Loren Donald Pearson

Loren Donald Pearson is a Registered Patent Attorney and a Florida Bar Board Certified Intellectual Property Attorney.  He is a partner at Assouline & Berlowe, PA and leads its intellectual property group.  Read his profile

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Entries in Invention (5)


The Spark of Invention

Quirky is a company that helps inventors apply crowd sourcing to bring inventions to market.

Quirky launched a new blog titled, "The Spark of Invention" for inventors to read, learn, and become inspired.


In a future post, I will consider the benefits and risks of crowd development with an eye on intellectual property issues.


Good Patent/Bad Patent?

Judging the quality of a patent application is very difficult, even for an expert.  For non-patent attorneys, discerning a good patent from a bad patent is probably impossible--at least unitl its too late.

In my opinion, a good patent describes the kernel of the invention.  That is, the core or the seed, the must fundamental part of the invention.  When the patent claims focus on the kernel, the invention will be clear to the examiner and the resulting patent will exclude competitors.

But isn't claiming the kernel obvious?  Don't all patent attorney write patent applications like this?

No.  Many patent attorneys take asimpler route.  A patent application can be written more quickly by simply listing the parts of a device, describing their connections and interoperation, and then writing a claim that describes the preferred embodiment.  However, such a patent application may not capture the fundamental principals (i.e. the invention) that is embodied by the device.  As a result, the kernel may be unprotected and competitors will be able to create alternate embodiments that rely on the underlying invention.

That sounded too much like lawyer speak.  Let me use an example.  Say, your invention is a better mousetrap.  The device is a foam block covered with adhesive and a piece of cheese to which the mouse get glued.  A superficial patent claim might read, "I claim: 1.  A block, adhesive applied to said block, and bait disposed on said adhesive for attracting a pest."  The problem is that a competitor might avoid that claim by placing an intervening layer of material, for example a paper label) between the block and the adhesive.  A better patent attorney would try to find the kernel of the invention.   The invention at its most basic may be using adhesive (not a spring loaded mechanism) for capturing a pest.  So, a better claim might be "I claim: 1. A method of trapping pests, which comprises: applying an adhesive to a surface, and adding bait for a pest to the surface."  This claim would prevent the label alternative discussed above.

The point is a good patent attorney should  be working with you to isolate the kernel of your invention.  If the attorney says, just give me a prototype and I will bang it out, you may be headed for trouble.

For similar tips for patenting your invention and chooding the right attorney, use the subscribe link in the header of this page.




Whom Should I Trust with my Invention?

The first thing I see in every individual inventors' face ("individual inventor" is opposed to a "corporate inventor") is the combination of excitement about their invention and their confusion on whom they should trust.

I recently read a NY Times article titled, "If Moms Can't Find It, They Invent It."  The article tells the story of a mom inventor who now runs a consulting agency (Mom Invented(R)) for other mom inventors.  (Note: I have no experience with any of the businesses mentioned in the article.)

The mom in the article discusses how, previously, there were no road maps for bringing a product to the market. 

Knowing who to trust is the first problem every individual inventor will face.

Unfortunately, before meeting me, many of my clients fell victim to an unscrupulous invention promotion companies.  The scam goes like this.  Call now for your free inventors kit, is followed by a sales pitch involving a market analysis, and maybe a patent search.  After spending $10,000+ dollars with the invention promoter, the inventor has little to show for it: no product, no patent, and ultimately, no profit.

The United States Patent and Trademark Office (USPTO) provides the Inventor's Assistance Center (IAC), a resource for inventors to learn about the patent process.  The IAC includes a web page devoted to scam prevention.  The Federal Trade Commission (FTC) also provides a guide to Avoiding Scams involving Invention Promotion Firms.   The USPTO runs a forum for inventors to post complaints about invention promotion companies and for the companies to post replies.

The hard truth is that anyone who tells you that selling a product will be easy is probably trading on your confidence in your own invention. 

In the end, I tell my clients that succeeding in business has little to do with the level of innovation embodied by their invention.  Rather, the success depends on the inventor's tenacity and business acumen.

To avoid the problems of invention promotion companies, the USPTO recommends that inventors always deal with a registered patent attorney or registered patent agent.  Registered practitioners have passed the USPTO's patent bar exam and must follow the USPTO's code of ethics.  The Florida Bar offers the addition certification of "Florida Bar Board Certified Intellectual Property Attorney" which is based on the lawyer's knowledge, expertise, and peer review.


Will Your Invention Change How People Think about Your Industry?

While many inventions revolutionize an industry based on cutting-edge high technology or materials with miraculous properties, some of the most sweeping inventions involve apply disruptive (i.e. non-traditional) thinking to a pervasive problem.

Keith W. Tantlinger, who was eulogized in the New York Times by David Leonhardt, was an inventor who had a simple invention (US Patent No. 3,027,025) that revolutionized the shipping industry:

"Tantlinger developed a lock that connected to the corners of containers and that crane operators could mechanically open and close from their seats.

A drawing from Tantlinger’s 1958 patent for stacking shipping containers, from United States Patent and Trademark Office.

The lock, which led to the adoption of uniformly sized containers over the next 15 years, caused a revolution in shipping. The time and cost of transporting goods fell sharply, which contributed to an astonishing boom in global trade."

What the invention and the article point out is "'There was no breakthrough in terms of material. ... There was a breakthrough in thinking.'"

If you have an invention that will revolutionize how people in your business will think, you should contact a registered patent attorney for a consultation to begin protecting your invention.


Your Light Bulb Moment

On Oct. 21, 1879, Thomas Edison invented a workable electric light at his laboratory in Menlo Park, N.J.

What should you do when you have an invention (i.e. your light bulb moment)?

The first step should be document the conception of your invention by completing an Invention Disclosure Form.  After the form is completed, have the Invention Disclosure Form notarized.  My office will notice your Invention Disclosure Form for you for free.

Of course, conceiving of an invention and documenting it is only the start.  For guidance on how to use the patent system to protect and monetize your invention, you should contact a Registered Patent Attorney.  In Florida, that person should also be a Florida Bar Board Certified Intellectual Property Attorney with experience in patent prosecution.