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Pro Se Patent Applicants

Hear the term 'pro se', and what comes to mind?

How about that stereotypical lone inventor, toiling away the hours to perfect their invention, writing up and submitting their patent application, fighting the good fight for their patent, without benefit of an attorney, with the hope that they will ultimately obtain the rightfully deserved patent that will allow them to share their invention with the world (and be rewarded financially, of course).

Think Gordon Gould's patent fight for the laser, or Robert Kearns's for the intermittent windshield wiper.
[Of course, neither of these were in fact pro se applicants to my knowledge, but they are the kind of people that you imagine pro se applicants being like.]

That is certainly the idealistic view of the pro se inventor.

Ask an examiner, though, and the term is likely to conjure up a very different set of images. Images like:

• The backyard/garage/housewife inventor who thinks they've come up with 'the next big thing', when in fact they've invented some doohicky whose only remotely patent-worthy characteristic is the fact that nobody would have been dumb enough to think of such a thing, let alone filing a patent application for it.

• Three page, incoherent specifications, with hand-drawn figures that look like they've been drawn by the applicant's 2-year-old, having no labels or element numbers, followed by a set of indecipherable claims. (Antecedent basis? What's that?)

• Constant phone calls to ask inane questions (invariably while you're trying to get a 2-monther out the door), the answers for which could easily be found in a 'patent it yourself' book, or on the USPTO web site (although I admit that I occasionally use the USPTO web site myself, and the design is such that it seems to take more time than I think it should to find what it is I'm looking for.)

• Applicants who want the examiner to spend the little amount of time they've been allocated doing not only their own job (examining), but the applicant's job too (prosecuting).
  

I have always assumed that attorneys have analogous problems with a certain subset of their clients as well, so hey, feel our pain...or is it us feeling your pain?

These are, of course, exaggerations, but there is at least a grain of truth to all of these images. Still, I personally find that the positives in working with a pro se applicant far outweigh the negatives.

And what would those positives be? Pro se applicants are enthusiastic about their invention! And to me, that makes them a pleasure to work with.

When you spend 99% of your time dealing with attorneys, a pro se can be a breath of fresh air. They have the ability (much like my kids) to look at something that I see all the time, to which I have become somewhat jaded, and see it as something bright, shiny and new. That kind of attitude can be infectious, and it makes you want to do a good job for them.

[Their enthusiasm does sometimes make it hard to get them off of the telephone, however.]

For an attorney, it may be analogous to the difference between having a corporate client and an individual inventor client (or so I would imagine).

I think that everyone would agree that a pro se applicant is usually not going to obtain the level of patent protection they might had they used a patent attorney. Having an experienced (or even just competent) patent attorney is going to serve an applicant better than going the pro se way.

The reason is obvious: attorneys have been trained to look out for the interests of their clients, and to know the ins and outs of the patent system. The pro se applicant, by definition, has not.

Some might say that there's nothing wrong with that. The pro se has made the choice to conduct their prosecution on the cheap, without benefit of someone who knows how to do it well; they deserve whatever they get. If that results in less than ideal patent protection, well, so be it. They live with the consequences of their decision.

I don't necessarily disagree with this sentiment. I would point out, however, that having provisions for pro se applicants is ideally supposed to allow an applicant to get protection for their invention commensurate with the merits of their invention, even when they cannot afford to pay an attorney to prosecute the application for them.

Since the average pro se applicant doesn't know all they should, where do they turn for help? To their friendly examiner, of course.

And when they do, I'm happy to help them out (which is good, because the MPEP says that I'm supposed to do so). There is a problem, however.

Examiners are trained to conduct only one side of the patent process, the examination. Like the pro se applicants themselves, we generally do not know nearly enough about protecting the applicant's interests to do a good job of it. I imagine there would be plenty of situations where an examiner might honestly believe that they are offering a pro se applicant sound advice that will advance prosecution and help to get them their patent. Maybe the advice is sound sometimes. But usually it will not be as good as the advice that a patent attorney would have given them.

We don't see that many pro se applicants, at least not in my corner of the Office. When we do get them, though, it presents us with a situation where knowing what motivates attorneys to do what they do when they do it can allow us to do a better job. I obviously cannot match the ability of a patent attorney in making sure an applicant doesn't do something during prosecution that will come back and bite them after issuance of their patent, but the more I do know, the better.

Full post as published by Just a Patent Examiner on July 10, 2007 (boomark / email).