Patent Law

Patent Prosecution from the Client Perspective – You Do Not Know It When You See It

By Russ Krajec, Esq.

When I was a practicing engineer at a big company, several of my invention disclosures found their way to patent attorneys.  I was fortunate enough to work with a good one and a bad one, although at the time I could not distinguish between the two. 

In both cases, the attorneys did an interview over the phone with me and both attorneys appeared interested in my idea and seemed to listen attentively to everything I said about the invention.

Having only been through the patent process a couple previous times as an inventor, I considered it a great honor to get a patent and the recognition for my ideas.

The first attorney wrote in painstaking detail every minute feature of my product, including just about every screw in the design.  The patent application went on for pages and was the most painful thing I had ever read in my life.  I could not figure out what the attorney was trying to do, but I read every word of it and had no guidance or basis for commenting on what he wrote.

The first attorney was adamant that I read the document and comment on it, but I could not edit 25 pages of cryptic, badly written run-on sentences used in long paragraphs that spanned pages.  After forcing myself to read it, I just figured that this was what patents were supposed to be.

The second attorney explained the invention in broad strokes, summarizing the concept well, and then showed several examples of how the invention worked.  His application was easy to read and very concise.  I could skim through his document and pick up what he was writing almost immediately.

It was not until I read the second one that I realized how awful the first one really was.  From my current perspective today having written several hundred patent applications, I am ashamed for that first patent attorney and his poor clients.

There are a few things to note from my little story.  First is that the inventors often have a terrible frame of reference for what the patent application should be and how to evaluate the patent and the attorney.  From my innocent and ignorant perspective, the first attorney came across well and really buttered me up during the interview.  I even got to go to his office to sign the papers and was referred to as ‘the inventor’, which was pretty cool at the time.  I walked away from the experience thinking pretty highly of the attorney, even though he was, in my current opinion, bordering on utterly incompetent.

In other words, lots of schmoozing can cover up a tremendous amount of incompetence.

This can have effects in both directions: a bad personal interaction may lead to a bad perception even though the work product is beyond reproach, while a good personal interaction may cover up even the worst work product.

Another thing to note is that how gullible a new inventor may be.  It is easy for the inventor to be enamored with the glorious thought of getting a patent, but take whatever is given as gospel.  Because the inventor has no reasonable frame of reference, the inventor must go on what he knows, which is the personal interaction.  That does explain the success of many invention submission companies.

As a practicing attorney, I incorporate these lessons by doing a couple things.  First, I always treat my inventors well.  After all, they are my livelihood even when the business decisions are made by someone else.  The second is to try to give them a frame of reference for what to expect and how to judge a patent application.  Obviously, the first time they read a patent application they cannot compare it to anything else, but I try to define some standards by which they can judge it.

By knowing what the inventor is going through, I can hopefully provide as much value as possible to the client, whether they can appreciate it immediately or not.

Full post as published by Anything Under the Sun Made by Man on August 07, 2007 (boomark / email).