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January 2, 2011

Don't File a Patent

John D. Smith is a one-man patent sales prevention department: "A patent is really just an expensive and worthless piece of paper. Attorneys are like a bottomless cup that you keep pouring money into. The Patent Office wants your money, not your invention. The Patent Office uses repeated Patent Examiner Office Action rejections to discourage inventors. Lawsuits are very expensive and the only one that will make money in a patent infringement lawsuit will be your attorney. Judgments are worthless, as they are impossible to collect." Bad attitude, or is it simply that the truth hurts?

Posted by Patent Hawk at January 2, 2011 4:37 PM | Prosecution

Comments

Happy talk about patents, first working day of the year. Guess some Smiths have a business model that works without any protection for IP. I'd rejoin that, when it comes to patenting: 'you get what you pay for; and, going free often makes what you sell free to others.'

Posted by: Thomason at January 3, 2011 7:52 AM

"Bad attitude, or is it simply that the truth hurts?"

Honestly, a little of both. Certainly, Smith's attitude toward patents isn't going to help anyone obtain solid, enforceable patents. Further, the truth is that patent enforcement is an expensive proposition, requiring the patent owner to either have their own bankroll, or to share more than half of the proceeds with someone willing to take a risk.

Posted by: Patrick at January 3, 2011 7:56 AM

Risk and Reward, baby.

Tell me, do people still buy insurance? Why is that?

Posted by: Pedantic Pete at January 3, 2011 7:59 AM

It's called the patent lottery for a reason.

Nevertheless, as the case is usually in things like this, patents favor those that can enforce them. If you can't enforce them, then they are going to be worthless to you even if you are granted one because no one is going to take a license and no one is going to be scared from the market by a patent you have no ability to enforce.

Any patent lawyer who has their client's interest in mind (rather than pocketbook) will take time to advise on the risk/reward of the patent system.

Posted by: mike at January 3, 2011 9:31 AM

Mike said: "Any patent lawyer who has their client's interest in mind (rather than pocketbook) will take time to advise on the risk/reward of the patent system."

Technically, you are correct. Unfortunately, whether by lack of experience or otherwise, there are few patent attorneys that will temper a potential client's exuberance for a patent with realistic dash of cold water on the realities of patent enforcement.

Posted by: Patrick at January 3, 2011 11:46 AM

Or else the tempering is done with such lukewarm water that the "splash" is hardly even noticed - the term "legal fineprint" comes to mind - great for those with an ardent interest, but for plebian folk, all too easily glossed over.

Posted by: Pedantic Pete at January 3, 2011 1:19 PM

I just wanted to affirm that i'm a twice patented (#5,931,543 & #6,309,027) inventor and that the knowledge and experiences i put into DON'T File a Patent! came from the over $100,000 i spent on attorneys and the USPTO trying to secure my 3rd patent on my Storm Stoppers Hurricane Window Protection invention.

My book is divided into 2 parts. The first part (Chapter 1) has 11 reasons why NOT to file a patent. The 2nd part (Chapters 2 through 20) has many tips and suggestions to encourage inventors to manufacture and sell their product themselves.

Chapter excerpts are available at www.dontfileapatent.com. If you want to hear my points articulated, listen to any of the radio interviews at the bottom of the main page of the website. Email me at info@dontfileapatent.com if you have any questions.

Many of my readers, which include several patent attorneys, have told me that my book accurately describes the pitfalls which await the small business inventor if he or she is foolish enough to file a patent application on their invention. They also appreciate learning about some of the ways i describe to save money, such as through using a "gang run" offset printer.

Please call my office at 407-423-5959 with any questions. I'm in Orlando, Florida on east coast time. Thank you.

Posted by: John D. Smith at January 3, 2011 3:34 PM

Hear, hear, guys...

But, in my own experience, there are still some decent and reasonable examiners left at the PTO, at least in some fields, and you can certainly find an attorney who will tell you the truth, if you want to hear it

It's patent enforcement part that sucks big time

After SCOTUS made those anti-patent and anti-inventor decisions in Ebay, KSR, MedImmune etc.
corporations can just ignore individual patent holders with absolutely no risk to them

Right now the risk vs reward balance in patent filing decisions is grossly distorted to discourage any patent filings by small entities

Multinational corporations rule this country and own our government, all branches of it

Too bad I filed my patent before EBay...

They screwed me big time

Posted by: angry dude at January 4, 2011 8:02 AM

What the world needs is an honest book about the dark side of patenting written by a patent prosecutor, or better, by an honest examiner.

I would include stories like this: I just got allowance of all outstanding claims 4 days after filing an appeal brief and without explanation. The rejections were absolutely horse sht, and that's what I argued in the brief. The lame examiner obviously decided to allow the claims before the brief could be seen by the review panel. This exercise cost my client heaping thousands of dollars.

I suggested to a colleague that once the patent issues we should file a complaint with the examiner's supervisors. He raised a chilling issue: filing complaints against examiners after issue exposes the patent to an anonymous ex parte reexamination request by a vindictive examiner. The re-examination petition ends up on the original examiner's desk, or his buddy's, and guess what . . . the petition is allowed.

What we need is for Julian Assange to get his foot in the door of the USPTO. That is if he ever gets past his rape-by-broken-condom problem.

Posted by: Babel Boy at January 4, 2011 10:10 AM

"I suggested to a colleague that once the patent issues we should file a complaint with the examiner's supervisors. He raised a chilling issue: filing complaints against examiners after issue exposes the patent to an anonymous ex parte reexamination request by a vindictive examiner. The re-examination petition ends up on the original examiner's desk, or his buddy's, and guess what . . . the petition is allowed."

I doubt an examiner, no matter how cheesed at your complaint, would pony up the reexam request fee. It's not exactly chicken feed. Examiners are generally tight wads and cheap skates. It's also highly unlikely that the examiner would want to rehash the case, especially after doing such a shitty job the first time. As you clearly note, the examiner allowed the case after the brief to avoid a review by the SPE, QAS, whomever. Reexams get some pretty tight scrutiny, so the only thing the examiner would achieve by filing an anonymous reexam request is have the application get some serious review. Which the examiner clearly didn't want in the first place.

And all reexams are handled by the CRU now, so there's no chance that the reexam is going to end up with the original examiner.

BTW, the time to file a complaint against the examiner is while the case is pending, not after it's allowed. What's your complaint after the case is allowed?

Posted by: We are the Whalers... at January 4, 2011 10:28 AM

"BTW, the time to file a complaint against the examiner is while the case is pending, not after it's allowed. What's your complaint after the case is allowed?"

I think he said it was the money the client had to (needlessly) spend. The good man cares about his client's dime. Kudos.


I also would not complain prior to issue, and would think twice about complaining post-issue.

While it may not be physical, the little black book (not the good little black book) is very real.

Posted by: Pedantic Pete at January 4, 2011 10:49 AM

Babel Boy,

A friend of mine did some research and was shocked to learn that an examiner faces no repercussions at all for an examination that is reversed by the board. Truthfully, examiners only get in trouble for allowing bad patents, never for denying good ones. (Consider, no one wants to be the guy that allowed PB&J patents, or swinging on a swing).

I'm not saying that every reversal should go on an examiner's record, but perhaps when the board issues one of those "what were you thinking?" reversals, the examiner might lose some counts etc ...

Where is 6 on this topic?

Posted by: Patrick at January 4, 2011 1:24 PM

A friend of mine did some research and was shocked to learn that an examiner faces no repercussions at all for an examination that is reversed by the board.

Neither patentees nor patent prosecutors nor litigators face any repercussions for getting patents allowed or suing on patents that wind up getting invalidated by the courts.

Truthfully, if the examiner denies you a patent you deserve, your remedy is to appeal. And that's a perfectly appropriate remedy in principle, because it will get you your patent, and you don't stand to objectively gain by making the examiner suffer.

Yes, it's a problem that there's a huge appeal backlog, and yes, it's a problem that your agent charges you so much for the pleasure, and yes, we'd rather the examiner get every single case right the first time, but I'm not convinced that punishing the examiner for being ultimately disagreed with is a good solution to any of that.

Posted by: IANAE at January 4, 2011 1:38 PM

Whalers, as Pete suggest, the point is outing the rogue examiners.

In this case, after he saw the appeal brief, the examiner (without re-opening the case, which requires a sign-off by supervisor) allowed all of the appealed claims.

No point in pitching a bitch at this point because we have the claims and a tic'd off examiner could jerk us around some more by re-opening after allowance and rejecting again.

Wait until after the patent issues and you are beyond the reopen-reject-appeal-reopen cycle, then bring the case to the attention of the group director.

Why? Well, I, personally, believe we have a duty to the system to identify and seek sanctions against examiners who game the system at our clients' expense. With all the lame examiners at the PTO, if you spend more than a couple years in this profession without pissing someone off, you're not doing your job, unless you are incredibly lucky at getting competent examiners.

Whalers, thanks for the correction that reexam does not reach the original examiner. I will sleep easier after I send a copy of the appeal brief to this guy's section head. And I agree that no examiner is going to pay $2500 to stiff a whining applicant, but how hard would it be for someone inside the system to modify the IFW to indicate a petition fee was paid?

Pete -- black book. I have no doubt that a PTO blacklist exists. No doubt. That's one reason we need wikileaks in here, to give examiners a way to out this crap. Even David Pressman with his sanitized portrayal of the process for laymen warns not to piss-off the examiners.

I have had an examiner tell me that if I filed an appeal of her rejections, she would see to it that I would never get another application allowed in her group. Some of these small people are power-happy and ego-maniacs even though they couldn't find a job in the real world if their kids' next meal depended on it.

Posted by: Babel Boy at January 4, 2011 2:04 PM

"No point in pitching a bitch at this point because we have the claims and a tic'd off examiner could jerk us around some more by re-opening after allowance and rejecting again."

The examiner is not going to re-open after allowance because that will bring scrutiny. As you said, the examiner didn't want his supervisor to see what was going on.

Complaining after allowance and/or issuance is pointless. The response you're going to get it is: Okay, so you got jerked around. But the examiner ultimately allowed it, so what's the big deal.

I think that attitude is deplorable. But it is the mindset over there. Why bang your head against it.

If the examiner is being unreasonable, while the case is pending call the ombudsman, file a petition, call the SPE/TC Director, etc. Waiting for post issuance time to complain is pointless. The examiner is never even going to be informed of the complaint. Some flunky on a detail to Mr. Kappos's offer is going to write you a form letter.

Posted by: We are the Whalers... at January 6, 2011 8:02 AM

John D. Smith is right on in his advice to novice solo inventors. When I went into solo practice after years of corporate and firm practice, I actively discouraged individual inventors that approached me from filing a patent application. Sure, they got the basic patent process and public use and on sale bar discussion, and I asked to see the physical invention. If it was not reduced to practice and they expected to sell the invention to a manufacturer, I turned them down. I frankly told them that if they could not make (or have it made inexpensively) and sell it themself or through Target or Walmart, they should put their discretionary money in lottery tickets or the stock market. I referred them to the big firms to take their money if they did not appreciate my advice.

Smith is like one of the inventors that I did take on as a client because he already had the product in manufacture and ready for sale to a narrow customer base (professional and collegiate football teams) that was ready to buy it. I obtained several patents for this individual on such simple inventions on products that he successfully manufactured and sold himself.

Posted by: Joe B at January 6, 2011 2:28 PM

Here, wear my glasses, they work for me.

What do you mena you still cannot see? What's wrong with you?

Posted by: Pedantic Pete at January 6, 2011 3:25 PM

Whalers: "while the case is pending call the ombudsman"

This illustrates another fiction perpetuated by USPTO.

There is no "ombudsman." An ombudsman is a neutral person who has authority to resolve disputes. Normally they have the authority to initiate corrective or punitive measures, if warranted. You have to go to Europe, NZ, or Australia to see ombudsman programs in their proper context.

I did go to the new USPTO "ombudsman." Nice folks, but essentially impotent. They flat out said they do not resolve disputes. An ombudsman that does not resolve disputes is not an ombudsman. I don't know what it is.

The USPTO office of the "ombudsman" perceive their role only as getting an application back on track if some procedural hiccup has derailed it. In one such case, I went to them and they were very effective.

But in the case of the malicious examiner that threatened to blacklist me, they said they wouldn't touch it. They referred me to OED. OED punted, too. As it turns out, OED has nothing to do with examiner discipline. Nobody does. OED will jerk your ticket for incompetence quick as you can say "Holy, sht" but they will not touch even the most egregious cases of examiner misconduct or incompetence. POPA has seen to that.

POPA does as much to promote and protect examiner incompetence as USPTO management does.

Posted by: Babel Boy at January 7, 2011 8:53 AM

Patrick: "A friend of mine did some research and was shocked to learn that an examiner faces no repercussions at all for an examination that is reversed by the board."

It's worse than that. Under the Dudas push to enhance "patent quality" allowances (and only allowances) are reviewed and if they are screwed up, the examiner gets some sort of turd-mark in his record. Because rejections are not reviewed, there is not threat of a turd-mark and, hence, there is an obvious incentive to reject. I don't know whether Kappos has continued this idiocy.

Well, it's a half-idiocy. I agree that some fraction of allowances should be reviewed for quality. But the same fraction of rejections should also be reviewed. And the same turd-mark should be awarded for screw-ups in rejections as for screw-ups in allowances.

POPA would never permit this.

Posted by: Babel Boy at January 7, 2011 9:21 AM

Whalers: "The examiner is not going to re-open after allowance because that will bring scrutiny. As you said, the examiner didn't want his supervisor to see what was going on."

Theoretically, you are correct. In order to re-open the examiner is required to get a supervisor to sign off.

I rarely see that happen. Examiners who want to re-open after the appeal brief is filed just go ahead an file another office action in response to the brief saying the case is re-opened. Often with no additional signatures and no indication that the review procedure was followed.

You have to watch this. If a case that is not properly re-opened is allowed, then the underlying rejections have never been properly resolved, and you could have set a trap for your client when and if he has to assert the patent in court.

Posted by: Babel Boy at January 7, 2011 9:26 AM

"I suggested to a colleague that once the patent issues we should file a complaint with the examiner's supervisors. He raised a chilling issue: filing complaints against examiners after issue exposes the patent to an anonymous ex parte reexamination request by a vindictive examiner. The re-examination petition ends up on the original examiner's desk, or his buddy's, and guess what . . . the petition is allowed."

I lulzed. Hard. I wouldn't get too uppity with my examiner if I were you.

Posted by: 6000 at January 7, 2011 1:51 PM

"OED will jerk your ticket for incompetence quick as you can say "Holy, sht" but they will not touch even the most egregious cases of examiner misconduct or incompetence. "

lulz lulz lulz lulz lulz.

"You have to watch this. If a case that is not properly re-opened is allowed, then the underlying rejections have never been properly resolved, and you could have set a trap for your client when and if he has to assert the patent in court. "

O bs, reopening is reopening, if the office does it "improperly" nothing is going to happen. Allowed patents are allowed patents.

Babel, you seem very interested in helping to get rid of bad examiners. Well, I note that 2 dudes got fired from my AU not too long ago who were horrendous examiners. Truly. So it does happen. However, I doubt if any blow back came upon the attorneys or the clients if the attorneys said something. There are appropriate ways to address the issue, whatever the issue might be.

Posted by: 6000 at January 7, 2011 3:32 PM

6000: "I note that 2 dudes got fired from my AU not too long ago who were horrendous examiners."

If your AU is ______, I know exactly who those two dudes were. Good riddance.

I'll bet every practitioner who comments here could fill in that blank with a dozen AU numbers.

6000; "O bs, reopening is reopening, if the office does it "improperly" nothing is going to happen. Allowed patents are allowed patents."

The presumption of validity of the patent derives from the validity of the process, not from the mere allowance. If an examiner rejects claims in view of, say, S. 102, and those rejections are never withdrawn and simply ignored, what do you think the defendant's attorney and the court are going say? "Oh, well, never mind, we'll forget the rejections, after all there is an allowance in that record somewhere."

Your mind-set is a common one: the objective is to obtain a patent.

Wrong, the objective is to make an official record that will hold up in court of the reasons why the claims were deemed to be valid by the PTO. The patent is fluff. If there are unanswered reasons in the record of why the claims are not valid, the patent may be bacon.

With your thinking, I would advise you not to invest in any foreclosed houses. You will be thinking no worries because all titles are valid merely because they have been recorded somewhere by some clerk.

Posted by: Babel Boy at January 7, 2011 4:09 PM