RESIST DUMBING-DOWN YOUR INVENTION



 

In Topliff v. Topliff, 145 U.S. 156 (1892), the Supreme Court stated:

The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy, and in view of the fact that valuable inventions are often placed in the hands of inexperienced persons to prepare such specifications and claims, it is no matter of surprise that the latter frequently fail to describe with requisite certainty the exact invention of the patentee, and err either in claiming that which the patentee had not in fact invented, or in omitting some element which was a valuable or essential part of his actual invention.

Seventy-one years later in Sperry v. Florida, 373 U.S. 379 (1963), the Supreme court stated:

We do not question the determination that, under Florida law, the preparation and prosecution of patent applications for others constitutes the practice of law. Greenough v. Tax Assessors, 331 U. S. 486; Murdock v. Memphis, 20 Wall. 590. Such conduct inevitably requires the practitioner to consider and advise his clients as to the patentability of their inventions under the statutory criteria, 35 U.S.C. §§ 101-103, 161, 171, as well as to consider the advisability of relying upon alternative forms of protection which may be available under statute law. It also involves his participation in the drafting of the specification and claims of the patent application, 35 U.S.C. § 112, which this Court long ago noted “constitute[s] one of the most difficult legal instruments to draw with accuracy,” Topliff v. Topliff, 145 U. S. 156, 145 U. S. 171. And, upon rejection of the application, the practitioner may also assist in the preparation of amendments, 37 CFR §§ 1.117-1.126, which frequently requires written argument to establish the patentability of the claimed invention under the applicable rules of law and in light of the prior art. 37 CFR § 1.119.

Patent application preparation and prosecution requires thoughtfulness, counseling, and strategy from an experienced patent attorney/agent who holds a federal license to practice before the United States Patent and Trademark Office.  However, inventors often mistakenly place their valuable inventions in the hands of unlicensed and inexperienced individuals and/or organizations marked as low-cost alternatives.  However, according to the Supreme Court in Topliff “the latter frequently fail to describe with requisite certainty the exact invention of the patentee, and err either in claiming that which the patentee had not in fact invented, or in omitting some element which was a valuable or essential part of his actual invention.”  Id.  Although inexperienced and unlicensed practitioners are often less costly than experienced and licensed patent practitioners, the cost savings often come at the high price of poor patent protection, or no patent protection at all.


Client Approved

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"Our company has worked with a number of patent attorneys and were so pleased when we began working with Parsons & Goltry nearly a decade ago. Mike Goltry's knowledge and attention to detail has enabled us to have numerous products patented and trademarks registered. We highly recommend this Law Firm."

- Sharon K.

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"Michael Goltry is the most professional, honest and effective patent attorney whom I ever met in my 40 year professional engineering career. I started to work with him over 20 years ago and plan to work indefinitely."

- Zoltan Kemeny, PhD, Struct. Eng.

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"Mr. Goltry took a provisional patent that we'd filed ourselves, and quickly and professionally turned our innovation into U.S. and foreign applications. His [patent claims] were a thing of beauty, and I was amazed by how deftly he countered the inevitable office actions. His language held up, and the U.S. Patent just issued. He was easy and efficient to work with, and his fees were remarkably reasonable. We're not planning to go anywhere else, ever."

- Ski Milburn, CEO, Victori, LLC

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"I applied for a patent through Parsons & Goltry. After being on the docket for 2 years at the USPTO, I received notification that my patent request had been denied. Michael Goltry contacted me immediately to review my options. After I informed him of my decision to move forward, he filed a response to the USPTO. In his response he got the examiner to fully understand the claims in the patent application and the "denied" decision was reversed. I was able to secure and receive a "patent granted" decision. Thank you, Michael Goltry."

- Kathy H., Inventor

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10643 North Frank Lloyd

Wright Blvd. Suite 201

Scottsdale, AZ 85259

Phone: (480) 991-3435

Our office is located in Scottsdale, Arizona, but we service clients throughout the United States and Internationally.

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