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May 10, 2010

Prosecutor Grift

We see it all the time. Inventors who paid tens of thousands of dollars to respectable law firms who took their money and either got them worthless patents, or strung them out with useless applications that even the patent office wouldn't grant. They come to Platinum Patents with a prosecution mess, or tantalized by infringement of their invalid patent, knock on Patent Hawk's door looking for a hookup to contingency. Too late for us to prevent grief and loss. Prosecutors who don't work the beat on the enforcement side of the street know but a fraction of what they need to know. That's most prosecutors. They jostle with the crowd who don't even bother performing adequate prior art searches, and draft claims that defy comprehension. Dime-store prosecutors on the grift are a dime a dozen. It still saddens me to witness every time.

Posted by Patent Hawk at May 10, 2010 5:16 PM | Prosecution

Comments

Ok, so what are some tips, tricks, and references for us prosecutors who aren't on the grift, but lack the enforcement experience, so we can prevent the grief and loss you speak of.

Posted by: Gene at May 11, 2010 5:25 AM

This guy is a patent agent who got his registration number like two weeks ago. He can't even appear in court, so how does he have such vast knowledge of litigation? Just more grift if you ask me.

Posted by: Dubious at May 11, 2010 5:44 AM

Clearly a lot of shameless self-promotion in this post. But, hey, it's his site, and it's not like there isn't some truth in his comments.

Has Hawk just become registered? Congratulations and welcome. I always wondered how "Platinum Patents" applied to someone who does not write patent applications. Will be interesting to follow his applications -- we'll see how platinum those patents are.

One thing will be particularly interesting: will Hawk succumb to the conflict of doing searches for the same clients for whom he writes patent applications?

If you or your firm is going to write the application, it is a conflict of interest to do the search because it is in your interest to "miss" prior art. I've sued a lawyer on this precise point and won a jury verdict. Wonder how much searching Hawk will pass off if he starts writing applications for hire.

Then again, after the MS settlement Hawk will likely retire to the Caribbean and spend his time analyzing CAFC cases for us full time. We look forward to that.

Posted by: Babel Boy at May 11, 2010 7:33 AM

Wait, what? It's a conflict of interest to do a search before drafting an application?

Posted by: huh at May 11, 2010 8:33 AM


I'm glad I don't think too much about forthcoming comments when I blog, or I'd just wince and never publish.

This entry was as much a warning to inventors are self-promotion, but it certainly was self-promotion. You want serious self-promotion, read Gene Quinn. I’m an amateur by comparison. The blog itself is self-promotion, in that I try to stay abreast of case law, want to be of some service to the patent community, and the blog demonstrates that.

Our business model, and paramount concern, has always been to help our clients, with quality results as efficiently as possible. The money takes care of itself. I'd run a much larger organization if money was my concern. Fact is, I like what I do.

For the record, I am uncredentialed, and will remain so. I’ve worked as a prior art searcher for over a decade, mostly in litigation, which has been our bread-and-butter business, though we regularly perform patentability searches, as well as prosecution. I am not an attorney, and am not a patent agent. I prosecute my own inventions, and am presently a pro se litigant. Jordan Kuhn, my business partner, is a former patent examiner and a patent agent. Sharp guy, Jordan.

While not a law firm, we operate as such, and avoid conflicts for what are to me obvious reasons, including that most of our clients are attorneys at law firms.

Babel Boy, the Microsoft case will probably never settle. The gulf is too wide, and unlikely to close. More on that when the time is ripe.

Posted by: Patent Hawk at May 11, 2010 9:53 AM

Babel boy, I'm intrigued by your statement that performing the search when you are also preparing the app is a conflict. You appear to be saying that this is a per se rule. Can you cite legal authority for this?

The fact that you won a jury verdict [I'm assuming for legal malpractice] doesn't make it a rule. For one thing, there could be all kinds of other factors that the jury relied on to reach this conclusion.

Posted by: Karen G. Hazzah at May 11, 2010 10:48 AM

"If you or your firm is going to write the application, it is a conflict of interest to do the search because it is in your interest to "miss" prior art."

One would have to be a really REALLY bad lawyer (heck, bad PERSON) to do this. Such a bad person that it made it possible to prove malpractice on this point.

Only an idiot could find a conflict of interest in doing a search before drafting. Saying that it's automatically a conflict because one dope did it is like saying that no child could ever be an executor for their parent's estate, because of the built-in conflict of interest would automatically make them lie to their family, cheat, steal, forge documents, lie to the court, etc. Most people are okay. Some people work hard at being evil.

Posted by: Patent Medicine at May 12, 2010 3:47 AM

Karen,
There is no per se rule about a firm doing patent searches for applications that they will write.

However, I can speak firsthand about seeing a patent attorney that has never actually written a non-patentabile patentability opinion unless a clear 102 for an identical intended use was found, yet written hundreds of patentable patentability opinions when any reasonable and honest practitioner would have said that application had no chance.

For sophisticated clients, this shouldn't be an issue because they will catch onto the practitioner's fraudulent ways. But for the unsophisticated client, the attorney has made off with several thousands of dollars by the time the USPTO issues a rejection on the client's invention. At that time, the practitioner simply blames the USPTO.

Posted by: anon at May 12, 2010 7:05 AM

Let me clarify --

First of all, no, there is no rule regarding patent searches that I know of except the rule that says the applicant is not required to do one. Neither is his attorney. We are talking pre-filing patentability searches here. Many applicants clearly state that they don't want such a search done -- let the examiner do it.

One does not commit malpractice by not doing a search or by not filing an IDS -- or by advising a client not to. Regardless of what Greg or Hawk may say.

It's not that I advise my clients not to get a search done, I'm just contradicting those of you saying not doing a search is malpractice. It isn't. If no search is done, make a record of why including the client's written instructions.

My statement was restricted to the situation of when you charge the client $1000 to do the patentability search and you give the client the all clear and then you charge him $7000 to draft the application. What do you do when the FOAM cites 3 bang-on knock-out references and bounces you out on 102? Sure, you say, "Ooops, sorry -- how did I miss those? Give me another $5000 and we'll fight the rejections; maybe we can get you a patent on some minor limitation not disclosed in the cited PA." BS. Maybe you can get your butt sued for malpractice, too. This scam makes my blood boil. And if you're doing it, I hope to get you in my sights some day.

I always recommend a patentability search and I always send my clients to a professional searcher. They do a better job than I do because they have more tools and more experience, they don't charge the client any more and probably considerably less, and they don't have an interest in not finding art. This is a complete no-brainer -- it's in your client's best interest; ergo, that's what you do.

IMHO, it is an indicium of dishonesty when a patent attorney/agent does the patentability search on which his client will decide whether or not to incur the cost of an application. Sooner or later it's gonna' bite you.

Posted by: Babel Boy at May 12, 2010 8:13 AM

That "Regardless of what Greg or Hawk may say" didn't come across the way I meant it. I meant it with a smiley at the end. Them patent searchers -- they always want art produced. [smiley]

Posted by: Babel Boy at May 12, 2010 8:21 AM

Good point made in this post -- even consulting an attorney can be detrimental to an independent inventor, if that attorney does not specifically practice patent enforcement. It's all too common for someone to consult, say, a family law attorney regarding patent litigation, merely on the basis of a friend's referral. Patent law is so complicated, even for practitioners in the field, that you need to do your homework before retaining counsel.

Posted by: Gena777 at May 14, 2010 1:11 PM

"If you or your firm is going to write the application, it is a conflict of interest to do the search because it is in your interest to "miss" prior art."

One would have to be a really REALLY bad lawyer (heck, bad PERSON) to do this. Such a bad person that it made it possible to prove malpractice on this point.

Only an idiot could find a conflict of interest in doing a search before drafting. Saying that it's automatically a conflict because one dope did it is like saying that no child could ever be an executor for their parent's estate, because of the built-in conflict of interest would automatically make them lie to their family, cheat, steal, forge documents, lie to the court, etc. Most people are okay. Some people work hard at being evil.

Posted by: stun guns at July 23, 2010 7:18 PM