What Every Patent Attorney Should Teach Their Entrepreneur-Inventor Clients About the Patent Process

By Eric Giler
October 26, 2019

“Inventors believe that their invention is unique and that there never has been anything like it before. Patent attorneys know that this isn’t necessarily the case, so take some time to explain the application process and level-set with first time filers.”

https://depositphotos.com/68030595/stock-photo-diagram-of-innovation-process.htmlNavigating the patent process can often be challenging and filled with subtleties and nuances for the entrepreneur-inventor, especially for first-time filers. Having a trusted patent attorney who can not only help guide you through the process, but help inventors learn about it is truly invaluable to new entrepreneur-inventors.

However, for many inventors, understanding what patent attorneys do and why they do it does not always come as second nature.

Over the course of my career as both an inventor and entrepreneur, I’ve had the pleasure of working with many excellent patent attorneys on my companies’ patent filings. The best attorneys I’ve worked with have played an integral role in educating me and my colleagues on the patenting process, what makes a good specification and claim and how infringement lawsuits work should we ever pursue them. I’ve also learned that inventors and patent attorneys often have different visions for what the final patent will look like.

As someone who’s been through the process a few times now, here are the four things patent attorneys taught me that I think would be useful to entrepreneur-inventor clients:

Disclose More

There’s a tendency among us inventors to keep things close to the vest. Telling the world how to make your invention isn’t always easy, especially when the inventor has been keeping this under wraps for some time.

This can be dangerous, especially while attorneys are trying to stick to the Best Mode Requirement. Many inventors are unfamiliar with this requirement and want to withhold information to keep others from recreating their invention. However, they often forget that a patent provides the right to exclude others from making, using or selling their invention.

Make sure to take the time to explain to them what the requirement entails. In order to obtain a patent, an inventor must disclose any preferences relating to the invention in as much detail as possible. While there are no real consequences to not disclosing preferences, patent attorneys should warn that not doing so is a mistake. Since the preference would be listed somewhere on the patent, the inventor would own that preference. It would be very upsetting to your client should someone else come along and claim that preference. Encourage them to disclose more, not less, for a better-quality patent.

Keep “A Person Ordinarily Skilled in the Art” in Mind

Sometimes entrepreneurs don’t understand that to get a patent, the invention needs to not only have never existed before, but it also has to not be obvious. In my experience, attorneys who have worked with IP have a great understanding of what is and is not obvious by the way of the United States Patent and Trademark Office (USPTO), whereas inventors do not necessarily have this same level of understanding.

A person having ordinary skill in the art (PHOSITA) can be a difficult concept for inventors to understand, not only because it’s hypothetical, but also because inventors can be more than ordinarily skilled in their industry. When the USPTO looks at the inventive steps needed to successfully obtain a patent, they’re going to examine the invention to see if it is obvious, or if a PHOSITA could have come up with the idea.

When an inventor understands what is and isn’t considered obvious, you can then begin developing a specification and claim(s) with them that will pass the PHOSITA test.

Be Realistic

According to the USPTO, only half of all patent applications submitted for review are granted protections. In addition, a Yale University study revealed that a non-final rejection is given to more than 86% of newly filed patent applications—reducing the likelihood of receiving a patent on the first try.

Inventors believe that their invention is unique and that there never has been anything like it before. Patent attorneys know that this isn’t necessarily the case, so take some time to explain the application process and level-set with first time filers on the cost, time and number of revisions that are likely to occur.

Explain your viewpoint, background and expertise in the area to justify your recommendations. Before working with patent attorneys, I didn’t know that many are actually engineers or scientists by trade who went on to study law. Knowing that the lawyers I worked with had a strong technical understanding helped reassure me that they not only knew what they were doing and were making correct recommendations, but also that they wanted to make the most of my inventions, just like I did.

Seek New Markets (Where it Makes Sense)

While level-setting with clients is important, it’s also important to help clients expand their options where you see value. We look to patent attorneys as experts, and advice that would ultimately help businesses add value would not go unnoticed.

Encourage clients to file abroad in markets where you and your client see fit. While not every country will be a great option for every client, some high growth markets, like China, where IP theft is common and technology is rapidly developing, might make sense. Many clients may be thinking about expanding overseas or have their products being made in China. Since China is the world’s factory, inventors should consider protecting their inventions there. In addition to China, consider Europe, where you can file as one grouping, as well as the other BRIC nations (Brazil, India, Russia) where economies are also developing quickly.

The Apple v. Qualcomm lawsuit from 2018 is a perfect example of just how valuable international IP can be to clients, and the potential it holds for U.S. companies wanting to sue U.S. companies to get an injunction in these high-growth markets. In the United States, infringement cases often result in damages being rewarded to the winner, but in markets like China, injunctions are widely given if infringement has occurred, unlike the U.S. Ultimately, injunctions can be incredibly valuable to clients, since they can effectively stop the infringer from selling or making their product, giving the client back missing profits and market share.

IP protections are an essential part of any business’ growth plans, and every entrepreneur-inventor should know it. By educating clients on processes needed to get a patent and setting realistic expectations, patent attorneys can be an invaluable resource to clients when it comes to protecting IP. Giving first time filers pieces of meaningful advice will earn you their trust and help you build your relationship.

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The Author

Eric Giler

Eric Giler is CEO of Ciprun Global, overseeing the company’s business strategy, growth and operations. An inventor and entrepreneur himself, Eric is passionate about identifying solutions to maximize business potential—such as taking on new markets armed with international IP protection.

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 29 Comments comments. Join the discussion.

  1. Pro Say October 26, 2019 7:00 pm

    As Gene’s many fine articles directed to this and related patenting matters have provided for many years now, excellent advice here Eric.

    That said, given the current endemic, unconstitutional Mayo / Alice Section 101 / eligibility analysis — and even worse the widespread misapplication of these two and related cases — when client’s inventions are or involve a process, machine, manufacture, or composition of matter (which all inventions do), the odds are high that even if the Patent Office issues them a patent, they will likely never be able to license it to anyone for anything.

    That their invention, if useful and valuable, will be stolen by any number of American and foreign companies.

    Meaning that if you attempt to build your invention and bring it to market yourself in the U.S., these patent pirates will steal you blind.

    Oh, but wait, the inventors will protest:

    “Under U.S.C. 35 Section 101, doesn’t America allow patents on processes, machines, manufactures, and compositions of matter?!”

    At this point, you need to give them both the bad and the good news:

    “The bad news is that your invention is no longer welcome in America.”

    “The good news is that your invention will be welcomed with open arms in most other countries, including throughout Europe and in China.”

    And then you will proceed to tell them how you’re going to file in these other countries, because filing in America — which used to be the world’s innovation leader — would be a waste of your time and money.

  2. Pro Say October 26, 2019 7:14 pm

    p.s. Since the unconstitutional 2006 eBay decision, “a patent provides the right to exclude others from making, using or selling their invention.” is a very bad joke — and in the huge majority of cases — an outright lie as well.

    Unless they want to risk sanctions, client suits, or worse, attorney’s must not make such representations to their entrepreneur – inventor clients.

  3. Josh Malone October 26, 2019 10:25 pm

    5. It is important to save up $10-20M to enforce the patents and defend the PTAB invalidity attacks.

    6. Inventors must garner political influence by making friends with the PTAB judges and supporting the Presidential candidate that wins the next election.

    It’s not easy being an inventor in the USA….

  4. Paul Morinville October 27, 2019 1:36 am

    Patent in China… not the US. If you patent in the US, you will get PTAB’d. The PTAB will likely invalidate your patent and your patent will be damaged in all other countries. Then you will be forced to fight an unjust US invalidation overseas. The US patent system should be abandoned altogether for this reason.

  5. Jimmy October 27, 2019 11:39 am

    One of the biggest surprise for me as an independent inventory that my attorney “forgot” to mention was that the USPTO can combine as many prior art together to cover my invention. I’m pretty sure anyone could combine 6-8 prior art to cover just about any/all patents that exist or applied for (as well as the USPTO seem to overlook that ALL items much be covered in the prior arts)

  6. Paul Morinville October 27, 2019 12:58 pm

    Pro say, “filing in America — which used to be the world’s innovation leader — would be a waste of your time and money.”

    It is worse than that. US patents will actually harm your patents overseas. Since there is no standing, if you sue an infringer on your overseas patent, you will get PTAB’d on your US patent. If (when) the PTAB kills it, infringers will not settle overseas until after a validity challenge overseas. The foreign court will be biased to invalidate due to the US invalidation.

    The right answer is to file overseas but not in the US.

  7. J. C. Cooper October 27, 2019 2:29 pm

    Eric,

    Thanks for the excellent article. As Pro Say points out at 1, yours is another fine article for this website. An important distinction that I see is that you are an entrepreneur and manage a company. Many of the excellent patent attorneys and agents I have worked with over the years have great patent related skills, but have never experienced a sales call, product delays, happy and unhappy customers they have never met, return on investment discussions, and yes, even meeting payroll. Your viewpoint from the other side of the conference room table is refreshing and highly pertinent.

  8. Peter Botherway October 27, 2019 4:06 pm

    My question regarding IP protection is, in this day of 3D prototyping technology and the Internet, where you can inexpensively create your product in a “tangible form of expression” and create a website and advertise it on the Internet, where you can effectively market and sell your product in every country in the world, why can an inventor not secure international IP protection via copyright, similarly to how a songwriter, author, artist, architect, engineer can do for their creative works. Here is a link to an article outlining the issue in more detail: https://www.box4blox.com/box4blox-news-and-reviews/copyright-versus-patent/

  9. Bemused October 27, 2019 4:12 pm

    Josh@3: You forgot to add:

    7. Become golfing buddies with Taranto, Reyna, Prost, et al because its the only way your patent and/or a jury finding in your favor will survive an appeal at the CAFC.

  10. angry dude October 27, 2019 9:21 pm

    “Just go fishing, dude”

    btw, most US patent attorneys will soon go fishing too

  11. Benny October 28, 2019 4:25 am

    Paul M, it is actually cheaper and simpler to invalidate a patent in China or the EU than to go through the PTAB process.

  12. angry dude October 28, 2019 9:14 am

    Paul Morinville @6

    I didn’t realize it’s that bad !
    It is actually worse than my most dire predictions from years ago…
    It’s starting to sound like a high treason crime against the nation by corrupt DC critters

  13. Paul Morinville October 28, 2019 9:20 am

    Benny. Don’t be silly. You speak of what you do not understand. Yes us costs less, is faster and is simpler. But they only invalidate about 14%. In the US they invalidate 84%. And they don’t allow serial challenges.

  14. TFCFM October 28, 2019 10:00 am

    I would add two bits to the “Disclose More” section:

    1) Keep in mind, inventors, that what you are entitled to claim corresponds to what you disclose. If you want to claim broadly, then disclose (specifically describe and enable) EQUALLY broadly. Keep in mind the maxim of Brenner v. Manson: “A patent is not a hunting license.”

    2) Regarding the best mode requirement, it may look like an ’empty letter’ now, but don’t bet the farm on it remaining that way. The statute continues to require disclosure of one’s best mode (however, NOT necessarily identified as a “preference,” as the article suggests — just disclosure). Ignore the statute at your peril. The smart money is on the best mode requirement someday coming back to bite patentees who flout it.

  15. angry dude October 28, 2019 10:57 am

    TFCFM @14

    “The smart money is on the best mode requirement”

    Dude,

    Didn’t you just argue for reduced disclosure requirements for “computer implemented” inventions (aka “software”)

    There is a saying:
    “Take the cross off your neck or put your underwear pants back on”

    For Christ sake, when will you stop lying and misrepresenting basic truth ?

  16. Anon October 28, 2019 1:11 pm

    TFCFM,

    Your point one is certainly true (and sage advice).

    Your point two interests me — in part because the “requirement” was so effectively neutered in the AIA (and I could not figure out then why Congress was doing as it was doing).

    Near as I could tell (given the other historical transpirings), the actions of Congress were tied to a “growing protection” of Trade Secrets.

    As has been stated in other contexts (a right with no power to enforce is hardly a right at all), a requirement made toothless to enforce is hardly a requirement at all.

    Can the law change (yet again)?

    Certainly.

    But would such change “be effective” in overcoming the “dependency on the words of Congress (in the AIA)” so as to put bite into anything that transpired during the era of “biteless?”

  17. jack October 28, 2019 1:25 pm

    I just filed 10/07/19 for Accelerated Foreign License through EFS. When I called the Office of Petitions few days later they said that they do not accept submission through the EFS but through FAX. Since I did not use fax,and they do not use e-mail the foreign filling license is going be mailed to me. Few days later I received e-mail from USPTO with “Provisional Application” and information that the fee I paid (for foreign license) is not sufficient to cover cost of “Provisional Application. GOD!!! I NEVER FILED PROVISIONAL!!! So i checked the alleged provisional application ( i filed for expedited Foreign license) and I see the title of the “PROVISIONAL APPLICATION: “Petition under 37 CFR 5.13 Petition for license: No Corresponding application.!!!!!!!!!!!!!!! WOW. Is this what I invented? If I would file copy of “Mackbeth” I would probably ended up with provisional application with title of invention “Mackbeth”. Somebody in USPTO divided my letter and refiled it as “Provisional application” The foreign filing license is attached to it. Last few days I am mailing e-mails to various dept. of USPTO and there is no answer for any of them. I just spend last 30 minutes on a phone with 2 people in USPTO not knowing what is going on. Somebody suppose to give me a call. UFF. What a nightmare.

  18. angry dude October 28, 2019 3:16 pm

    Anon @16

    “…to put bite into anything that transpired during the era of “biteless?”

    To put “bite” into toothless US patents means bringing big tech stocks (FAANG etc) to near complete collapse, no less
    But those are in everyone’s 401Ks and retirement investments
    Not gonna happen
    US Patent System will die instead
    Mark my words

  19. mike October 28, 2019 6:37 pm

    This title is comical – “What Every Patent Attorney Should Teach Their Entrepreneur-Inventor Clients About the Patent Process”.

    It left out the two most important components:

    1) A patent is an exclusionary right and does not give you the right to produce anything, so, in addition to filing fees and attorneys fees, unless you also have millions of dollars set aside in savings to spend once your valuable patent is challenged at the PTAB, do not pursue a patent in the United States.

    2) Because your patent can be challenged at the PTAB because there is no longer judicial independence, and because it will be invalidated at an extremely high rate because it is no longer presumed valid and the PTAB has a lower burden of proof, patents are no longer instruments for investment. So even if a patent did give you the right to produce something, you will no longer find investors.

    These two things are what every honest patent attorney should teach their clients about the patent process. And then ask the client to rethink whether they should pursue a patent in the United States, where you are paying the United States government to disclose your invention to the public, with no protection in return.

    Failing to do this is failing to recognize how the America Invents Act tipped the scales in favor of efficient infringement, a) on the promise of a “second look” after a patent has been granted (and therefore can no longer be trusted), and b) on the inventor’s dime because no attorney will take a PTAB validity challenge on a contingency fee basis, as there are no monetary damages at the end of that inquiry in that tribunal.

  20. angry dude October 28, 2019 11:19 pm

    Paul Morinville @4

    “Patent in China… not the US. If you patent in the US, you will get PTAB’d. The PTAB will likely invalidate your patent and your patent will be damaged in all other countries. Then you will be forced to fight an unjust US invalidation overseas. The US patent system should be abandoned altogether for this reason.”

    After reading this again I must admit that my worst predictions back in the early days of US Patent System destruction were not even close to nightmare it finally became:
    they are actively forcing all American inventors to leave this country (or to become Big Tech corporate slaves)!
    If this is not a High Treason then what is it ?
    Where is Congress ?
    Where is President ?
    Where is Special Prosecutor ?
    Are they all corrupt beyond repair ???

  21. Anon October 29, 2019 8:36 am

    mike @ 9,

    Sadly, there is truth in the warnings of your words and at least to some extent clients must be appraised of the dangers that your feelings provide.

    I would shy away from the “hopeless/just quit” mantra though — as that only feeds what the Efficient Infringers want, and the battle is not over.

  22. Jeff Hardin October 29, 2019 12:10 pm

    @Anon:

    Mike’s *feelings* provided those dangers?

    I don’t see his mention of “ask[ing] the client to rethink whether they should pursue a patent in the United States, where [the client is] paying the United States government to disclose [her] invention to the public, with no protection in return” as a “hopeless/just quit” mantra. To me, this is merely an inquiry to the client once reviewing the new patent law and its consequences. From my experience, many in the industry do not even know of these new changes and their effects, and they incorrectly assume a patent provides protection, rather than introduces new risks as our current system does. Given this new knowledge, a client must take the opportunity and come to terms and decide whether to disclose her invention via patent pursuit or keep it under her mattress via trade secret.

    Now, given the state of today’s US patent system, evidence shows that many are now electing to keep it under their mattress, which actually goes against the purpose of the patent system — societal advancement by public disclosure.

    In all honestly, it is this — the election to no longer participate in the patent bargain, an inventor’s “hopeless/just quit” decision on the patent system of sorts — is what indeed has certain Members of Congress concerned, and as long as these Members become aware of this reality, it actually serves as a motivation to change the system for the better.

  23. jack October 29, 2019 2:39 pm

    For every attorney here patents are mere statistics. You have no personal interest attached, No endless hours working on the solution. No money, time, hope, life involved. Just number of hours and fees. One more application and than one more and than there is going be next and next applicant. But be weary the drop 1.6% in US patent application last year comparing to double digit increase in IP fillings showing elsewhere is first sign of things to come. The fraud of US patent law extracting fees and hopes in return for PTAB is slowly leaking to minds. Paul Morinville conclusion, the shock of being misled and robbed of your work leads in obvious direction For Inventor this is not side hobby. It is a lot of work. If you are patent attorney you should be concerned about future of your profession here in US.

  24. angry dude October 29, 2019 3:14 pm

    jack @23

    I told them all, US patent attorneys, like 10 years ago, that they’are gonna follow the path of dinosaurs…

    And they all laughed at me…

    Well, who’s gonna have the last laugh ?

    PS: The real drop in US patent applications is much worse than 1.6% if you count it correctly – excluding all foreign entities and giant corporations

  25. Anon October 30, 2019 3:29 pm

    Jeff @22,

    The provision is the warning, not the topic of the warning.

    As for: “ is what indeed has certain Members of Congress concerned, and as long as these Members become aware of this reality, it actually serves as a motivation to change the system for the better.

    I will allow that you have a point — ONLY so far as there is actual motivation to change. I have already distinguished this though in that the “just quit” mantra is NOT (in and of itself) THAT motivation. Clearly, it takes MORE than “just quit” to drive home to members of Congress that there is harm from the withdrawal of people from the patent system.

    By the way — ANY “withdrawal from the patent system” is currently masked by the “straight up filing numbers” — even with any modest recent dips taken into account as being mere perturbations of the overall trend of recent years.

    In fact, as I have mentioned previously, the data from the USPTO shows an increase in small entity filing on a longer time trend view (even as the percentage of filings between small and large entity has changed negatively for small entities).

  26. jack October 30, 2019 6:00 pm

    USPTO shows an increase in small entity filing due to the fact that small entity has limited or no knowledge about reality of US patent “law” The encouraging soundbites from USPTO may have some effect but wait….

  27. Peter Botherway October 30, 2019 6:54 pm

    The entire patent industry has to be overhauled and brought into the 21st century, but what are the chances of the patent attorney fraternity killing the goose that is laying their golden egg!!

  28. Paul Morinville October 30, 2019 8:52 pm

    Jack @ 26. Universities are considered small entities. The percentage of real small entities in minuscule in comparison to university filings. It’s a scam to make it look like small entities are increasing their filings.

    Unfortunately, now that the chips are down and the system is in free fall, the crap they constructed makes it impossible to know what is really going on.

  29. Anon October 31, 2019 6:14 am

    Peter,

    Your acrimony is aimed at far too large a group, as you tar and feather even those that seek to help innovators.

    I note in this series that you are not the only one lashing out in such an emotional state.

    There is nothing wrong with having emotion. There is everything wrong with letting emotion sweep away reason.

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