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IP, Patent

Don’t File A Patent: A Reprise–Who Needs It?

Don't File A PatentSo, awhile back I promised an update to my post about John Smith (who, incidentally, called me to confirm that John Smith is, in fact, his real name).  Good to meet you John. John runs the website Don’t File A Patent, and has published a book of the same name. I got my hands on a copy of the first edition, but John tells me the second edition will be available soon with more clear separation between the patent office experiences, and his advice for would-be inventor/entrepreneurs.  Regardless of which version you read, I can honestly say that this book should be required reading for anyone who works as a patent attorney.

I work with patent attorneys on a nearly daily basis, and every patent I analyze is, in part, a critique of the patent attorney responsible. There’s few things I enjoy more than reading a patent and trying to understand what it was that was so great and novel to justify its expense, and learning how the attorney and inventor chose to describe the invention. Although its been years since I’ve done any patent drafting myself, I never lose sight of the fact that behind every patent is an inventor or inventors. Even in a “corporate” application, inventors are a critical part of the process. Innovations come from real individuals, not the fictitious corporate “person.”

Taking human ingenuity and turning it into a real, physical embodiment is what the patent system is supposed to encourage. So when an inventor/entrepreneur writes an open letter to the whole world, saying “Don’t File A Patent,” I pay attention, and so should you. Unfortunately, many in my profession are likely to ignore John, dismissing him as a disgruntled inventor with an axe to grind. Perhaps he is, but the better question to ask is, is he entitled to be? John Smith is a person who clearly isn’t motivated by the US patent system. For John, the patent system has been a series of broken promises. This is not a post about defending or attacking the patent system. There’s enough of that going on, and I personally will return to that debate, probably in the near future. But not today. This post is about John, his experiences, and why patent attorneys should care.

In many respects, John is typical of many “individual” inventors. He was enthusiastic about his invention and his product. I think even he would admit, that he was also naive. Until researching his book, John was probably largely ignorant of the patent office bureaucracy that most patent attorneys take for granted. John knows what he created, and knows how and why. He knows what he is making, using and selling in his business, but he likely lacks the sophistication to articulate, on his own, what specifically distinguishes his inventions from prior art, beyond the results themselves. John knows that no one has made his exact structural combination in the past, but he struggles with the PTO’s application of obviousness. Obviously, these are the reasons John sought out the advice of patent attorneys.

Another Day In The Office

You win some, you lose some. Not every application you file will result in a patent. But while its just another day in the office for you, the impact on your client is far more significant. John parted with $25,000 of his own money, with nothing to show for it. He’s passionate and emotional about the impact this had on his life and business, and that is reflected in his writing.  I’ve written before that attorneys need to be more acutely aware of how the practice of law actually affects their clients, especially when things don’t go as planned. Don’t File a Patent offers a rare look at exactly that, without having to go through the misfortune of having a disgruntled client of your own.

Take advantage of John’s experience to understand what your client will be going through if your mission to obtain a patent fails. Read his reaction to the section 103(a) USPTO form paragraph, and his struggles with obviousness generally. Recognize his frustration with an examiner applying 6 different prior art references to reconstruct John’s invention with the benefit of hindsight, with him powerless to do anything about it. Read John’s understanding of what he calls the “true” rejection rate. Do you advise your clients that patents are routinely rejected on the first pass? Do you write at least one claim that should be allowed immediately (i.e. a picture claim)?

Selling Patents As Something They’re Not

I’ve written before how many patent attorneys convince clients to file patent applications to “protect” their products. It’s a misleading thing to say, and John has figured that out. Don’t File a Patent discusses the fact that patents are, at their core, an invitation to file a lawsuit. He writes for the benefit of other inventors, how there’s no one but you that can enforce your patent.  What isn’t clear is whether John would have agreed to pay $25,000 if he knew that the best case scenario was spending thousands more to file a lawsuit if he needed to enforce the patent. Are your clients actually aware of that? Or are you just assuming they are? If your client did know that enforcing the patent would require such a commitment, how would that impact your client’s budget preferences in the original prosecution?

Read about John’s experience with trademark litigation. Patent litigators take note of how familiar John’s frustration is with the delay and expense of the legal system. Realize the difficulty that collecting judgments presents to your clients who had to dip into their own pocket in the first place.

Is The Mission Really To Get A Patent, ANY Patent, At All Costs?

The temptation of the patent attorney, once the application is filed, is to get the application allowed. Where an examiner is making unreasonable rejections, but presents an avenue for allowance resulting in a narrower claim than what the client is actually entitled to, what do you do? Is a narrow patent better than no patent at all? In a vacuum, sure. But this is real life. That narrow patent will still have costs for your client, and he may incur those costs for years before finding out, when trying to stop a copycat, that the patent is worthless.  So why not be up front about it? Instead of plowing forward, counsel your client about the realistic value the patent will add to the business and let your client make the business decision.

John’s prosecution history, which he provides in his book, presents an extreme example of seeking an allowance at all costs. EVERY patent attorney needs to see what John’s attorney did to try and get his patent allowed. Beyond that, when the attempt failed initially, you should read how his attorney planned to further sabotage his patent in response. Even if John had won, he would have ultimately lost, as his resulting patent would have been practically worthless. And by that, I don’t mean “almost” worthless, I mean worthless for any real, practical purpose (like collecting royalties from an infringer).

Read the book, and become a better lawyer because of it.



7 thoughts on “Don’t File A Patent: A Reprise–Who Needs It?

  1. Very good points indeed. I have not read John’s book yet, but I truly do appreciate his frustration and we are sure to warn ever inventor about the pitfalls of the patent system. I wonder, however, whether or not John’s frustrations can also be solved by doing away with a mentality by some at the PTO that “nothing is patentable.” C’mon – a 6 reference obviousness rejection? Doesn’t get much more ridiculous than that? How about a bit more training for this examiner? Again, John likely makes some great points, but with a different Examiner, or with an Examiner that had better training, I suspect that John walks away with a much different experience.

    Posted by MarkMalek | January 18, 2011, 10:55 am
    • Mark,
      Thanks for the comment. John asked me if his 6 reference rejection was typical. My personal take is that it is typical of some FIRST office actions … but a third makes me think one of two things happened: 1) something got under the examiner’s skin, or 2) the examiner was looking for one extra count …. If it’s 2, that’s really sad because he might have been 1 RCE from getting an allowance.

      Also, a more general comment is that John is in the Orlando area and put his contact information up on his website. He expressed interest in meeting with anyone who wants to hear more about his experiences, especially if you’re heading into town for the AIPLA meeting next month.

      Posted by Patrick | January 18, 2011, 11:08 am


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