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In article <499@stephsf.stephsf.com> wengland@stephsf.stephsf.com (Bill England) writes:
> Just curious Mike but, what types of patents do you write?  

Well most of the recent ones have been about integrated circuit
packaging. Mostly due to some development work in the area by Motorola I
would guess. My "specialty" though is software and system patents since
that is where my experience was before I switched jobs.

> Do you
> tell your clients when you see something in their patent request 
> that is obvious to you?  

Definitly. In fact it happened today, the inventor had about six ideas
only two of which appear to be patentable. Took about a half hour to
explain "the facts of life" to him.

Most of the "trash" is weeded out internally for us though,
Motorola uses a series of "Patent Committees" made up of experts in the
various fields to decide if an invention is "obvious" and if not whether
it is worth spending the money on a patent.

Even so I get inventors who have a greatly inflated sense of their
inventions' worth. If its not too major the best course is to include it
in the "Detailed Specification" somewhere, if it really is junk then we
can and do scrap the patent. Usually we will ask for three or four
"expert" and "non-expert" opinions first though.

> Have you ever claimed the same thing in
> different patents that you have put together?  

Not knowingly, but then I haven't been doing this for very long. :-)

This is why you search the prior art, we keep files from every patent
filed in our office for the past 10 years or so. In most areas that is
actually better than a computer search because it includes all kinds of
unpublished material and obscure references. Motorola Semiconductor has
had to "cover" most fields of interest very well to grow as large as
they have so the files include a lot of comments on stuff that hasn't
worked as well as stuff that has.

> What happens when 
> different patents, on closer inspection, are found to make 
> overlaping claims.

Unfrtunately this happens quite often when the USPTO examiner looks at a
patent. They have some very efficient searches and generally are very
knowldegeable in their areas of expertise. (Statements on Usenet
notwithstanding). This is what is called an "office action" under the
USPTO "Rules of Procedure". You then get to explain (in writing so it
CAN be used against you :-) ) how your claim really is different or to
modify the application (delete or change, no NEW material is allowed).
Typically one or more claims are either deleted or restrictions are
added so the various patents do not overlap. The real art comes in
modifying the claim so that it is legal, yet does not leave loopholes
for an infringer. Gets hairy if there is more than one patent that
appears to overlap yours.

Once the patent is issued it is up to the courts, but usually the more
recent patent loses the offending claims. Same thing happens if someone
can show that they either invented the idea first or the invention was
published before the patent was filed. Re-invention doesn't count, of
course.

Hope that answers your questions.

-- 
           *Mike Waters    AA4MW/7  waters@nddsun1.sps.mot.com *
Xerox does it again and again and again and ...