Here’s a good quote related to your question:

“Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be nonobvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one color for another, or changes in size, are ordinarily not patentable.”

Your difference has to be significant such that it would not be obvious to someone skilled in the art.

Here’s a simple question for you: are you the subject matter expert in this field on which you’re patenting? If not, then you run the risk of filing for a worthless patent.

That approach might get you a patent if your goal is to have your name in lights and tell your VC “we’ve been granted a patent”, but it will not get you a strong patent. If the inventor has missed some obvious prior art (say, for example, the invention was previously disclosed on some discussion group or white paper), then it will be relatively easy for anyone to invalidate the patent if it were to be challenged.

[Your patent attorney's comment also provides me some insight that might explain how various frivolous patents are granted]

I’m not really clear on how in-depth the patent office searches a given application. My experience has been that they search the patent files, but they don’t do exhaustive research using a subject matter expert. And of course if you think about it, you can see that would be virtually impossible to do.

A strong patent is one where the inventor has done huge amounts of research and, more importantly, DISCLOSED all known previous inventions (known as “prior art”) as part of the application. I think its super-smart to get all these disclosures done up front because you then have the benefit of patent office review and stamp-of-approval. Each prior art disclosure reviewed and approved by the USPTO means one less means someone might have to invalidate your claims.

IMO: if you want to do serious due diligence on a patent, show it to a key competitor and tell them to dig up prior art. Ask the inventor to describe how his claims aren’t affected, and either have a patent attorney review that response. If the patent hasn’t been granted, file that w/ the USPTO.

thoughts?

Scott