Comments on: Patent Office Delay and Inventors Representing Themselves http://www.ipwatchdog.com/2009/12/19/patent-office-delay-and-inventors-representing-themselves/id=7920/ Patents, Software Patents, Patent Applications & Patent Law Thu, 09 Feb 2012 07:58:49 +0000 hourly 1 By: steven http://www.ipwatchdog.com/2009/12/19/patent-office-delay-and-inventors-representing-themselves/id=7920/#comment-10066 steven Fri, 25 Dec 2009 23:25:44 +0000 http://www.ipwatchdog.com/?p=7920#comment-10066 I think in many cases inventors need IP lawyers but all IP representation is not all that it is cracked up to be, see our experiences below. I also do not agree that it is the USPTO examiner's role to tell an inventor that they should have representation. We had one examiner include similiar language in his first office action mainly just to beg us off pushing ahead - this patent was issued with minor changes after we argued and won most of his prior art citings. My partner and I have been granted two patents and have another 14 patent families in the application pipeline. We spent over $30,000 on a nationally known IP firm back in 2003 to get our first patent application filed. We did a majority of the leg work and much of the repackaging and did not feel like we received much value for the money spent. We decided to go through the office action/amendment process ourselves - turns our the claim set our lawyer wrote was very flawed -- lucky for us, the specification and drawings we generated allowed us to work with our examiner to amend our claim set and ultimately be granted a patent. The patent we were awared was strong enough to be purchased by a major software company. We then used another IP attorney for our next few patents - we wrote the patents, he would review, edit, and then draft the claim sets. It turns out, he did such a bad job on our claim sets, we have had to work very closely with our examiners to get an issued patent. By the time we found our current IP attorney, who is less of our lawyer but more of an advisor, we have evolved into very competent patent team. Our current lawyer has over 20 years experience, is a named partner in a Bay Area firm and he has said on numerous occasions that he would put our work up against any of his 3rd year patent lawyers. Every inventor is different and every situation is different. If we were forced to use a lawyer on all of our appications, instead of 14 families of patent applications still in the pipeline, we will have four. The best move we made was to shift the role that our IP lawyer played - it forced us to learn and improve, and in doing so, we gained a better understanding of our applications, that is serving us well during the office action process. BTW - I very much like your blog site and appreicate it greatly. I think in many cases inventors need IP lawyers but all IP representation is not all that it is cracked up to be, see our experiences below. I also do not agree that it is the USPTO examiner’s role to tell an inventor that they should have representation. We had one examiner include similiar language in his first office action mainly just to beg us off pushing ahead – this patent was issued with minor changes after we argued and won most of his prior art citings.
My partner and I have been granted two patents and have another 14 patent families in the application pipeline. We spent over $30,000 on a nationally known IP firm back in 2003 to get our first patent application filed. We did a majority of the leg work and much of the repackaging and did not feel like we received much value for the money spent. We decided to go through the office action/amendment process ourselves – turns our the claim set our lawyer wrote was very flawed — lucky for us, the specification and drawings we generated allowed us to work with our examiner to amend our claim set and ultimately be granted a patent. The patent we were awared was strong enough to be purchased by a major software company.
We then used another IP attorney for our next few patents – we wrote the patents, he would review, edit, and then draft the claim sets. It turns out, he did such a bad job on our claim sets, we have had to work very closely with our examiners to get an issued patent. By the time we found our current IP attorney, who is less of our lawyer but more of an advisor, we have evolved into very competent patent team. Our current lawyer has over 20 years experience, is a named partner in a Bay Area firm and he has said on numerous occasions that he would put our work up against any of his 3rd year patent lawyers.
Every inventor is different and every situation is different. If we were forced to use a lawyer on all of our appications, instead of 14 families of patent applications still in the pipeline, we will have four. The best move we made was to shift the role that our IP lawyer played – it forced us to learn and improve, and in doing so, we gained a better understanding of our applications, that is serving us well during the office action process.

BTW – I very much like your blog site and appreicate it greatly.

]]> By: Just visiting http://www.ipwatchdog.com/2009/12/19/patent-office-delay-and-inventors-representing-themselves/id=7920/#comment-9999 Just visiting Mon, 21 Dec 2009 04:28:37 +0000 http://www.ipwatchdog.com/?p=7920#comment-9999 Assigned June 25, 2009 and issued December 15, 2009. To me, that is an Examiner that got an incredibly easy two counts. Actually, besides the "pro se" angle, this is a great example of the USPTO just not caring about doing a god job. A good examiner should have strong implored the inventor to get professional assistance. That aside, the claim should have been rejected under the 2nd paragraph of 35 USC 112 based upon some awful claim language. Also, it would have been a bear to write, there is probably a 103 rejection to make. What is scary is that this examiner has over 50 issued patents to her name. She should have know better. Assigned June 25, 2009 and issued December 15, 2009. To me, that is an Examiner that got an incredibly easy two counts.

Actually, besides the “pro se” angle, this is a great example of the USPTO just not caring about doing a god job. A good examiner should have strong implored the inventor to get professional assistance. That aside, the claim should have been rejected under the 2nd paragraph of 35 USC 112 based upon some awful claim language.

Also, it would have been a bear to write, there is probably a 103 rejection to make.

What is scary is that this examiner has over 50 issued patents to her name. She should have know better.

]]> By: USPTO Delay and Inventors Representing Themselves | IPWatchdog.com … | China Law | China's Law http://www.ipwatchdog.com/2009/12/19/patent-office-delay-and-inventors-representing-themselves/id=7920/#comment-9989 USPTO Delay and Inventors Representing Themselves | IPWatchdog.com … | China Law | China's Law Sun, 20 Dec 2009 22:37:25 +0000 http://www.ipwatchdog.com/?p=7920#comment-9989 [...] View post: USPTO Delay and Inventors Representing Themselves | IPWatchdog.com … [...] [...] View post: USPTO Delay and Inventors Representing Themselves | IPWatchdog.com … [...]

]]> By: Rob Cashman http://www.ipwatchdog.com/2009/12/19/patent-office-delay-and-inventors-representing-themselves/id=7920/#comment-9983 Rob Cashman Sun, 20 Dec 2009 14:30:58 +0000 http://www.ipwatchdog.com/?p=7920#comment-9983 I'm so sorry. I saw the claim and after reading the first few lines I already felt bad for the inventor. Clarity is certainly a virtue, but not here. Sorry for the plug, but my firm, Cashman IP Law, will be opening its doors at the end of April 2010; I'd be willing to help people like this fix these kinds of mistakes, pro se or not. -RZC I’m so sorry. I saw the claim and after reading the first few lines I already felt bad for the inventor. Clarity is certainly a virtue, but not here. Sorry for the plug, but my firm, Cashman IP Law, will be opening its doors at the end of April 2010; I’d be willing to help people like this fix these kinds of mistakes, pro se or not. -RZC

]]> By: New Hire http://www.ipwatchdog.com/2009/12/19/patent-office-delay-and-inventors-representing-themselves/id=7920/#comment-9977 New Hire Sat, 19 Dec 2009 22:46:32 +0000 http://www.ipwatchdog.com/?p=7920#comment-9977 It's office policy for examiners to recommend that pro se apps get representation; there is a standard form paragraph for situations like this. Unfortunately, there's not much incentive for us to do so. I wonder if it might help if the office gave out an extra examining hour or two for an examiner to call up the applicant, explain the situation, and advise these pro se guys to get help. It’s office policy for examiners to recommend that pro se apps get representation; there is a standard form paragraph for situations like this. Unfortunately, there’s not much incentive for us to do so. I wonder if it might help if the office gave out an extra examining hour or two for an examiner to call up the applicant, explain the situation, and advise these pro se guys to get help.

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