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This Invention: A Family Content Network

A journal, information and resources for establishing a Family Content Network, as I am doing - essentially a framework for managing all your Family's online assets and inventions for maximum exposure and revenue. This blog began as an inventor's journal, and retains the overall parent inventor's context and mindset.

Sunday, November 13, 2005

(11) First DRAFT of Patent Filing

...was received today. Looks pretty good, but it should, given all the effort I put into research, the efforts of the design engineer and associated CAD drawings, and the very good conversations I had with the Law Firm, both during the Patent Search process and in constructing the filing. It's just in time, as the Provisional Patent was filed one year ago 11/20, so this needs to get in pronto (darned Lawyers leaving everything to the last minute, and expecting it to be perfect first DRAFT!). There were, however, a couple of issues I had with this DRAFT; the email I sent is copied below - it looks like I'm entering a new 'Phase' in this adventure, where my attention to the Lawyer community needs to grow:



"I received this (DRAFT) on Saturday - looks very good, and thanks for including the considerations we discussed on the phone. Have a couple of quick questions right away -

1) The illustrations and text reference numbers through 100 and above; where are the rest of the illustrations, and rest of the numbers? For example, the text speaks to number '80', but I don't see number 80 among the 3 illustrations.

2) In the 'summary', it says that this invention is a 'combination of first....and second.....'. Is the invention ONLY the combination, or is BOTH the xxx AND the combination (i.e. really two inventions). The xxx could actually be used all by itself, if constructed in a manner that there's a really snug fit...

3) The invention is described as xxx..., yet the principle claim is yyy...isn't it really xxx AND yyy? (can't disclose the invention details yet in this Blog!).

3) In the 'combined declaration and power of attorney' - I think the power of attorney stated is probably too unlimited for my interests right now. It says "I hereby appoint the following attorney(s) and/or agent(s) to prosecute this application and transact all business in the Patent and Trademark Office connected therewith". It also says to direct all telephone calls and correspondence to Lawfirm XXX (offices).

I'd rather not be in a position where calls/correspondence regarding this filing are received and processed by Lawfirm XXX (without my knowledge or consent), thus generating additional charges for services implied to have been agreed to (through this power of attorney declaration). I acknowledge that there will be costs associated with submitting additional amendments and arguments; but I'd like to be in the position of determining how, when and by whom additional correspondence with the PTO is conducted regarding this filing.

There are probably situations in which the PTO needs simple clarification or updates to the filing package, that are covered in this initial filing fee and activity. There is obviously a threshold at which the legal activity required to satisfy PTO requests exceeds that covered by the initial filing fee (the $9K paid). Where is that threshold? How do I ensure that any legal activities conducted, and therefore fees incurred, are approved in advance by me? I simply wish to actively control costs and breadth of activity, retain my personal 'power of attorney privileges', and retain the right to change or expand them as necessary. All correspondence can be directed to Lawfirm XXX, but needs to be immediately copied or forwarded to me (with no costs for this). If there is a cost to me for Lawfirm XXX to simply receive and file/adjudicate the PTO correspondence, I'd rather receive/adjudicate the correspondence myself, and request specific action by your firm as necessary.

Please don't misinterpret this request - I'm fairly satisfied with the output to date, I just want to make sure the 'power of attorney' assignment isn't an open expense account."

.....Turns out my concerns about the application were valid and corrected, and the Law Firm sent an email confirming they will first consult me and propose a price for activity, should they become aware of any actions required. All PTO correspondence will be copied to me.


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