Between the legacy issue of bad patents, patent auctions and the many who purchase patents, what has started to happen is that the patent system rewards those who have the finances and ability to game the system. But the problem is extraordinarily complex. What is clear, however, is that the enforcement of bad patents is a problem within the patent and innovation industry.
But at the same time it would really be GREAT if the media and anti-patent community would get a clue and understand that the problem with bad patents is largely a legacy issue. Those that say that the United States Patent and Trademark Office continues to hand out dubious patents like candy are flat wrong. The bad patents that we witness being used in unsavory shake-downs have not been granted over the last few years, but rather were granted many years ago, under a different patent regime and when there was little findable prior art for patent examiners to use.
Those that pretend that bad patents issue today by the dozen and for a dime are living in a fantasy world that does not approximate reality. Yet the misinformation continues, undaunted by reality. So if reality doesn’t support the mountains of misinformation about the patent system and how it operates today, what is going on?
WASHINGTON — The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced today its proposal to update the USPTO Code of Professional Responsibility to conform to the Model Rules of Professional Conduct of the American Bar Association (ABA), versions of which have been adopted by 49 states and the District of Columbia. The USPTO is seeking public comments on the proposal for a period of 60 days, ending December 17, 2012.
This proposed rule package adopts most ABA provisions wholesale or with minor revisions and codifies many professional responsibility obligations that already apply to the practice of law. Specifically, the proposed rules will streamline practitioners’ professional responsibility obligations, bringing USPTO obligations in line with most practitioners’ state bar requirements. The package also proposes to eliminate the annual practitioner maintenance fee.
Lately I have been getting a lot of inquiries again from inventors who are interested in contingency fee representation. There is no such thing as contingency representation for purpose of preparing, filing and ultimately obtaining a patent. Patent attorneys and agents just don’t take contingency clients when the matter is patent procurement.
I write on this topic with some frequency, the last time being the spring of 2011. Please don’t take offense, this is a “tough love” article that may come across as a lecture. I have always believed that the overwhelming majority of inventors want to hear it straight and are looking for a road-map to get from point A to point B. The thing I preach all the time, and the theme of this article, is understanding the industry. The more you understand about what you should do, when you should do it and the economic realities facing the various players you will come in contact with the better off you will be to safely and successfully navigate the difficult waters of going from invention to money.
Every so often I hear something about how it is unfair or unjust that patent attorneys charge so much money for the services they provide. When I hear that I always chuckle. It seems that universally people believe that whatever a patent attorney charges goes straight into his or her pocket. If only that were true! On Wednesday I published an article titled Patent Strategy: Discovering Crucial Patent Examiner Data. As the comments to the article progressed on topic for the most part, things started to get a little off topic just a bit, which is what is prompting this article.
In Patent Strategy I explained that a reasonable quote for an office action response is $2,000. Certainly it can be more depending upon the technology, but if you were going to poll patent practitioners from patent attorneys to patent agents I suspect you would come out with something close to a $2,000 average. This prompted one patent examiner to comment: “You said in this article that practitioners make $2,000 per response on average. How much do examiners make per response? Probably a fourth or a third of that. I mean I try to do the best job I can but do you really expect all examiners who get paid a fourth or a third of what you make to perform at the level that you do?”
The United States Patent Office is now offering the patent bar examination in electronic format, and that means that the way you study for the exam needs to change. In the past test takers were permitted to bring in with them any materials they wanted except for old exam questions. The ability to bring practically anything into the examination lead to people tabbing the Manual of Patent Examining Procedures, creating detailed and easy to use outlines, and bringing easy to follow flow charts and tables. Gone are these days, but when you do take the examination you will be provided with an electronic copy of the Manual of Patent Examining Procedures, so at least a part of your study needs to be centered around familiarizing yourself with search techniques and strategies that have a chance of success come exam day.
I have been teaching the PLI Patent Bar Review Course since March 2000, so I know a thing or two about how to help students pass the exam. Recently I published 5 Tips for Passing the Patent Bar Exam. What follows is a sequel to that article; more specifically an additional 5 tips for passing. If you are inclined to implement these tips and strategies be sure to integrate them into your practice and not for the first time on exam day.
In order to become a patent attorney or patent agent and represent inventors or corporations before the United States Patent and Trademark Office you first need the proper scientific training and then you need to take and pass the Patent Bar Exam, sometimes referred to as the Patent Agents Exam or Patent Registration Exam. The test, which is administered via computer, is an open book exam, but the Manual of Patent Examining Procedures (MPEP) is like no other book you have ever seen. It is sometimes random and haphazard, it is redundant, and it is exceptionally boring. Nevertheless, the MPEP can be your life line. The biggest mistake that anyone could make is that an open book exam is not terribly difficult. Open book exams are more difficult than closed book exams because the tester can ask more pointed and specific questions than could reasonably be asked in a closed book exam. Familiarity with the MPEP is essential to success.
Since March of 2000, I have been a principal lecturer in the PLI Patent Bar Review Course. This means I have devoted a good portion of my professional life to working with students interested in passing the Patent Bar Exam. As a result, I have come up with a number of tips that should help you develop a personal strategy for tackling the Patent Exam. Do remember though that any strategies you are going to employ should not be first unveiled on exam day. Weave these and any other strategies you want to develop into your exam preparation for maximum success on exam day.
Louis Foreman, the producer of the Emmy Award winning PBS television show Everyday Edisons and the publisher of Inventors Digest, announced in April 2011 that he was launching of a $25 million Innovation Fund. Phase 1 of the search for inventions for the Fund to invest in was completed in mid-June 2011. Phase 2 of the search for inventions and ideas has just begun and will run through Monday, September 12th, 2011.
“The Fund is off to a great start and we have received some very innovative technologies as part of the first wave,” Foreman said. “I am amazed at the creativity and ingenuity. It just reinforces our original premise that everyone has a great idea, but most people don’t follow through. The Fund has become a catalyst to submit these ideas and see if they have commercial viability.” The proceeds of the Fund which will be invested by Edison Nation to bring innovations to market. Inventors who have their inventions or ideas selected will share in any profits with Edison Nation.
I am currently in San Francisco, California, teaching the PLI patent bar review course. Our next live stop will be Boston from July 11-15, and then on to Chicago from August 2-6.
Wherever we go we always get large numbers of individuals who are currently in law school, have recently graduated law school or are engineers or scientists looking to change careers. During one of the breaks between sessions on day 1 here in San Francisco one of the students taking the course asked me a question that we receive quite a lot, which is: Once I pass the exam how do I learn to actually do this? Like so many things in life experience is the best teacher, but finding a job without some experience can be extremely difficult.
As I started discussing some ways to learn the craft I noticed a growing number of students eavesdropping . Soon there were a handful of students in the conversation and still more in their seats listening in. After hours on day 2 of the course I stuck around and gave some advice and answered questions from those who are new to the industry and looking to learn the craft. As a result of that discussion, and many other similar conversations over the years, I thought I would put together a top 10 list of things that new patent practitioners should know.
It is important for inventors to understand that there is reluctance among some patent attorneys to take on “independent inventors” as clients. Part of the problem is that some independent inventors take up an extraordinary amount of time and rarely convert into clients. Even if they do convert into clients many want to pay a low rate for certain agreed representation and are upset when more is not done by the attorney. I have even heard inventors openly complain that their patent attorney wants to charge them every time they call. It is important to remember, however, that the only thing an attorney has to sell is time; whether that be to perform legal services or give advice. Giving time away for free on a routine basis is a recipe for business disaster for an attorney.
With all this in mind, how does a serious inventor find the help they need and a reputable, experienced patent attorney? Inventors who want a reputable and experienced patent attorney will do themselves a great favor if they try and understand the business realities facing the patent attorney. There are only so many hours in a day to work, and spending a lot of with those who are not likely to turn into clients, or good clients, is not typically a winning business strategy. Therefore, you want to present from the outset as someone who is serious. Keeping this in mind will pay dividends as you seek out a patent attorney you are comfortable with, who you trust and is able to collaborate with you to form a good and prosperous working relationship.
In order to become a patent practitioner one must take and pass a federal examination administered by the United States Patent and Trademark Office. What sometimes gets missed by some individuals is that you do not need to graduate law school in order to take the patent bar examination. Anyone with a technical degree is qualified to sit for the Exam, and those without the requisite technical degree can still qualify to take the patent exam if they have enough science credits in college courses; the number of required credits ranging between 24 to 40 depending on the category B path for which you qualify. See Does My Degree Qualify Me to Take the Patent Bar?
Those who successfully pass the patent registration examination and who also successfully clear the background character and fitness check are able to represent individuals and companies who seek to obtain a patent. If you are an attorney admitted to practice when you pass you become a patent attorney, if you are not already an attorney you become a patent agent. If you are a patent agent and then subsequently become an attorney you essentially trade in your “agent’s license” and become a patent attorney. This is the path that many in law school pursue, giving them the ability to put on their resume when looking for jobs the fact that they are already a patent agent. Still others in the science field who have no plans to go to law school become patent agents and can enjoy a good career working for a law firm or on their own helping inventors.