The 65 Year Old Integrated Radio Patent Strategy

By Gene Quinn
April 23, 2009

Yesterday I wrote about how the growing backlog of applications at the United States Patent and Trademark Office has caused the average time a patent application remains pending to rise to ridiculous levels. Some have contacted me to suggest that I am dead wrong to imply that the problem is getting worse given that the number of patent application is decreasing this year. If only that were true! Even if we have the anticipated 5% decline in the number of applications this year that would mean there will be 470,340 applications filed in fiscal year 2009, which is still more applications than were filed in fiscal year 2007!

Ever since the Reagan Administration bonuses have been available for examiners who achieve 130%, 120% and 110% of production goals. The introduction of this bonus program was how the leaders of the Reagan USPTO were able to incentivize the examiners into rectifying the inordinate backlog created during the Carter Administration. It has remained ever since, but because quality review punishes errors, and errors take away from any bonus that would be due, few if any examiners are trying to reach those levels. Why would they or should they if you reach those levels only to have quality review say you made errors that will prevent you from getting a bonus? So work, work, work and still not get a bonus?

It is easy to understand the backlog when you understand quality review, the bonus program and the human relations problems plaguing the Patent Office. What is particularly disturbing is that so-called quality review is not even conducted by those knowledgeable about the technical area relating to the invention. Add this to the fact that the USPTO is facing an enormous budget crisis and cannot hire any new examiners, but are still losing examiners to retirement and other forms of attrition, and it is easy to see that a single year dip of 25,000 applications will have no affect on the backlog, or pendency. In fact, we can expect it to only get worse when FY 2009 results are announced.

What all of this means is that patent attorneys and patent agents must come up with strategies to force the Patent Office to expedite applications within their own rules? The Patent Office would prefer that we rely on the Accelerated Examination program, but in virtually all instances that is not going to result in satisfactory results. In some cases it might work, but the requirements are just too onerous to be an across the board strategy. Nevertheless, we need some kind of strategy because a patent portfolio held hostage by the Patent Office is worth far less than a patent family that has at least a single patent already issued. The ability to get at least one patent issued quickly is critical for independent inventors, entrepreneurs, small business and start-ups who rely on investors to infuse capital. To get the influx of capital assets need to be obtained, and to be useful they must be obtained before the underlying technology is obsolete, otherwise you are always playing catch-up, racing to create a new technology or industry and then held hostage while the Patent Office sits without granting a patent and creating an asset until the technology is no longer viable. This is simply madness!

What I propose is called the 65 Year Old Integrated Radio Strategy. There are two situations in which you can accelerate a patent application out of order without having to provide the Patent Office with an onerous Examination Support Document (ESD). If the inventor is ill and there is reason to believe he or she will not be able to participate in the prosecution unless it occurs rapidly the application is advanced out of turn to the front of the line. The other situation is when the applicant is over 65 years old. So what every small business or start-up needs is at least one employee who is 65 years or older. This senior employee will need to be an inventor on each and every patent application you or your company files. But how can one single employee contribute to the conception of at least one claim on all applications? Just instruct this senior employee to always suggest that a claim covering the invention plus an integrated radio be included in the application. Then petition to advance the application out of order and to the front of the line.

But what is the magic of an integrated radio? None as far as I can tell, but over the years the United States Patent Office has issued numerous patents where the invention is some ordinary, everyday object plus an integrated radio. Therefore, there are all kinds of precedent (i.e., already issued patents) that conclusively prove that the integration of a radio into some object that has nothing to do with a radio is in fact an inventive contribution that can be covered by a patent application. For 10 examples of such issued patents see the list below.

  1. Invention of folding chair with portable stereo system
  2. Beach chair with integral audio player
  3. Beach chair with integral audio player
  4. Hairbrush with integral radio receiver
  5. Hand-held hair dryer having housed radio receiver
  6. Radio equipped umbrella
  7. Pillow radio apparatus
  8. Audio pillow with sun shield
  9. Pillow radio apparatus
  10. Stereo sound pillow and method of use

If you try this strategy, which I have run by a few patent attorneys and some former patent examiners, you are likely going to get a restriction from the patent examiner, who will force you to split the underlying invention from the invention + integrated radio. By the time this happens, if it does happen, both applications will be in prosecution, having already been picked up by an examiner. With both applications having the same specification the patent examiner is likely to advance them forward simultaneously, thereby receiving credit for two applications for the time spent on one. This is good for the examiner and good for you as the applicant because you will get the application considered by the examiner quicker and probably issued quicker. So everyone wins, except the Patent Office.

To be perfectly honest, I am not really worried about what will happen to the Patent Office if everyone follows the 65 year old integrated radio strategy. If they get overwhelmed by everyone having a right to be advanced out of turn, then good! The political leaders within the Patent Office have practically destroyed our patent system and it is about time that we force it to be fixed. In the meantime, if we can help some clients get quicker patents and actually get some funding in order to be able to hire American workers for American jobs, then all the better!

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 9 Comments comments.

  1. 6 April 23, 2009 6:03 pm

    Expect these petitions to start getting denied if this were to catch on Gene. The office wouldn’t be overwhelmed, they’d simply get rid of the “right” to speedy examination for old guys.

    “So everyone wins, except the Patent Office.”

    And except for the other thousands of people ahead of you. You aren’t screwing the office over Gene, you’re screwing your fellow inventors over.

    “To be perfectly honest, I am not really worried about what will happen to the Patent Office if everyone follows the 65 year old integrated radio strategy. ”

    So are you worried about the people who aren’t dishonest enough to follow the strat? What about the ones who can’t afford to hire a 65 yr old to do nothing but be an inventor?

    “To get the influx of capital assets need to be obtained, and to be useful they must be obtained before the underlying technology is obsolete, otherwise you are always playing catch-up, racing to create a new technology or industry and then held hostage while the Patent Office sits without granting a patent and creating an asset until the technology is no longer viable. ”

    The office is not “sitting without granting a patent” they are looking at other people’s patents. Gene, seriously dude, you need to check your perception of what is actually going on here.

    If you start to abuse the 65 yr old rule then expect to lose it soon enough. When will you attorneys learn? Stop “drafting strategies”, aka scheming, to screw over other people. Seriously, I wonder what you’re like at the bank waiting in line. Here is Gene, waiting in line at the bank thinking “gee this line is entirely too long, I have errands to run, this is madness, how can I get done here faster?”. Gene: Look, over there! It’s superman! Person in line ahead of Gene: Where? Gene: *skips line* I don’t know, I could have sworn I saw him, look again! Person now behind Gene: Hey, wasn’t I ahead of you? Gene: That was before you left line to look for superman!

    I should add that when I get a special petition case I’m not especially enthused. If I restrict a radio from a pillow that was blatantly added on for no reason I’ll be sure to make sure the inventorship on the application still includes the 65 yr old.

    There also seems to be one small problem, if you get the special status, and then get the case restricted such that the inventorship changes, wouldn’t the case lose the special status? I don’t know Gene, but I’ll be sure to forward this to the attorney discipline dept. for review should I hear anything further on the matter.

    Let’s discuss the phrase “almost criminal” for a moment shall we Gene?

    “The political leaders within the Patent Office have practically destroyed our patent system and it is about time that we force it to be fixed. ”

    /facepalm

    Gene, they’ve been DESPERATELY PATCHING your patent system since the 60’s-90’s. Production requirements? PATCH. Item to item matching? PATCH. Qaulity review? PATCH. Huge no’s hired? PATCH. Just think about the pendency sans production req’s. Think about that one Gene. Think about short form OA’s Gene, think about how lovely a time you’d have writing responses to those. Although I will agree with you that more could have been done over the years, this is RL, and there are budgets and many concerns. But you’re right, those concerned should for reform. But through the proper channels for goodness sakes. Go to congress, go to the courts, etc. etc. Surely there is some sort of law you could sue under for unlawful delay in administrative action. You’re a lawyer, sort it out. In the mean time you could just content yourself with knowing that the entire idea of the patent office filtering the good from the bad was an idea from yesteryear when inventions were few and far between, the technical knowledge required to operate on each app coming through was minimal, and the references on a given subject were also few and far between.

    As an aside, it really must make you feel good inside by having created an artificial sense of “control” over the utter ruin wrought by the downturn by merely throwing all blame on the patent office! And musing that if only we could have great patents in a jiffy the downturn would be alleviated! Ridiculous. Outrageous even. Let me give you some advice. Just start going to church and pray for a miracle, that will likely have a more profound affect.

    This entire post was childish, at best, and it is embarrassing to even have addressed it.

  2. Gene Quinn April 23, 2009 8:20 pm

    6-

    The fact that you don’t like what I had to write makes me know this was a GREAT post! Thanks for the lofty praise. I would only worry if you were to ever agree with me!

    -Gene

  3. 6 April 24, 2009 2:44 pm

    Me not liking it has little to do with it Gene, the rest of the world not liking it might should concern you. If that makes a great post in your book then fine with me, people can draw their own conclusions from that.

    Seriously though, playing the person who takes a ridiculous idea and tries to run with it doesn’t suit you Gene. Looking for real answers to the problems at hand would likely suit you better.

  4. Gene Quinn April 24, 2009 3:20 pm

    “Looking for real answers to the problems at hand would likely suit you better.”

    I agree completely. Unfortunately, the PTO is not interested in real answers or real input. That means that patent attorneys and agents need to represent our clients to help them. We are ethically responsible to zealously advocate for clients, and since the Patent Office have given us openings we need to take them. If that means ridiculous ideas that benefit clients offend the PTO then the PTO should fix the rules and close the loopholes.

    -Gene

  5. 6 April 24, 2009 5:11 pm

    “since the Patent Office have given us openings we need to take them.”

    That’s not an opening any more than a bank not making you stand in single file locked on either side by gaurd ropes 1 ft apart while waiting is an opening.

    “If that means ridiculous ideas that benefit clients offend the PTO then the PTO should fix the rules and close the loopholes. ”

    First off, the office is not “offended” by any ethical misconduct. Second, you also have an ethical duty as an officer of the court to not pull bs against the spirit of the rules. Put this nonsense before a judge/disciple officer and argue that mess with a straight face.

    If you can come up with a magic bullet or etc. then I can assure you that if there ever was a director interested in ideas it’s the guy in there now. Get your ideas in sooner rather than later. You already got the accel examination, and that was pretty generous.

    That’s my final word on this topic.

  6. Gene Quinn April 24, 2009 5:42 pm

    6-

    I am not surprised you don’t understand things. It is not unethical to follow the rules. If you follow the rules there is absolutely no way you can be engaging in unethical conduct, regardless of what Harry Moatz may think to the contrary.

    In so far as “spirit of the rules” there is no such ethical requirement. The rules are there to be followed. The fact that the PTO is forcing attorneys to use the rules to the fullest extent possible in order to represent clients is a PTO problem, not an ethical problem for attorneys. It is so typical for folks inside the PTO to think that attorneys following the law is unethical. If you don’t like it, then change it. Or better yet, stop issuing patents on an object that has nothing to do with a radio simply getting a radio integrated. You see, you are focusing on the wrong stuff, which is not surprising.

    You actually believe Doll is interested in ideas? Wow… you must be really low on the totem pole then.

    Accelerate examination is not generous. It shows just how stupid the leaders of the Office are if they ever for a moment thought anyone would use it. Examination Support Documents are simply ridiculous. Why would I want to do more work to get a quick patent that is completely worthless do to the admissions I had to make? Get real!

  7. Bill Ralston April 27, 2009 11:41 am

    I’ve heard a similar strategy suggested before. The flaw I see is that the 65 year old is arguably not an inventor and the resulting patent could be invalid for incorrect inventorship. The argument is this: the 65 year old did not conceive of the integrated radio – it was who ever instructed him that is the actual inventor. Better strategy – hire a 65 year old consultant with expertise in the relevant technology to participate in the patent preparation activity and brainstorm on possible additional features to add into the claims. Might also result in a stronger patent.

  8. 6 April 27, 2009 1:39 pm

    “Better strategy – hire a 65 year old consultant with expertise in the relevant technology to participate in the patent preparation activity and brainstorm on possible additional features to add into the claims. Might also result in a stronger patent.”

    That is a possible strategy and is not objectionable.

  9. Gene Quinn April 27, 2009 3:00 pm

    Bill-

    I agree that there is an argument that the patent could be invalid for incorrect inventorship, but as far as I can tell patents are just not held invalid for incorrect inventorship even in situations where there has been questionable activity that could be characterized as deceitful. I do agree with your better strategy. I think a lot could be gained by a pair of wise eyes. One thing I have always questioned is getting rid of senior folks in favor of younger, cheaper talent. That is not a strategy, it is a mistake.

    -Gene