John Smith starts his book thanking "Examiner Ms. E.P." of the USPTO for giving him inspiration for his book. "Without your three absurd Office Action rejections, this book would not have been possible." Smith's book is titled Don't File a Patent with the headline caption "the book that the Patent Office doesn't want you to read." Smith is not a lawyer, but rather an entrepreneur and inventor. Smith had no trouble obtaining two patents that covered his relatively worthless invention (designer wheel covers). Then, for his invention with real market value (hurricane window protectors), the PTO refused to issue a patent. (Smith apparently gave-up after three rejections.)
The book is directed toward individual inventors and small companies with little or no budget for intellectual property or litigation. Although the book takes an overly-extreme position, Smith suggests the valid argument that the limited resources of a small entity is often better spent on other business development activities. His "Reason #5 not to file a patent" explains this point:
The patent process costs tens of thousands of dollars. This is a waste of your money. A better investment is making your product first in the mind of your customer. . . . Back in 2005 when I filed my original patent application, I didn't have all this knowledge. At the time, some attorneys suggested that inventors "should wait and not market your product until you have a patent." I'm glad I never listened to that advice. Good thing I started marketing Storm Stoppers right away! Had I waited until getting a patent, I'd have nothing now. No awesome name brand, no millions of dollars in past sales, no thousands of customers, no appearances on CNBC & CNN, no Goodwill donation trips to the Bahamas and no learning and improving my product. Marketing your product right away is the only way to demonstrate that you have a good product.
About one-half of the book is dedicated to explaining why patenting is a waste of time and money for folks in his situation. The other half is devoted to providing some guidance on marketing and manufacturing.
At times throughout the book, Mr. Smith appears so burned by his past experience that he is blinded to the potential that patents can add in certain situations. With that major caveat, I think that the book is a good read and could be a useful tool for containing over-exuberance of innovators.
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John Smith's Website (Where you can buy the book)
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Patent Holder and Satirist Gary Odom Discusses the book here.
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Patrick Anderson discusses the book on his blog Gametime IP.
It’s offensive to guarantee results?
Help me out, my main man, why is this bad and what does this have to with “quality”?
This just reminds me that I am always hearing about “quality” products, jobs, etc. in the corporate world as if “quality” equals “high quality”.
I find that almost as offensive as when people “guarantee results”.
This just reminds me that I am always hearing about “quality” products, jobs, etc. in the corporate world as if “quality” equals “high quality”.
The guy simply got a shitty advice – no reason to wait until grant and not market right away after filing.
This one is often found not far from the Golden Arches, my friend.
Malcolm: Taco Bell is a perfect example of a company that has made billions of dollars without patenting its flagship products.
That’s presumably because all of their “flagship products” are ancient traditional Mexican folk recipes that form part of the prior art, and not because the quality of their “beef” borders on non-statutory subject matter.
Also, is “100% USDA inspected” supposed to impress anybody? Surely the stuff the USDA deems unfit for human consumption is, by definition, “USDA inspected”. It’s as reassuring as when Stephen Colbert refers to one of his segments as “award-eligible”.
Sunshine,
Is this windmill in front of the fields of rye, or at the bottom of the cliff?
The fast-food company said that its beef is “100% USDA inspected,” and insisted that its meat mix is “88% beef and 12% Secret Recipe.”
Taco Bell is a perfect example of a company that has made billions of dollars without patenting its flagship products.
Or if NAL laid her foot down and told them in a stern voice to change it!!!11
NAL I am sure that if it took 3+ years to obtain a driving licnes the system would indeed have been changed long ago.
Or if driver’s licenses were routinely handed out to 12 year olds who weren’t entitled to them.
I’m so confused.
I can handle the “TRUTH.” And there is more where that came from!
You want degeneracy? You cannot handle degeneracy.
There doesn’t seem to be any shortage of designs to go around. As far as I can tell, you and ping are the only degeneracy.
Or did I?
hmmmmmmmmmmmm
Well they sure do.
I wonder how many different designs there are…
Cy Nical actually said nothing of the kind.
Well, these new avatars certainly shed A New Light on last evening’s duplicate comments.
IANAE, you’ve succeeded!
I give up. I don’t care for this anymore–you’ve succeeded in making it boring.
You see, NAL, what happens when you let your assistant draft your response?
Fool me six times, shame on you. Fool me seven or more times, shame on me.
Thats some unusually weak carpet bombing there my main man – what’s up with that? Getting all “nice” to Dim?
Thats some unusually weak carpet bombing there my main man – what’s up with that? Getting all “nice” to Dim?
Thats some unusually weak carpet bombing there my main man – what’s up with that? Getting all “nice” to Dim?
Thats some unusually weak carpet bombing there my main man – what’s up with that? Getting all “nice” to Dim?
Thats some unusually weak carpet bombing there my main man – what’s up with that? Getting all “nice” to Dim?
The primary purpose of the patent system should be evidencing conception in a secure environment the initial disclosure document program should be returned to service to economically register intellectual property in potential inventorship dispute situations by filing within 3 days of another party and should be an evidencing method the 90 day improved provisional for 2 years improvement time. then the non provisional after that with one year.In indegency or low income situations where reduction to practice is not phesable The intellectual property should be retained as the filers for 20 years.
the value per cost basis of a registration only system would skyrocket – dwarfing anything possible with tinkering with modified examination standards.
Well, yeah, but you could get even more value per cost if people didn’t have to bother with registration in the first place. Just sue whomever you like, and produce in court some sort of proof of your date of invention.
It all depends on what you consider “value”, and from whose perspective you want to realize that value.
Examination is a very good idea. It weeds out nearly half of all applications, and it focuses the remaining ones through the lens of the cited art. It makes applicants think, at that early stage, about whether or not they really need or are entitled to a patent. What’s more, it spreads the cost of examination over all users of the system, rather than piling it on top of the poor soul who wants to enforce his only patent. It’s not perfect as it stands, but it’s definitely a step in the right direction.
It’s silly to give up on examination just because it has some implementation issues, when those issues could be addressed. Especially when the main issue is capacity, which the PTO is already addressing by finding new places where it can hire and train examiners.
IANAE,
Many share my “passion” that the current system does not work and must be replaced. I would daresay add, that there is a very small minority that think that the current system is not broken, that the system does work (and you are further removed from reality if you are now advocating this position). Quite a few, including IBP, who rather set out a sound logical argument, think that a pure registration system is the right answer. Or do you now also think that BPI and I are the same person?
And people spending money on the only system available is a poor argument for your cause. The US patent system lacks a competing system for you to make any such remarks and count them as viable positions. All uesrs of the current system have no choice if they want the protection of a patent. They have not been asked the question of whether they would prefer a pure registration system or not, so you cannot put those words into their mouths. Your fallacious argument fails.
The “quasi-widget-whatever-you-call-it-system” is not the mian point of my position. You are so eager to not listen that you missed the point I made that the value per cost basis of a registration only system would skyrocket – dwarfing anything possible with tinkering with modified examination standards. It simply isn’t a matter of widgets or wudgets – examination itself is failing. And it is failing at a very expensive price tag (being the only way currently to get the patent is not a strong argument for your position).
I am sure that if you asked people if they could have their patent – for 97% that patent would have the exact same value – right now and for a fraction of the cost, that the overwhelming response would be a giant YES, I WANT THAT.
I would have to agree with mr. Smith dont file a patent unless you include the actual inventor on the application because its not inequitable conduct situatoion.
NAL: Because it does not work.
That’s your opinion. The many for-profit companies who make business decisions to spend lots of money on the system would seem to disagree. And it’s their money, after all.
NAL: And believe it or not, more than one person can believe in the pure registration system.
None of them share your fiery passion for sending the quasi-widget-whatever-you-call-it-system to an early grave.
“Why shouldn’t that money stay in the system and be spent to improve the process?”
Because it does not work. See my earlier comment about insanity.
And believe it or not, more than one person can believe in the pure registration system. So calling me the name of some other poster who believes in that system only shows your ignorance and much-too-high view of your own beliefs.
You clearly lack any touch with reality.
O and IANAE, don’t argue with the NAL. She’s NAL after all, she can’t be reasoned with, you must speak down to her and then move on.
“Once again–there are MANY people living/working in the DC area who are compensated less than examiners, and they can make a go of it.”
How many of those are qualified? How many of those that are qualified had all C’s and D’s on their report cards? Please don’t even act like there are qualified technical people just laying around every other street corner in DC. The PO imports people from all over the US.
the private sector and the public sector are VERY different, what works in one often does not work in the other.
Repeating that statement won’t make it true either.
Sure, some things might not work the same in the public sector as they do in the private sector. However, hiring more people when more work needs to be done is obviously not one of those things. More people do more work than fewer people, wherever they are.
Besides, the PTO is pretty close to operating like a private sector organization. It’s self-funding and self-managing. It’s probably just about achieved low enough employee morale to compete with the big firms. The big differences are that it doesn’t stand to benefit from increased productivity (though at the moment management wants it anyway, so that’s not significant), and it doesn’t stand to benefit from increased profitability (which requires action by Congress to fix).
And, of course, it can’t turn away clients, and it has very little control over the total demand or cost of its services (most of which is generated by patent agents). So naturally, it’s going to have workflow issues no matter what it does.
You’re surprised that they can find examiners with the salary they pay?
I’m surprised they can find that many examiners in the DC area at any price, quite frankly. No wonder examination quality is so inconsistent. But do please explain again how “huge” the total compensation for examiners is, compared to other jobs they could get with similar qualifications.
IANAE, a statement is not made true by simple repetition.
Hiring solving things: the private sector and the public sector are VERY different, what works in one often does not work in the other.
You’re surprised that they can find examiners with the salary they pay? How tired that is. Once again–there are MANY people living/working in the DC area who are compensated less than examiners, and they can make a go of it. We’ve been through total compensation before–it is HUGE. Would you like the thread?
NAL: I can deal with the odd name calling
It’s not that odd, under the circumstances. But I’d rather talk about quasi-average widget production units, wouldn’t you?
NAL: ASk any real examiner what this “average” time means and you will see just how meaningless your play on words is.
What did they tell you when you asked them?
Whatever metric you have for measuring examiner throughput (and there will always be one), examiners will look to get the most counts for the least effort. Because they’re human. Sure, one could come up with a better metric, such as scaling counts up and down based on page and claim counts and art class, and it would probably be a relatively straightforward thing to do, but your continued fixation on the problem to the exclusion of the other very real problems (there will always be an average, and dividing total examination resources by that average will still give you too small a number) continues to puzzle me.
Examiners wouldn’t even have a chance to game the system if the backlog were manageable. The oldest case in each of their dockets (or whatever it is they’re required to do every other bi-week) would be much younger.
NAL: We have seen that “hiring more to get through this” is not a viable solution, as pendency has gone up with increased highering, bad examination has gone up with increased highering and the system simply does not work.
Hiring more is a viable solution, but it has to be done in a sensible way. Hiring new examiners while losing experienced examiners at the same rate isn’t helping. Hiring doesn’t help generally when you run out of local people who can handle the job. Frankly, I’m surprised they could even find 6,000 examiners in the DC area for the salaries they pay. And of course, rapid hiring will always reduce throughput in the short term because experienced examiners spend time to train new examiners, who are themselves inefficient at first. It happens in law firms, too. Look how much of a student’s or first year associate’s time gets written off. And even if you get all that sorted, pendency will still go up as long as the filing rate increases.
You can’t say “hiring more people to get more work done simply does not work”. It defies all common sense. Every company in the world hires more people when it needs to push more paper or assemble more widgets or ship more packages, and it always works. If it didn’t, every company would be AI sitting in a room with a patent on the wall, and it would be staggeringly productive.
NAL: That revenue generated would be freed to spend on other areas by the applicants and would truly be infused into the economy.
Applicants are free to do that already. Applicants choose to file patent applications. In the face of all the evidence, they see some value in the patent process, and that’s where they choose to put that money. Why shouldn’t that money stay in the system and be spent to improve the process?
NAL: Safety is not a factor with patents
Sure it is. You could be (literally) minding your own business when it gets totaled by someone else’s patent. It’s no consolation that his patent is registered, because there’s no way his insurer is going to cover your losses.
Please excuse the spelling errors. The baiting by IANAE is senseless and infuriating. He is obviously an intelligent, but very bored individual – and a great waste of talent. If he were to actually use his intelligence for constructive means, the comment section on this blog would be so much more worthwhile.
IANAE,
Please respect what I say and at least have the courtesy of addressing the points in a meaningful manner.
I can deal with the odd name calling and with disagreements that have some reasonable foundation, but your comments rank right up there with Ping’s for lack of value.
You delve into semantics with the “average examination time” argument. ASk any real examiner what this “average” time means and you will see just how meaningless your play on words is.
The point about “Clearly, the applicants (and those of us who represent them) want both quality and throughput.” is that you want what is not possible. We have seen that “hiring more to get through this” is not a viable solution, as pendency has gone up with increased highering, bad examination has gone up with increased highering and the system simply does not work. More of the same and expecting different results is a sign of insanity.
The revenue generated verus what they spend is a false argument. That revenue generated would be freed to spend on other areas by the applicants and would truly be infused into the economy. Clearly, taking that “revenue” level per Office employee and considering the resultant value (as opposed to other investment options) you would clearly see the fallacy of you rargument. If you were disposed to actually care about the fallacies oof your arguments, that is. But others reading this will understand and will care.
Your driving cars example is likewise lame and disengenuous. Safety is not a factor with patents – so that line of argument is dead on arrival. Millions of dollars and millions of applicaitons are not tied up in the DMV queues – so that line of argumetn is also intellectually bankrupt. I am sure that if it took 3+ years to obtain a driving licnes the system would indeed have been changed long ago.
Ty to stay on topic and away from your self-indulgent mocking, IANAE, and at the very least, try to have some self-respect.
NAL: a government body that insists that every application requires some average time
I don’t think the government body insists that every application requires the exact same amount of time. Rather, they’re insisting the much more reasonable thing that there exists an average amount of time that examination takes.
NAL: and that examiners maintain their jobs by throughput, rather than by any sense of real examination quality.
Funny, but the “the beatings will continue until morale improves” crowd insists that the whole system is inefficient and examiners should have way higher throughput (with the implication of less time per count).
Clearly, the applicants (and those of us who represent them) want both quality and throughput. Clearly, a quality examination takes a certain amount of time on average, whether that’s more or less than the time currently allotted to examiners. Examiners need ongoing training like the rest of us to keep their examination techniques current and efficient, but chances are there still aren’t enough of them to do the job.
Of course, none of that means that their job isn’t worthwhile, or that it couldn’t be made more worthwhile by letting the PTO “waste” the examination fees it collects on actual examiners who do actual examination.
NAL: It is time to simply abolish this horrific waste of resources (How much did the Office spend last year?).
They spent significantly less than the revenue they generated. Not many government offices generate this level of “waste”.
NAL: It is time to try pure registration again.
Let’s do that for driving cars, as well. There’s always a long lineup at the DMV, and while the test is hard enough to fail some people it’s far from good enough to clearly and convincingly presume that a licensed driver is any good.
Can you imagine that lineup instantly disappearing? I’d gladly trade that for the traditionally expected 3% increase in road accidents and litigation. Of course, I would also expect that 3% to drop as well because people will quickly realize that driving a car in a loose style, one geared only to get by the other cars on the road, will not be fit for pressing forward in the inevitable litigation battle. With costs being borne by those who choose to drive, rather than by the public at large, the value per cost basis would skyrocket.
I’d stay off the sidewalks for a little while, though.
All these points under discussion reflect the inadequacies of attempting examination by a government body that insists that every application requires some average time and that examiners maintain their jobs by throughput, rather than by any sense of real examination quality.
It is time to simply abolish this horrific waste of resources (How much did the Office spend last year?). A pure registration system will place the onus on those that wish to spend on their patent rights. Combine a pure registration system and a loser pay all costs lititgation standard and the truth of patentability will be left where (and how often) it is truly needed.
Having a patent (individually) may mean less, and the value of any particular property so achieved will undoubtedly mean less, but isn’t the argument so often repeated here is that what is patented really is not worth the value ascribed to it anyway? So in a very real sense, having a registration only system would be much more efficient. Same true value acheived by an extremely small fraction of the current costs.
The law of unintended consequences would, I believe, also drive the general state of applications to be of a much higher quality (for those who are serious). Knowing that the true mettle of the patent will not be tested by a heavily constrained government agency, but by a well healed and determined adversary, will drive those who are serious to take the drafting stage much more seriously. As merely obtaining “a patent” loses its power, obtaining a high-quality rigorous, well researched and well written patent will be the only insurance of having a patent right worth fighting over.
Of course, the 97% of patents that are never litigated would still achieve the “status” of having a patent and provide the applicant with something nice to hang on the wall, but at an incredible cost and time savings.
Can you just imagine the backlog of more than one million applications awaiting some type of Office action instantly disappearing? I would gladly trade that for the traditionally expected 3% increase in court actions. Of course, I would also expect that 3% to drop as well because people will quickly realize that those patents written in a loose style, one geared only to get by the Office examination, will not be fit for pressing forward in a litigation battle. With costs being borne by those who choose battle, rather than by the public at large, the value per cost basis would skyrocket – dwarfing anything possible with tinkering with modified examination standards.
It is time to try pure registration again.
Peer-to-Patent IS a try. It is a first step on an inevitable journey.
If it did take 50 years to achieve a workable examination-based PTO, would it be worth it, assuming there were incremental benefits on the way?
My only “self-interest” in the PTO is the value that it provides to society. It bestows property on people pursuant to application therefor, and it is the concept of property, along with private ownership thereof, that has been a cornerstone of western civilization.
I happen to agree with the conditions set forth for patentability. I want all patents granted to be valid and enforceable. I want a meaningful examination that supports at least a C&C standard. I want a more cost-effective and specialized dispute resolution forum. I want examiners who understand and properly apply the law. And I want it all done sufficiently quickly.
This may be idealistic, and may not be the view held by some who work for entities that profit from junk patents–but it should be recognized as the view that is best for society as a whole.
Like it or not ping, things are going to have to change. The only extent to which I’m being political is that given two options, one of which results in increased government and the other of which results in decreased government, I will initially prefer the latter as a starting point for discussion.
Wow, a veritable wall of info to read through during my morning, um Consitution.
IBP – ya fit right in with the other political hacks with your “its gotta be” views. Weren’t ya bashing poor kmf for the same line of argument?
“and hence we try Peer-to-Patent” Um, sure, if ya wanna call the like totally pathetic participation in that program a “try”. How many zeroes behind the decimal point is the percentage participation in that program compared to all applications? Thought so.
With a beginning like that, weza be up to full speed in about fifty years and a backlog O billions I reckon.
“The PTO will become like other governmental bodies–it will perform basically review functions. The interesting thing is that the PTO might not have to compensate its future examiners, as they are driven by self-interest to perform or contribute to the examination.”
Full blown chuckles there, ya sound just like the anti software patent folk – they will work for self-interest. Talk abouts a need for reality check time…
That was thorough. Merci kmf!
You could have added something about freedom to operate, patent infringement, and all that jazz. One might well be obliged to play the patent game whether he likes it or not.
What would Mr. Smith do if someone knocked on his door and shoved a piece of paper marked “United States Patent” in his face? Just ignore him? Write another book ranting about the cr*p granted by the patent office? (it’s always the other guy’s patent that shouldn’t have been granted, isn’t it?) He might perhaps be happy of having a (pending) patent of his own to use as a bargaining chip or for retaliation.
I’d be curious to see the actual claims filed, from the rejection excerpts it would appear to me that these were probably quite problematic.
– or it was clear the Examiner’s point was valid – yes, they do, in fact, sometimes come up with very legitimate rejections –
Purr purr purr purr. 😉
kmf–
I agree totally with NWPA.
Anon–
Since when has the PTO really cared about the law????
Do you think that the PTO just sits back and takes orders from Congress?
Who is going to hold the PTO accountable for ignoring any purported “mandate” in 131?
Have any applicants brought civil actions for damages resulting from ineffective or effectively nonexistent “examination”?
Have any applicants sought an order of mandamus to compel the PTO to consider a piece of applicant-submitted art, or to perform any particular examination function?
What exactly IS the “mandate”? What exactly does “examination” mean?
A “mandate” that is brushed aside or considered substantially unachievable is no mandate at all.
I know my premises are thin. It’s the only way I can make sense of what currently is allowed to pass for “examination”.
The PTO must know that in the modern era, it is not best positioned to perform comprehensive examinations. Sure it can contribute to examination, but it cannot by itself examine effectively.
They MUST know that a distributed model of examination, undertaken by interested parties, would have advantages.
Of course it would also have disadvantages–i.e. lots of references and arguments to sift through–but with pendency already at 4 years, if that remains acceptable, there would be plenty of time to solicit and review submissions.
The PTO does know, and hence we try Peer-to-Patent. It is only the beginning. Face it–for whatever reason, gov’t as represented by the PTO is incapable of examining. And they know it.
The interesting thing in the future will be how the mechanics play out, and whether or not there will be revisions to 35 USC to reflect the new paradigm.
Will there be qualifications for reviewers? Will there be a graduated reviewing system? What will be the form of submission? What type of content will be sought? What weight will be afforded the content? Will an expert system be set up?
Will the core functions reserved for PTO “examiners” be increasingly related to data mining, and will they be progressively outsourced?
The PTO will become like other governmental bodies–it will perform basically review functions. The interesting thing is that the PTO might not have to compensate its future examiners, as they are driven by self-interest to perform or contribute to the examination.
We’re in a transition period right now, with the PTO all but having given up on the 131 “mandate”. The examination “mandate” is currently illusory, although at some point it is likely to be substantively revived.
kmf: You have the basics right. You should edit what you wrote and ask Dennis to post as a reply to Mr. Smith.
Don’t mind the heel nippers. Your big points are right just tone down the rhetoric.
I do not accept your premises IBP. So mush so, that I do not know where to begin to formulate a reply to your last post. What is set forth in 131 is the rest of the law. If you feel that is not enough, I do not know what to tell you.
Thanks, Anon!
The problem is that 131 sets no real thresholds or conditions for the sufficiency of the so-called “examination”.
For instance, must all applicant-supplied references be considered?
Must every printed publication in this, or a foreign country more than one year old, be considered?
etc.
The “quality” of the “examination” can thus approach zero, and therefore constitute no examination at all.
There is effectively no examination requirement.
Do you really believe that the PTO “examines” for each and every “condition of patentability”, as 131 would purport to require? Of course they don’t.
The world has grown since 1952. There is no longer any way for the PTO to effectively “examine” an application for violation of any of the conditions of patentability.
So they give it the “college try”. What does that mean? That means that they err on the side of granting patents that shouldn’t be granted. I know the mantra has allegedly been “reject, reject, reject”, but that was an aberrant phase in PTO management, and probably the vast majority of rejections in that era were wrong and/or unlawful, and done to make it look like the office was doing something. We’re back to trying to make the occurrence of false negatives zero.
Unfortunately, as pointed out endlessly by MM and others, what we get, because there is effectively no examination, is a bunch of false positives. It is the price to pay for the REAL mandate of the PTO, as articulated in 35 USC 2.
Of course, the question then circles back to whether or not the PTO is adequately funded to discharge its mandate. If one argues that there is an other-than-illusory examination mandate, then the answer is clearly “no”, but that is an absurd situation; the answer would ALWAYS be clearly “no”, irrespective of the level of funding, because a search of all required material would take an infinite amount of time (all those Soviet-era papers…all those manual Swiss lab manuals…)
Rejecting bad applications CANNOT rightly be considered part of the PTO’s mandate, for it is possible in only the simplest of cases. Rather than being a mandate, it is an accidental by-product of a cursory and perfunctory attempt at compliance with 131.
Anon, when was the last time you prosecuted an application that you drafted, in which you accepted a substantive rejection, for a reason other than that the client didn’t want to proceed with a challenge?
The best we could do to approach a discharge of such a “mandate” would be to have the PTO accept submissions and arguments by third parties BEFORE allowance and issuance, and also AFTER issue but on the same art with different interpretations or arguments. Only then could we talk of any actual mandate.
I know I have stretched things, but that is really how I feel about things. Yes, I know there are exceptions, and my feelings may be more true in some arts units than others–but my experience is that the PTO is merely going through the motions when it comes to “examination”, because the examination “mandate” at the current funding level amounts to no mandate at all, other than for formal sufficiency of parts and fees.
“I care that someone will read what Mr. Smith so emphatically states as gospel truth will pursue a path that will cost that person their rights and potentially much, much more”
And that is precisely why I wrote what I wrote to Mr. Smith. Now I’ll go back to work. . .
It is fairly well known that certain posters are not to be engaged in conversation due to their chicanery and lack of scruples.
Having said that, I would not have identified IBP as one such poster. And that is why I find this latest exchange more than a bit disappointing.
IBP states:”The problem is that nowhere in 35 USC is anything like an “examination” mandated”
Really? Does the law at 35 USC 131 not mean anything to you?
“The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.”
If it were only this single item, I might think this a mere oversight. However, even after explaining why it would be good to stay out of the murky quagmire, IBP all but dives in head first. Now diving into muck is not necessarily indicative as to a lack of scruples, but diving in after chastising another for taking an “unsubstantiated” position is.
IBP, your stance of elevating one form of error (true negative) as more poignant than a another type of error (false positive) is entirely subjective and lacking in legal support. Any support for that position must come from the land of “subjective Value” – the very land upon which you criticize someone else as standing on – and then you do the exact same thing. You submit as your position (“Thus, the only issue with respect to mandate is that of false negative“) only that which is subjective, and you do so “without proof, [in the] same type of transparently political statement of position that we’re used to hearing from the likes of Paul Michel, and which is so unfailingly easy to discredit.”
The easy path to discredit what you have said is here:“The PTO could run a registration system and still meet its mandate.” As I have indicated, the law itself mandates that an examination be made. Registration is not examination, not under the law as it currently stands – the law that defines what the mandate is. And the Office is powerless to change this (should I bother to point out the Tafas case to you to remind you of this?). It would require an act of Congress to change the law to permit registration. You do of course realize that mandates are not only set by Constitution, do you not? Mandates to executive agency bodies (like the USPTO) are set by Congress through law (law, including for example, 35 USC 131).
As for your question of “Look, in general, why should patent attorneys care what Smith has to say?”, my answer (and only my answer as I cannot speak for anyone else) is simple: Because I care. I care that someone will read what Mr. Smith so emphatically states as gospel truth will pursue a path that will cost that person their rights and potentially much, much more. I care that you have seemingly taken a position adverse to kmf’s position – not as I had thought on substantially bonafide legal principles – but rather, because you are pitching just as much a subjective personal view of that which you attack.
In this regards, kmf is right for the wrong reasons. I was wrong in that initially I thought you were merely pointing out the wrong reasons, rather than submitting an argument from the very swampland you seemed to caution about.
“What was that title again?” – I need more than mere forgetfulness as your point was not so much with Mr. Smith, as it was with kmf, and then, with me. And while kmf can battle his own battles – I will battle mine – at least with those who choose to do so honorably (and I guess I still consider you an honorable person, IBP).
Look, in general, why should patent attorneys care what Smith has to say?
Most patenting entities are large businesses with sophisticated IP strategies–i.e. most prosecution business comes from such entities, which entities will not care one whit about Smith’s book or his attitudes.
Of course some of us could be disproportionately affected–but he’s not the first to give the opinion he does, and he won’t be the last.
Usually it’s best to ignore things like Smith, low-brow populist easy-reading. His book, if noticed at all, will have entirely disappeared from public consciousness within 4-6 months, if not sooner.
What was the title again?
kmf–
Your “point” that someone following his advice “could conceivably” do something is really no point at all–it is a mere suggestion of possibility. Equally likely, given both your evidence and that of Smith, is that someone following his advice “could conceivably” achieve an outcome totally different from that which you propose.
Without more, your “point” is worth just exactly what Smith’s “point” is worth.
Now I know that you have written at length in response to what Smith said, the attention for which Smith should be grateful–it seems more than his narrative and rhetoric deserve–but supplanting his conclusory statements with your own gets nobody anywhere.
my posting was simply to refute, on a point-by-point basis, the incorrect statements Mr. Smith makes in the first 23 pages of his book. There are a lot; therefore, my posting was lengthy. Note that my posting was a copy of an email I sent to him; therefore, some of the explanation was for him to understand how the system works and for him to see that what he wrote was incorrect. Re funding/value, points noted are well taken. Regardless, the point still stands that, contrary to Mr. Smith’s assertion, the PTO is not some carnival barker trying to extract maximum dollars from the “fish’s” pocket by holding out false promises. The point also still stands that someone following his advice could conceivably come up with something very valuable but, having spent a year and a day marketing it without ever filing a patent application, naively forfeit all rights to which he or she otherwise would have been entitled. If for no other reason, that poor advice makes Mr. Smith’s book dangerous.
BTW, what do commenters here think of the following:
The PTO could maximally efficiently meet its mandate of granting patent rights where they are due by granting rights to everything that is filed, and by completely ignoring false positives–that is, by putting absolutely NO resources into weeding-out ineligible applications by examination.
100% of patentable subject-matter would be granted patent protection, and 0% of resources would be used for any other purpose.
Registration system = maximum PTO efficiency
Let the resources of disputatious private parties be used to address false positives in a mutually-agreed-upon dispute resolution forum.
There is even an argument that the private parties would do it more efficiently and effectively than could the public sector, as the outcome has greater VALUE to the private sector actors.
Anon–
I was trying to agree with you in principle. You chose to buy into kmf’s characterization of the PTO as having a “job it has been tasked to do” by Congress.
You ask if the PTO has performed “its mandated function”, a question that necessitates an understanding of just exactly what that function is, for purposes of discussion.
The problem is that nowhere in 35 USC is anything like an “examination” mandated:
35 U.S.C. 2 Powers and duties.
(a)IN GENERAL.— The United States Patent and Trademark Office, subject to the policy direction of the Secretary of Commerce—
(1)shall be responsible for the granting and issuing of patents and the registration of trademarks; and
(2)shall be responsible for disseminating to the public information with respect to patents and trademarks.
(b)SPECIFIC POWERS.— The Office—
(2)may establish regulations, not inconsistent
with law, which—
(A)shall govern the conduct of proceedings
in the Office;
(C)shall facilitate and expedite the processing
of patent applications, particularly those which can be filed, stored, processed, searched, and retrieved electronically, subject to the provisions of section 122 relating to the confidential status of applications;
The PTO could run a registration system and still meet its mandate.
The thing that is common to all interpretations of mandate is that patents MUST be granted and issued, with the aim of grant and issuance being “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”
Thus, the only issue with respect to mandate is that of false negatives–that is, if NO patent rights are secured to inventors for their discoveries, the securing of which WOULD otherwise promote the progress of science and useful arts, the PTO will have failed to meet its mandate.
Does the PTO routinely reject patentable claims? Yes. Is that systemic type of unlawful rejection the sole and direct result of the “level of funding” of the PTO? That is, could the systemic unlawful rejections be lessened or eliminated by a change in the funding level?
Of this there is no evidence provided by kmf.
The issue of false positives–that is, when patent rights ARE secured to inventors for their discoveries, when the securing of those rights WOULD NOT promote the progress of science and useful arts–is less important when one speaks positively about “mandate”. False positives are only extra-mandate by implication, and not necessary implication at that. They are an issue that relates to value, and efficiency of meeting the mandate, rather than to the actual meeting of the mandate itself.
kmf’s statement was simplistic. While it was nice of you to entertain her statement while assuming it had some substance worth discussing, you’d probably be better off turning your fertile mind toward others’ cogent arguments, instead of toward her at least unqualified, and probably unconsidered, statements.
Now, you yourself have stepped over the line IBP.
“but in any interpretation, we ultimately arrive at the basic question of VALUE: does the PTO deliver good VALUE to society?”
Nowhere is a jump to a such subjective question required in reviewing whether or not the Office has performed its mandated function.
The discussion of whether the Office is meeting its mandate need not be conditioned to “good” or “strong” versus “weak” or “bad”. Has the application been examined? Has the law been met? These are objective questions, with objective answers. Nowhere is there a requirement for a “perfect” examination. Examination is merely done to the standards set forth. The descent into a discussion of “Value” is a quagmire that need not be waded through. As such, it bodes ill to invite anyone into that quagmire unnecessarily.
Talking about the budget process is one such topic that rises above the quagmire.
Anon–
kmf’s use of the term “underfunded” is incapable of a meaningful interpretation, as it was used.
What was meant is anyone’s guess–but in any interpretation, we ultimately arrive at the basic question of VALUE: does the PTO deliver good VALUE to society?
This is a VERY difficult question to answer. For instance, let’s say that intricacy and therefore costs of prosecution go sky-high, pricing all but the deepest-pocketed entities and the most promising inventions out of the patent market.
Such an outcome COULD represent excellent value to society–a huge bang for the public buck. Only hugely profitable inventions, by entities big enough to commercialize successfully.
There is currently no necessary requirement, express or implied, that the PTO must issue only GOOD patents, or STRONG patents–if they’re issuing a bunch of weak cr@p, can they be considered to be doing the job they have been tasked to do?
Maybe–but even so, the question of VALUE remains unresolved. Could we get weak cr@p for less? Increasingly the answer to this question leans toward “yes”, especially at a logical extreme, a registration system.
An easier approach to value assessment is to consider value as perceived by a current or potential applicant, but that is a whole other discussion.
I’m pretty sure we all ignored kmf’s opus, and probably rightly–I just wanted to provide some justification for my own decision not to wade through it all.
Interestingly, I agree with IBP.
When this argument is used, one has to consider what it means to be “underfunded.” Underfunded as a comparison to what? What does it mean to be “adequately funded”?
“Funding” and “fee diversion” both need to be analyzed in the context of the larger USPTO operations. I do not know just how the management of the PTO goes through its budget process. I do not know if the problem lays with management simply not budgeting (or planning) for the appropriate expenditures to keep itself at a point where it can “do the job it has been tasked to do.”
I think it is plain to see (proof enough coming from a common sense view of the backlog and the impending wave of PTA) that the PTO is not doing the job it has been tasked to do. Do you agree IBP?
As for “funding”, I feel that such is a symptom, not a cause. “Funding” is chosen by management. Management owns the responsibility. If there are constraints on management that absolutely hinder management from performing as they need to perform, then those impediments should rightfully be highlighted. Even so, it is still management’s responsibility.
kmf: “…the truth of the matter is that the PTO is woefully underfunded to do the job it has been tasked by Congress to do…”
Such certitude.
Where is your proof? You have presented none, and the assumptions required for your statement to be true are unsupported. It’s the same type of transparently political statement of position that we’re used to hearing from the likes of Paul Michel, and which is so unfailingly easy to discredit.
In making statements like that one, you place your own rhetoric squarely in the same class as that of the author Smith.
Next.
Nah, even NAL doesn’t wield walls of text in such a destructive way.
Hmmm,
Four page legal opinion.
Kinda reminds me of NAL…
Cy, ya wanna have the honors?
omitted portion of email
In your opinion, the patent industry, including the vast majority of patent attorneys, does a tremendous disservice to inventors by encouraging them to file first.
First, same question as above: WHAT IS YOUR BASE OF EXPERIENCE FOR SUCH A FAR-SWEEPING STATEMENT? And second, you are the one doing the less informed inventors a grave disservice in making such recommendations without adequate legal training. As noted above and the other day on the phone, if you disclose and sell for over a year before you file your application (even just a simple provisional application, that could be a back-of-the-envelope sketch so long as it fully informs one of skill in the art as to what you came up with and how it works), you lose your right to file. So then you improve your invention to the point that it is really a great product, everyone wants it, it is a commercial success, and Boxco or Knock-offs-R-Us decides it wants a piece of the action, too. So it slavishly copies your invention down to the last nut and bolt and, using its far greater marketing channels, outsells you into oblivion. What are you going to do then? John Q Public is going to buy its storm windows from Home Depot or Lowe’s or Ace; they are not going to think first and foremost – at least not for a long time, and likely never – of John Smith. Some good your build-the-company-name-first advice has done there.
omitted portion of email
Furthermore, you state that utility patents are the type inventors are most encouraged to file because they are “the most comprehensive.” That is not why they are used instead of plant and design patents; they are used when what your are trying to protect is a conceptual “thing” (apparatus or method, see above) and the invention can be defined in terms of the components or steps that go into the apparatus or method. Design patents are used where what the inventor came up with – what something looks like – can’t be defined that way and isn’t otherwise protectable, and plant patent are used where what the inventor came up with was an asexually reproduced plant. In short, utility patents are used where that is the appropriate vehicle for patent protection.
Wow.
Websites
Finally (to the extent I’ve been able to read just 23 pages of you book and see all these flaws in your analysis and assertions), you quote an online inventions disclosure company’s website’s advice that if you can’t afford to patent something without an attorney you shouldn’t be in business; you belittle it despite a fundamental truth that actually does reside in it; and then you ascribe such assertions to the “patent industry” as a whole. As for the fundamental truth in the online company’s come-on, the fact of the matter is that it DOES take money to make money. It does not need to be a lot, but it does take some. Furthermore, although it is a narrow field of practice, patent law is deep in that there are many, many places the layman can screw up and shoot themselves in the foot. While there are some that do successfully patent and market their own inventions, never underestimate the value of the advice an honest, well trained patent attorney who is “on the ball” can provide.
I’m sorry you feel so cheated by the PTO for being denied your storm chaser patent – I bet you didn’t feel so bad when you got your other two patents, did you? – but what is appearing to me not to be worth the paper it’s written on is your book, not the patent system as a whole.
Regarding the numbers you’ve calculated, you assume $540 for average governmental filing fee (small entity??? Large entity fee is double.) Multiplying that by 482,871 applications filed in 2009 (just small entity, or all? If all, you’re mixing and matching your numbers), you come to a total filing fee revenue of over $260 M. (“WOW!” in your words.) However, spreading that $260M among 6242 examiners at the PTO (using your own number) yields just $41,773.52 per examiner per year. Even adding back in the RCE fees, extension fees, petition fees, etc., which your WOW calculation seems to have overlooked, it is still clear that that is NOT a lot of revenue available to pay an examiner to do what can be a difficult job with limited resources. (In large measure, the PTO’s backlog – another MAJOR factor that makes your notions of the PTO as having a reject, reject, reject, reject mentality inaccurate – is due to the fact that they are short on talented examiners, and the PTO NEEDS funds to hire more to help get itself out from under that backlog.)
Furthermore, from 42% allowance rate, you conclude that 58% of applications are not allowed, so multiplying $260M by 58%, you conclude that the PTO is making $151 in gross revenue from the examiners making continued rejections. That, Mr. Smith, is shoddy logic. Regardless of whether the PTO rejects or allows an application, it takes money for the examiner to do his or her job. It is not an agency where every penny spent on an ultimately rejected application goes into some PTO piggy bank as pure profit, and no penny spent on an application that issues is realized by the PTO. Patents are intangible rights – they are not manufactured goods – so simply rejecting an application does not allow the PTO to keep more money in its pocket. Seriously, now, do you really consider that a legitimate business calculation???
Different Classes, Different Fees
You assume that an art class (e.g., electrical connectors) with a 50% allowance rate (1 allowance per 2 rejections) requires 2 responses (at an assumed average cost (based on just YOUR personal experience) of 3K per response) to get allowed, whereas one with a 5% rate will require 20 responses to get allowed. Therefore, you conclude that some art classes require an applicant to pay more to secure allowance than other art classes. As explained above, however, you have completely misinterpreted or misused the chart data. An allowance/rejection ratio does NOT indicate how many times an applicant has to respond to finally get to allowance; rather, it reflects the difficulty of getting A claim allowed in general in the particular field in light of many different factors (alluded to above), including the possible fact that some subject matter isn’t even patent-eligible. Accordingly, your assertion that if the ratio was higher the PTO would be making less money – again, that’s NOT their raison d’etre – and that that explains why the PTO purportedly hides the real information is simply fallacy.
If, on the other hand, you amend the claims in some fashion and that amendment does not secure allowance, the examiner will come back with another office action with new rejections necessitated by or responsive to or in light of your amendments. In that case, the subsequent action will be final. Alternatively, if you respond to the first action by argument alone and that argument does not persuade the examiner to change his position, the subsequent action will again be final. (However, if the examiner comes back with any new ground of rejection that was not necessitated by some amendment you made, regardless of whether it was a rejection based on prior art or alleged indefiniteness or purported lack of enablement or disclosure in the specification or any other reason, the subsequent action cannot be made final, and you will have the exact same “free reign” to respond to that subsequent action as if it were any old non-final action.) If the action is final, however, your strategic options are NOT, in fact, as limited as you write (“only recourse is to file an expensive Appeal with the [BPAI].” To the contrary, you can argue against the new rejection, and if the examiner withdraws it, you are back to non-final land or even allowance-ville. Alternatively, if you see a further amendment that can be made to clarify or sharpen a distinguishing feature, or to recite a new feature that moves a reference “off the table,” then by all means amend. If the amendment is something that requires further search and/or consideration – and I have never seen an examiner say that anything other than the most trivial after-final amendment doesn’t require further search and/or consideration – THEN you will need to pay for an RCE to have the amendment entered and considered. Regarding cost, small entity fee for an RCE is $405, i.e., half of the large-entity fee you quote. Furthermore, the form for submitting an RCE is simple (one page, a couple check boxes); the only attorney time needed should be the time to prepare a suitable amendment and remarks. As for proceeding to appeal, you have far more options available while you are dealing with the examiner, including the ability to speak to the examiner’s supervisor if necessary (and I’ve done that many times with success, even where the examiner is a primary and has his “wings” to fly on his own); therefore, you should be going up to appeal ONLY when all other options (including appropriate declarations) have been utilized. It is not the first-line, go-ask-dad-instead choice! (If you want to see how this should work, check out the file history for U.S. 7,859,386, where we paid for one RCE (necessary to scrap the claims as they stood when I picked up the case in favor of clearer claims, in 09/2007) and had to fight diligently (and ultimately successfully) to make the examiner see the light (including two calls to his SPE). See, also, the file history for U.S. 7,844,428 (another one where we paid for one RCE to scrap claims I got the case with in favor of clearer claims.)
Making Money the PTO Way
As noted above, the PTO is not a profit-seeking organization. Furthermore, as explained above, you do NOT have to pay a governmental filing fee of $405 (or $810 large entity) to respond to a non-final office action. (You may, however, need to pay for extensions of time if you don’t timely respond, but that is something that is entirely within your and/or your attorney’s control and is not what you are referring to.) Furthermore, your statement that the PTO will continue to reject your application and that it is all a scam perpetrated on inventors by the PTO and the Examiners – “collusion at its finest” in your words — is undercut by the fact that there are, in fact, more than just some of us in the profession who know what we’re doing and how to get a patent-meritorious claim allowed (or will have the decency to tell the applicant what they don’t want to hear, that the Examiner has a valid point and the claimed invention can’t be patented).
The Office Action Procedure
As an initial matter, your characterization of the patent examiner’s goal as being “to reject the patent application” is pejorative and is as skewed as your all-lawyers-are-PacMan-whores notion. Furthermore, reasons for rejection are not “roadblocks” or an obstacle course the examiner is trying to make you run. Rather, the examiner is trying to ensure that what ultimately does issue has had its mettle tested so that it is, in fact, valid and properly deserved. If the examiner’s position is incorrect and you can take the time to explain it properly, examiners can and do withdraw rejections.
As for non-final actions, final actions, rce’s, and further fees, you’ve gotten things completely mixed up! The first action in a case will be non-final. At that point, you can amend the claims (but not the specification); you can explain how the examiner interpreted the reference incorrectly; you can submit declarations explaining why the examiner’s view of what would have been obvious in the field is skewed; you can even submit a declaration (if facts warrant it and if other factors allow it) showing that you invented your invention before the reference was properly prior art to your invention. The PTO cost for doing this (assuming you do not introduce more independent claims or total claims than your basic filing fee gets you)? Big fat $0. Nothing. Nada. Zip. Zilch. What you DON’T get at this point is the appropriate time to file an RCE. If you persuade the examiner that his interpretation of the reference(s) was wrong, or if you convince him that the combination of references really wasn’t plausible, or if your declaration shows him that his understanding of the field was wrong or that the reference wasn’t, in fact, applicable prior art, he might allow the case right then and there. Alternatively, the Examiner very well could come back with another action raising new grounds for rejection that don’t suffer the same defects. In that case, the subsequent office action will not be final, and you get another bite at the apple and you can respond to that further, non-final rejection the same as before.
The catch-22 and purported conflict of interest
Reputable attorneys build their practices on giving sound advice, even when that advice is NOT to file because of various factors. The notion you suggest of not being able to make a living or pay salaries if an attorney gives a client candid advice not to file is making an occasional situation into a far more problematic situation than is the case. Yes, it is true that many patents never lead to financial success, but that is for the client/inventor to assess and understand. To the extent you assert that attorneys are just in it for the money and will sell the client anything they can, once again, I question the extent of the base of experience from which you draw your conclusions, which come across as little more than regurgitated type-casting.
Misunderstood Significance of Allowance Ratios
You have included a chart showing different allowance rates for different art units, which you assert reflects by inverse relationship the amount of time and money it would take to get a patent in a given art unit. From that, you posit that the PTO “does not provide one [allowance chart] that covers all product classifications [because if] it did, they might receive a lot fewer patent applications and a lot more outrage from inventors. You have clearly failed to understand what the graph shows and the reasons behind the different allowance rates. The ability to get a claim allowed turns on many factors, including how “crowded” the art is, how well established or “cutting edge” the relevant field is, how predictable the particular art is, etc. For mechanical inventions (e.g., electrical connectors), while there is a lot of prior art, people trying to patent a connector usually understand that and draw their claims narrowly. Therefore, they are not trying to cover the waterfront and are more likely to get something – appropriately tailored – through. Furthermore, there is a requirement that a patent application enables the claimed invention. For electromechanical inventions, a diagram usually suffices. In the biotech and chemical arts, on the other hand, the science is, at times, unpredictable, and applicants often have to prove to an examiner that the invention does, in fact, work, and that those of skill in the art would be able to make and use the invention as broadly as claimed. That requirement can hamstring an inventor and limit allowance. Furthermore, many times a pharmaceutical application will be drafted in a way that says the compound should have one component selected from group I (having ten members), another component selected from group II (having eight members), antoher from group II (having twenty members), etc. Then years later, the inventor hits on a specific combination of components that was never disclosed, per se or specifically, in the disclosure but that theoretically is covered by the broad guidelines of one component from each of the specified groups. If you figure out the various possible combinations of components, there are millions! Trying to get a claim allowed to the specific compound that is later hit upon in that case can be difficult indeed, not because the examiners in the relevant art units are more “out to get” the applicants in those art units, but because of the specific intricacies of the science and how the various general requirements for patentability play out in the context of the specific field. And as for the insurance and finance field, the reason the allowance rate is so low (and likely will go down even further) is because some subject matter simply isn’t grist for patent protection. See, in this regard, 35 U.S.C. Section 101 (identifying the types of subject matter that are patent-eligible) and the recent Supreme Court case of Bilski v Kappos (holding a method for hedging risk to be too abstract and therefore not grist for patenting). Therefore, you could spend 1000 times more money in that field and likely not get a patent (and I and many other good, honest patent attorneys would TELL you so so that you DON’T waste your time and money barking up that tree).
Utility Patent Term and Coverage
Utility patents expire twenty years from the earliest claimed priority date, not twenty years from date of issue. If you file a stand-alone patent on 1/1/2010 and it issues 1/1/2012, it will expire 1/1/2030 (twenty years from 1/1/2010). On the other hand, if you have a series of continuing applications claiming priority back to a parent that was filed 1/1/2010, you could have a patent issue on, say, 1/1/2025 and it would still expire 1/1/2030 (i.e., twenty years from the earliest claimed priority date of 1/1/2010), thus giving it only five years of term. The old rule was that patents last seventeen years from when they issued, regardless of how far back they claimed priority (something that gave rise to “submarine patents” that could come up out of the dark and hold industries hostage based on originally filed applications that were in many cases not truly germane; see, e.g., Lemelson. The 20-year-from-earliest-claimed-priority-date approach obviated that problem.) Furthermore, they do not, strictly speaking, “protect the function and use of a product.” A utility patent protects a conceptual “thing.” Sometimes, that “thing” is an apparatus (e.g., storm windows), and the patent lets the owner prevent others from “making, using, selling, or offering to sell” the claimed apparatus. The claims in that case will define the apparatus in terms of components and how they fit together or interrelate to each other; it will not define the apparatus in terms of how it functions. Other times, the “thing” is a method (e.g., a method for making bricks), and the patent lets the owner prevent others from practicing the claim-recited method (i.e., making bricks according to the “recipe” set forth in the claims). Sometimes, a patent can, in fact, protect the use of a product – so long as that use is, itself, novel and non-obvious. For example, if I discover that I can run my car using French dressing instead of gasoline, I can’t get a patent directed to French dressing, per se (because that is long-known, per se); however, assuming it has never been done before and would not have been obvious in light of other products that have been used to power internal combustion engines, then I could get a patent covering a method of powering an internal combustion engine using French dressing to do so (i.e., use of a product). Generally speaking, patents do NOT cover “the function of a product.”
Any patent attorney will encourage a client to file an application to protect their concept
WHAT IS YOUR EMPIRICAL BASE OF REFERENCE FOR THIS ASSERTION? As far as I can tell, you are shooting from the hip based on your limited experience in not getting your storm window application allowed. To go from that to asserting that any patent attorney will encourage a client to file a patent to protect their invention is completely unsupported and, frankly, reflects a lack of understanding of the various types of protection that could be relied on instead of a patent and considerations that would tell the attorney to tell the client NOT to proceed. For example, some inventions have value to an inventor and give the inventor a commercial advantage without the world ever needing to know about it. For example, if an inventor discovers that the catalytic cracking yield of gasoline from crude oil can be increased by 30% (so that you get more salable fuel per barrel of crude) by putting chicken droppings into the crude, and then all evidence of the chicken droppings can be removed so that no one ever knows that’s how the yield is increased, then relying on trade secret could very well be the more appropriate route to go to “protect” the invention. The benefit of trade secret protection is that, unlike a patent, it lasts as long as the secret is kept secret, and thus public disclosure is avoided. On the downside, however, a patent will let an inventor prevent others from making, using, selling, or offering to sell the covered invention regardless of whether the accused infringer copied or merely came up with the same idea himself independently of seeing the inventor’s product or patent, whereas trade secret protection only protects the “inventor” against others who obtain the protected information by improper means (e.g., spying, buying off employees, etc.) If someone else comes up with the same concept independently of the inventor, they are free to practice the concept themselves to their heart’s content.
Furthermore, you characterize the patenting process as “a cleverly disguised illusion of protection” that takes inventors’ money and robs them of their dreams, encouraging inventors to file applications and rejecting all of their claims. Contrary to your biased, bitter misunderstanding, the PTO is not some sort of a carnival game where the barker is trying to get your money by holding out false hopes that you can get the ball in the basket or knock over the three simple milk bottles. The PTO is NOT trying to make a profit off of inventors; money is NOT going into individual PTO employees’ pockets; and the truth of the matter is that the PTO is woefully underfunded to do the job it has been tasked by Congress to do (pursuant to the Constitution, Article I, Section 8 (“The Congress shall have power … To promote the Progress of Science and useful Arts, by securing for limited Times to
Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”)). (See below re $$$, using your assumed numbers.)
In this book:
Only the attorney makes money on a litigation and judgments are worthless as they are impossible to collect? Is that why major corporations invest so heavily in developing their IP, then protecting it when necessary? What experience do you have on which you base that assertion?
PTO wants your money, not your invention
Frankly, the PTO doesn’t want either. It needs money to pay the examiners to do their job; it is not trying to maximize some sort of profit. As for wanting your invention, the purpose of the PTO is not to try to get your invention or collect inventions. The whole purpose of the patent system is to foster advancement/development by giving inventors a governmentally sanctioned monopoly for a limited time (not 20 years, as your incorrectly state; more on that below). It’s a quid pro quo. You make public (via the patent document) what you have invented, so others might follow on your concepts and even build on them to make them better in the future, and the government gives you the right to exclude others from doing what you have invented (as defined by your claims) for a specified period of times. Thus, the PTO is trying to spread knowledge for the benefit of all. That is its raison d’ etre. (Again, see the Constitution.)
You’ve spend hundreds of hours writing arguments on three action responses
Frankly, if you’ve put that much time into the arguments in just three responses, you’ve wandered “into the weeds” far too deeply for the argument to succeed. You need to be able to explain to an examiner from a fundamental standpoint why what you’ve invented is different from what the examiner is relying on as prior art, or why the examiner’s logic is flawed, and there are well established ways to succeed in that. In twenty years of practice, I’ve had to resort to the Board of Appeals just twice. In all other cases, I’ve managed to secure allowance – usually as broadly as originally desired, but sometimes more narrowly in view of the prior art – or it was clear the Examiner’s point was valid – yes, they do, in fact, sometimes come up with very legitimate rejections – and with my advice the client decided to forego prosecuting the application further.
I contacted Mr. Smith to get a serial number to see for myself what happened in his storm chasers app’n. He told me that it wasn’t public and that giving me information he has submitted to the PTO would violate attorney-client privilege (as if printing copies of letters from your attorney in your book doesn’t!), but that if I wanted to see his horror experience I should buy his book. Well, I bought it. Here is an email I sent to him after reading just 23 pages:
Dear Mr. Smith,
I have only read through page 23 (Reason #2 not to file a patent) of your book so far and am dismayed at how much incorrect information and logically fallacious argument you have put forth in just those few pages. I will address your points (to that page) in turn.
Introduction:
You state that the examiner combined the claims from six references to support her assertion that she would be able to assemble your invention, but that none of the referenced prior art is made from corrugated plastic, fastens with 3M Dual Lock fasteners, has been LMI tested to 130 mph, use adhesive primer to fasten to the window frames and plastic panel, and had the commercial success your product has achieved. You then state that “commercial success is relevant in patent law as the PTO never wants to stand in the way of a popular product.” As for combining claims from the prior art, that is not what an examiner does. An examiner can combine the teachings of the prior art, but in general, the claims in the prior art references are not what are relevant to an allowability/patentability analysis.
On the other hand, the claims that are relevant to the analysis are the claims in your application. While you do not appear to have included them in your book, from the reprint of the third office action, it would appear that they are, for the most part, directed to a lightweight, durable and strong impact barrier system for protecting windows and doors against high wind storm damage consisting essentially of a translucent plastic panel with a front wall and a rear wall with a top side, a bottom side, a right side and a left side, and first, second, third, and fourth corner locations. The panel is adapted to fit over a window or a door, with interlocking, high-tensile-strength fasteners that hold the panel in place, and it includes a loop handle. As for the primary reference (Samford) on which the Examiner is relying, it does, in fact, disclose translucent storm panels, preferably made from inexpensive and durable metal and plastic materials, e.g., quarter inch thick fiberglass. Furthermore, the notes on the references indicate that the Samford and Gower shutters are bolted on. However, the 3M website (link to 3m.com) clearly states that the Dual Lock fasteners “are a fastening solution that can replace screws, bolts and rivets.” As for some of the other features, e.g., a weatherproof strap loop handle, while I understand your disbelief at the examiner relying on a sports toy reference and/or a boat lifeline reference for that, and while rejections can be overcome where the references the examiner is relying on are from “non-analogous art,” here, the features the examiner is relying on those references for are rather common features in many different fields, and she probably could have taken Official Notice of such common nature of the features, but she at least made the effort to show you by proof (other than just saying they are known features).
Regarding commercial success, strictly speaking, the PTO doesn’t care about the popularity of a product in determining whether to grant a patent. While commercial success IS secondary evidence that can be relied on to show that a claimed invention was not, in fact, obvious (contrary to an examiner’s assertion of obviousness), popularity does not, ab initio and for its own sake, enter into the patentability calculus. In other words, the examiner does not say “oh, this product (blackberries, for example) is used world-wide; it gets the gold star of patent approval; this product (wind-up toilet plungers, for example) has never seen the light of day; it goes back into the queue!”
lolz, or should I say (L)olz?
read Law as (L)aw
read “east” as “easy”
There’s an east reason to see why there are no movies on patent agents.
PA007, with license to walk, when you got your patent license, did you skip over a few parts of the Law, rules and MPEP about confidentiality of unpublished applications?
It should be easy to determine the serial number. Just get an examiner to do a UPAD search on claim language.
“And now for the ultimate blame the customer line”
I kno rite?
“Ya better be careful 6 – that shtt may have been common place under Dufas, but Kappos done say that aint right.”
Lulz, he’s entitled to his opinion, I’m entitled to the facts.
PS, don’t forget the line about the lawyer buddies.
There goes 6 again, practicin his opposite day creative word plays.
And now for the ultimate blame the customer line:
“Applicants, by pretty much everyone’s estimation, cause every problem there ever has been with the patent system”
Ya better be careful 6 – that shtt may have been common place under Dufas, but Kappos done say that aint right.
“That from the man who creates these problems.”
I have created no “problems”. Applicants, by pretty much everyone’s estimation, cause every problem there ever has been with the patent system, assisted by their lawlyer boddies. Without them, none of it would have happened.
>>his job is to scam people
I tell people up front that the PTO is filled with low life like you 6 and that getting a patent can be trying.
IANAE: OK clever boy. I didn’t see you answer my question about other alternatives/costs. Just wise cracking.
dont file a patent another thing that makes paatents worthless or of little value is limiting the scope of claims. This means that new startups cant get going because of pto allowed competition.Clearly the term patent patent needs to apply and be granted to new catigories of invention for full patent term or incentive to create is destroyed again. Not having the money from the first patent means invention black hole formations.