications, and often about foreign patents, but they do not know about other prior art, which has not entered the patent arena, which could be people testing a new idea, solutions that have been tried and then dropped, small and large product entrepreneurs who have introduced products without patents. Prior art, or activity that happened before an application was filed can be anywhere in the world. It only needs to be disclosed to the public.

Also the one year to after disclosure only applies to the patent applicant. Prior art from others does not have a one year grace period, it counts immediately against subsequent patents.

Patents Issued

In my opinion, when the patent office issues a patent, it is not now, or never has been, a guarantee that the patent holder truly has patent rights. The courts have not only ruled against patent rights in many cases, but the question of who is infringing on a patent has also been settled by courts. In reality patents have always been subject to subsequent review by courts.

But in practice, there have been other issues. For example a manufacturer might be served with a cease and desist letter from a patent holder. That company can respond simply by showing that it had done testing or work on a similar idea and that they weren’t infringing on the patent, as they had prior art. That company served with cease and desist might go right on selling the product, and the patent holder might continue to send out cease and desist letters to other companies. So two companies in effect have patent rights and other companies are unfairly denied the right to enter the market.

The issue here is that patent law suits are expensive for everyone. Patent holders often afford to enforce their patents, and in almost all patent there is plenty of prior art people can reference that possibly cause a patent to be unenforceable.

So the high expense of court action resulted in a situation was bad for inventors, and not great for companies who had large patent lawsuit expenses.

Patent Trial and Appeal Board

The patent office latest decision was to have a Patent Trial and Appeals Board, which is not a court, but a internal patent office function to hear appeals from companies or individuals who feel a patent was granted without properly accounting for all prior art. The fees can range from $200 to $22,000. To the patent office, this is a way to ensure the patents it issues have a better chance of not being subsequently affected by prior art.  To the patent holder however, this process subjects inventors to increased costs, and possibly greatly increased costs.

Worse for inventors is that people or companies can challenge patent applications that are published.  Here is an example of how that worked out poorly for one inventor from a story I wrote for Inventor’s Digest in June of 2016. .

Creating Knockoffs for Your Own Product

Donna Ramere was excited in 2010 when she attended the Toy Fair in New York and received orders for over four containers of the Pumponator, a product created by her granddaughter Lexi Glenn that to quickly fill water balloons. But only two months after the Toy Fair a company with a knockoff of the Pumponator was on the shelf of Walmart in Canada.  Ramere’s Pumponator patent pending status didn’t stop the knockoff, and her patent never issued after someone filed protests under the Patent Office’s third party submission program before the patent issued. All is not doom and gloom however, Ramere’s company Pumponator Fun, Inc sells over $1 million per year to over 2000 accounts.  But by Ramere’s count the original knockoff company, and a second who entered the market in 2012, have sold $31 million of Pumponator knockoffs since 2010.  Sales Ramere would certainly like to have had.

Attending the Trade Show

The Pumponator had a great sales at the show, selling four containers of product, and setting up the success that has the Pumponator sold today in 15 -20 middle mass market stores such as Nordstrom’s and Urban Outfitters among a total of over 2000 accounts.  But the show created interest that had some troubling consequences.  Early in the show a man came to the booth and introduced himself to Ramere and then according to Ramere he told her that “he was going to be her worst nightmare because he was going to knock her product off.”  Two months later he had the product in Walmart in Canada and before long in Walmart stores across the US.  Two years later a second knockoff appeared and the two knockoff suppliers dominated the low cost retailers like Walmart and Family Dollar.

What about that patent pending status?  Ramere didn’t realize it but patent pending status doesn’t offer an inventor any rights to sue someone selling a product that infringes on her design.  Only an issued patent does that. Even worse for Ramere was the fact that the Patent Office has a third party submission program which allows anonymous comments from individuals or companies challenging a patent application.  Ramere’s application received third party submission comments, one which claimed that the patent didn’t even cover her product’s current nozzle design. Ramere has never been able to get a patent and has given up trying.

Today Ramere and granddaughter Glenn are working on a new product.  Sales still march on.  But Ramere can’t help being a little bitter about what might have been. Today when she consults other inventors she always tells wait till you have a patent before going out.


Personally I feel the patent office needs a way to address the issue that examiners have incomplete information, and they always will have incomplete information. So patents may not meet the prior art criteria, even if they have been issued. I’m not sure the Patent Trial and Appeal Board is the best solution.  I’d rather see the following changes.

All patent applications must be published in six months.
Patents should not be issued till 12 months after publication
An alerts system should be established so people can register to receive alerts when an application relevant to them.
People should be allowed to submit comments and reviews, with documented evidence, regarding patent applications.
The USPTO should set up an ombudsman program to help patent applicants know how to respond to challenges or comments.

The Supreme Court has ruled in favor of the bill, which large companies lobbied extensively for, in the Oil States Case, so I don’t think anything will change, but perhaps the inventor community can work with the USPTO so the law’s implementation isn’t quite so onerous for inventors.

SCOTUS (Supreme Court of the United States) Comes Down Against Inventors in Oil States Case

Gorsuch decries retreat of judiciary in dissenting opinion

BY: Charles Fain Lehman

Originally published April 24, 2018 3:50 pm The Washington Free Beacon

Inventors’ rights can be revoked through a controversial administrative process, the Supreme Court ruled by a seven-to-two margin on Tuesday, a move that promises to continue the trend of invalidation of hundreds of existing patents.

The case, Oil States v. Greene’s Energy, concerns an administrative tribunal called the Patent Trial and Appeal oard (PTAB). As the Free Beacon has previously reported, the PTAB is responsible for reviewing patents whose validity have been challenged. The PTAB runs on a host of procedures alien to federal court proceedings: lower evidentiary standards, the ability of anyone to challenge a patent right, and a broad interpretative standard for PTAB administrative judges.

Because of these procedures, the PTAB has a track record of striking down more or less every patent that passes in front of it: A former federal judge once called PTAB tribunals “patent death squads.”

Oil States argued in its brief, and in oral arguments last November, that in practice the PTAB was actively depriving American inventors of their property rights, an institution normally held sacrosanct under the Constitution. Furthermore, they argued, those property rights were being deprived by administrative courts. These are importantly not under the federal court system, to which the Constitution explicitly reserves the “judicial power.” In other words: Americans losing their property rights without due process in a real court of law.


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Creating an Invention Plan

Inventing is not a straight-forward world. Some inventions are easier to introduce than others, and some inventions are nearly impossible for an under financed inventor.  Preparing an invention plan before you get started with a new idea will help you choose ideas that are easiest to succeed with, and will also help keep on course during the invention process.

Define Your Idea

Your idea needs to have every feature defined and also it needs to have every component identified.  A drawing is helpful also.  This step is helpful because it allows you to see the complexity of the idea, and understand what help you might need to develop the idea.  Defining your idea fully is also what people expect from you if you start talking to patent attorneys or patent agents, prototype developers, possible investors or industry contacts.

A Little Research

Three steps in initial research every inventor should do are first, do a Google search to see if anyone is selling a product like yours. Second do a Google patent search.  Google patents is a great site. The easiest way to get their is just to do a Google search for Google patents.  This is not as good as a patent search from a professional, but often it will pop out patents that might compete with yours. Third go to product directories in trade magazines, or directories from past industry trade shows.  You can find these by doing a Google search for product directories for your industry, which is you product category. For instance you can do a search for product directories bicycle industries.

This research will help you see if anyone has done a product like yours before. Just because you haven’t seen a product on the market doesn’t mean that someone else hasn’t already introduced, created or patented your idea previously

A Plan for a Model or Prototype

Inventors can get a patent without a prototype or model, but they have a very hard time achieving commercial success without having one.  People need to see a product to realize that it will work, and how much better it will work than competitive products. Can you make a model or prototype yourself, or can you afford to have one made for you.  Prototypes produced by outside vendors are much more expensive than most inventors think. So if you can’t make it yourself get a quote from someone who can make a prototype.

Inventors often come up with multiple ideas, so if you can’t see how to make a prototype, or don’t have resources to build one, consider looking for an alternate idea.  Otherwise your  path to success could hit a dead end at this point.

Showing Market Acceptance

Inventors benefit when they can show market acceptance before they spend too much money. This can take many forms.  Selling products at local fairs or trade shows is one method. Starting a web page and generating a response is another. A popular tactic is to offer a product to a Facebook group that includes target customers. You might also have mentoring support from a sales or marketing executive, or distributor in your industry. I have taken provisional orders for industrial products, where the customer gives an order but has a clause that the product must pass inspection and performance tests before delivery. This is safety precaution that you will want before spending money, but more importantly, you can frequently get financial support from investors or even potential manufactures when you can show you have a strong chance of success.  This proof also increases your chances of licensing your product anywhere from five to 10 times, and possibly even more.

I listed a few possible ways to show market acceptance, but there are many more ways that a creative person could come up. thinking outside the box is an approach inventors need to take, not only to create their ideas, but to introduce their product.

A First Stage Market

Inventors succeed most often when they can start sales on a small scale, before moving to bigger sales. This gives inventors a chance to work out the production bugs and also to develop a sales history that helps inventors.  Small retailers, consumer shows, Internet sites and Facebook pages that cater to your target customers, Home Shopping Networks and catalogs are all good first target markets for inventors.  Read this post for more information.

If you don’t have a first stage market your risk in introducing the invention goes way up.  Try to fin an industry insider to help you.  Read more about this approach at

Manufacturer for Small Quantities

If you are going to sell small quantities, you will need a manufacturer.  Don’t assume that an overseas manufacturer is the best choice. Often they require large quantity purchases and big down payments which you may not be able to afford.  Check out US manufactures too.  This post covers information about finding a contract manufacturer

Will You Be Profitable

You won’t know this till you go through these steps.  But this is the point that really counts.  You had early sales in your plan, and at this time you should have quotes.  To profit long term you need to sell your product for four to five times your manufacturing costs.  This is  a Go/No Go point in your decision matrix.  Don’t go on till you have the four to five times costs ratio.

What’s Next

the next step is to write a Marketing Plan and a Business Plan and raise money to launch you invention. You don’t need to worry about those steps at this time. You just need  to get through the preliminary steps first so that you know you have an invention that will sell.  If you have positive results after planning doing for your invention, then you should move ahead with at least a provisional patent.






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Creating a Big Bang for Your Invention

Inventors need to create a big bang, something that will get people to look at their idea, if they want to succeed. Contacts in the distribution channel, or if you are attempting to license the product, at companies are busy and distracted and you need to get their attention, which calls for a careful strategy on your part. Following these steps to help you grab the attention of your prospects.

Know Your Competition

It is a great start to state I’m competing with these products, and then show the tow or three biggest products in the market. This helps your contact know, one that you have done your homework and know the industry, two, what market space you are competing in, and what products to compare your to.  You are giving your contact a frame of reference to understand your invention. A frame of reference is very important, I can’t tell you how many times when I reviewed items for licensing that it took me five I’ve taken five or ten minutes to get a frame of reference in a product.  By then I had lost all interest.

Customer Focus

State what customer’s issue are with current products. Priced too high, doesn’t work well in this application, too hard to operate or what ever the issue is.  Customer focus is why your product will succeed, and not necessarily your product’s features.  You want to show customers are looking for a solution that your product offers.  Your contacts will be evaluating your idea not only on its merits, but also, and possibly primarily, by how easy it will be sell.  Hitting a customer’s hot button is one way to create a big bang.

How You Hit Customers’ Hot Buttons

Once you establish the customer’s hot button, then you show how your product hits it.  I like to show first how competitors try to hit that button but fail, and then show how you hit the button.  A demonstration is very effective at this point. My most effective demonstrations are when I show competitors products and my products. That is not always possible, but when you can do that.

Show End User Feedback

Nothing is better than be able to say that 80% of end users rated your product above the competition. Focus groups are easy to run, and they provide a great tool for producing the type of end user feedback that helps created he big bang.  Check out this post to learn more about running a simple focus groups.

Mention Industry Contacts Who Support Your Invention

If you have contacts in the industry, industry sales people, retail store managers or owners, distributor contacts or any others, who have given you support, now is the time to bring them up.  Showing you have industry support creates a big positive impression on your contacts. Check out these posts for more information: and

Wrap Up

What you are really doing with the approach I’m advocating here is mirroring the thought process of your contacts.  When they are looking at an idea they follow a process much the same of what I’m suggesting here.  If you show them your product with its features, as inventors like to do, they are evaluating it in the process I’m proposing here. Why not take control by giving them the information they want with your own positive spin.




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