Patent It Yourself - PDF Archive

ChAPtER 15 | AFTER YOUR PATENT ISSUES: USE, MAINTENANCE, AND INFRINGEMENT | 417
considerable clout to get a federal statute enacted which
exempts health care providers (for instance, doctors,
nurses, and hospitals) from liability for performing medical
procedures covered by in-force patents. (35 USC 287(c).)
In view of this statute, it no longer makes sense to patent
medical procedures, as such. However, the statute still
allows patent owners to sue health care providers for any
activity that infringes a patent on (a) a device, (b) a drug, (c)
the use of a drug or device, or (d) a biotechnology process
invention.
While this medical proceedings exemption statute is
well-intentioned, most patent practitioners believe that it
stifles innovation. An example will show why. A client of
mine invented a new and promising ophthalmic technique
that would help sight-impaired persons. He needed funding
to develop it. When he asked me to prepare a patent
application on it, I told him about the new law. He realized
that even if he got a patent, he would not be able to enforce
it against any medical practitioners who used the technique.
He also realized that any patent he got would be worthless.
Since it would not pay to develop it unless he could get a
proprietary position, he dropped it and the world will not
have the benefit of his potentially valuable innovation. Thus,
many people with impaired vision who could have been
helped will have to live with their impairment.
G. Be Wary of Offers to Provide
Information About Your Patent
Soon after being awarded a patent, a client of mine received
an offer by mail, advising that an “article” about her
patent was published and offering to send her a copy of the
article for $3.95. After anxiously sending in her money,
she received the “article,” a photocopy of a page from the
PTO’s Official Gazette, showing the usual main drawing
figure and claim of her patent! Fortunately she was able
to obtain a refund by threatening to call in the FTC and
postal inspectors, but you may not be so lucky; new rackets
originate all the time.
Another offer very frequently received by patentees,
usually about a year or more after their patent issues, comes
as a postcard, such as in Fig. 15A.
I believe this offer has marginal utility to most inventors,
and at a very high cost. I wouldn’t accept the offer, since
almost all patents in which earlier patents are cited as
references are very different and extremely unlikely to
be of any value to the owner of the earlier patent. You
can obtain the same service free on the PTO’s site (www.
uspto.gov) by clicking Patents, then SEARCH, then Patent
Number Search, then enter the number of your patent, then
Important Notice
To: Owners of U.S. Patent # 4688283
Assignor
Our search of your U.S. patent shows the [#]
most recent patents, issued after your patent, that the
U.S. Patent Office has classified identically or crossreferenced
in the same class and subclass as your patent.
You may want to determine if your patent dominates
the later patents, the activity of competitors, and the
latest state of the art.
For each of the later-issued patents we will send you
the patent no., an abstract, a drawing, plus addressinformation
on the inventor, and/or the owner or
manufacturer for $1.00 each, plus a service charge of
$60.00 if you return THIS CARD (or a copy) with your
payment of $96.00. Make check or money order to
(Name)
payable on a U.S. Bank.
Or send $60.00 for a list of later patent numbers.
CD 60
1-2-3-4-1 Providing Patent Information Since 1976 1-2-3-4-2
Fig. 15A—Postcard Offer of Dubious Value
click Referenced By. The site will then display a list of all
subsequent patents that cite yours.
A third offer is the “Patent Certificate.” This offer is
sent to many patentees in an official-looking letter from
Washington, marked “U.S. Patent Certificate,” “For Official
Use Only” (next to the postage stamp), and “Important
Patent Information.” In reality, it’s from a private company
that wants to sell you a nicely framed version of your patent.
Needless to say, this product has no official value.
A fourth offer, definitely of questionable value, also
comes on a postcard that states something similar to
the following: “Our search of your patent has located X
companies that manufacture, market, or sell products in
a field allied to your invention.” It offers to sell you the
names of the X companies for a stiff fee, usually about $80.
If you want to find the names of the companies that are in
a similar field, I strongly advise that you save your money.
Instead take a trip to a store or library where you’ll find
plenty of suitable companies for free. (Use the techniques
outlined in Chapter 11.)
A fifth offer is to include you in a compendium of
inventors, such as a “Who’s Who” of inventors, or an
offer to sell you such a volume with your name included.