Individual Inventors: Who Will Represent You Now?

PrayBender v. Dudas (Fed. Cir. 2007)

Although this case is extreme, it should also server as a warning to any patent practitioner who regularly represents ‘unsophisticated clients’ — You will be held to a higher ethical standard. The opinion also creates a trap for flat-fee prosecution — because, according to the CAFC, the flat rate provides an incentive to shirk responsibilities.

Here, Bender, a patent attorney, worked with an invention promotion company (AIC) to prosecute over 1000 design patent applications. The applicants were never asked whether they intended to file design or utility patent applications and were not provided with information weighing the two options.

The PTO found that Bender had violated several rules of ethics and expelled him from practice.  The district court (DC) affirmed. Bender then appealed to the CAFC, which also affirmed on all issues.

Standard of Review: Under the APA, a PTO sanction will be upheld unless “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with the law.” The underlying factual conclusions are reviewed for substantial evidence.

Neglecting an Entrusted Legal Matter:  The PTO argued that Bender had neglected to ensure that his clients were aware of the differences between design and utility patents and that they intended to file design patent applications. Bender did provide a description of the differences in a letter to clients, but the CAFC found that “an entirely hollow and formalistic gesture” because it did not provide particularized advice.

Bender’s engagement letter was an entirely hollow and formalistic gesture because it did not provide any of the Gilden applicants with advice that directly related to the particular inventions at issue, the type of patent best suited to protect these particular inventions and the inventor’s interests therein, or the consequences of pursuing a design patent instead of a utility patent.

Bender should have discussed the particulars of each case with the inventors to determine the proper type of application that should be filed. CAFC found evidence of motive in the billing arrangement: Bender was paid a flat rate by the invention promotion company who had a money-back guarantee if no patent issued. And, design patents are cheaper to file and much easier to obtain.

Any reputable attorney would have appreciated that the wholesale filing of design applications under such circumstances and the unauthorized addition of design embellishments were driven in large measure if not entirely by AIC’s money-back guarantee.

Bender also failed to advise clients regarding final rejections as should always be done (regardless of who foots the bill.

Conflict of Interest: Bender should have explicitly discussed his fee arrangement with each client — as must always be done if someone else is footing the bill.  Generally this type of arrangement can only proceed with clients permission after a full disclosure. (including the amount that Bender received from the invention promotion company).

Lying to the Feds: The CAFC also a affirmed on a charge akin to obstruction of [administrative] justice. Bender failed to give full and complete answers to the PTO’s requests for information. Although Bender had objected to the questions as argumentative and based on false premises, the CAFC agreed with the PTO — that his responses hindered the investigation.

Exclusion from practice affirmed.

Notes:

  • [UPDATE] Leon Gilden is the patent attorney who was initially part of the AIC scheme. Gilden skipped town and is now a fugitive at large. [Wanted Poster of Leon Gilden]
  • The violations included (1) neglecting an entrusted legal matter; accepting employment where professional judgment may be affected; accepting compensation from a non-client without full disclosure to the actual client; and engaging in conduct that was prejudicial to the administration of justice. 
  • Individual inventors who are not yet versed in the rules of patent law create problems for patent prosecutors. The work generally takes more time and effort, the malpractice risk is often greater, and the ability to pay is usually less. A number of law firms now have policies against representing individuals (except for the very wealthy).
  • Justifying the lack of procedural safeguards on the PTO’s requests for information, the CAFC explained that the lack of safeguards actually “protects practitioners by providing them with an opportunity to explain any questionable conduct and present reasons why disciplinary proceedings are not warranted.”

65 thoughts on “Individual Inventors: Who Will Represent You Now?

  1. “Leon Gilden sighting — my main man. He was an Examiner is Group 320 in the 70’s as was I. Took an empty office and created a lunch room for the clerical staff. Named it “Pour le gourmand” Look it up.

    Am I surprised Leon was involved with AIC — Not! Tell me how a journeyman examiner becomes the King of the Design Patents? Only in America.

    Posted by: John Roethel | Jun 22, 2007 at 04:31 PM”

    From 1968 to 1985, Leon Gilden was one of my closest friends. He met his wife Kathy Johnson while both were in law school at Catholic University and they had two kids. Leon was a patent examiner in Group 320, as stated, just a couple of rooms down from his in house crony, Mike Combs. I argued numerous rejections before both of them.

    I left Virginia in 1985 for Utah and Leon left the USPTO shortly thereafter for what would become the beginning of his “problems” in rural Idaho. His wife’s family owned a farm/ranch in Central Idaho and apparently Leon’s opportunities to practice patent law were quite limited from that rural location so he somehow became involved with AIC in Massachusetts.

    I was not made aware of Leon’s involvement with AIC until an acquaintance of mine in Salt Lake City asked me to review an “invention” he had submitted to AIC in the early 90’s. In the file, I found the prior art from the initial novelty search conducted by AIC as well as the prior art cited by the USPTO. I also read Leon’s opinion regarding patentability which was the last document in the file. To say the least, I was not pleased with Leon’s positive opinion regarding a design – not utility – patent as the AIC client had expected, with no explanation to the client regarding the major differences between design patents and utility patents.

    With a little calling around, I located Leon at his latest address (1991) in Tampa, Florida. I telephoned him and flat out asked him what in the h**l he was doing getting himself involved with inventor scams like AIC. He really did not give me an acceptable answer, just that it was a job.

    I have not spoken with Leon since that conversation. So wherever you are now Leon, whether it’s back in rural Idaho or maybe Israel, who knows, you did bad. Time to come out of hiding and clear the air, one way or another.

  2. UPDATE: The U.S. Supreme Court petition was denied April 28, 2008.

    –Bender v. Dudas History–

    * May 20, 1998: In re Daniels ,144 F.3d 1452, C.A.Fed.,1998, May 20, 1998 (No. 97-1225) [ http ://www.ll.georgetown.edu/federal/judicial/fed/opinions/97opinions/97-1225.html ]

    * September 18, 1998 to 1999: Twenty+ Requirements for Information letters sent to Bender from USPTO. If you can find copies or copies of the ones sent to Bender’s clients, please post on the Internet and provide a link in this thread. (“At some point, the PTO discovered Bender’s relationship with AIC and began sending him “disciplinary letters in the form of Requirements for Information” (“RFIs”); ultimately the PTO sent Bender at least 20 such letters.)

    * June 20, 2000: Administrative Complaint and Notice of Proceedings dated June 20, 2000 served on Bender.

    * (sometime after) March 29, 2001: Initial Decision of the Administrative Law Judge William B. Moran (Administrative Law Judge (“ALJ”) William B. Moran presided over Bender’s hearing on the allegations charged in the complaint, which occurred on March 26 through March 29, 2001.) If you can find a copy, please post on the Internet and provide a link in this thread.

    * September 30, 2003 Final Decision of the PTO (D00-01) [http ://www1 .uspto.gov/web/offices/com/sol/foia/oed/disc/D2000-01.pdf ]

    * July 26, 2004: USPTO action on Request for Reconsideration (D2000-01) [ http ://www1.uspto.gov/web/offices/com/sol/foia/oed/disc/D2000-01_reconsideration.pdf ]

    * January 13, 2006: Bender v. Dudas, United States District Court, District of Columbia, No. Civ.A. 04-1301 RBW, January 13, 2006 [ link to ecf.dcd.uscourts.gov ]

    * June 21, 2007: Bender v. Dudas, United States Court of Appeals, Federal Circuit, 490 F.3d 1361, 83 U.S.P.Q.2d 1065, C.A.Fed. (Dist.Col.),2007, June 21, 2007 (No. 2006-1243) [ http ://www.inventorfraud.com/MichaelBender2007.pdf ]

    * April 28, 2008: Bender v. Dudas, Supreme Court of the United States, 76 USLW 3374, 76 USLW 3579, 76 USLW 3581, April 28, 2008 (No. 07-847) (“Petition for writ of certiorari to the United States Court of Appeals for the Federal Circuit denied.) [ http ://www.supremecourtus.gov/docket/07-847.htm ]

  3. Man this has been a great thread, lawyers at one another’s throats and everything ;) Good times.

    Pro seing the SC is what it’s all about man! We might get another KSR outta them if we throw enough pro se up there.

  4. Dennis, I disagree with you about Bender, at least in so far as the petition has a snowball’s chance in hell of actually getting granted. The guy is pro se petitioning the Supreme Court.

  5. I dunno Paul … I’m sure Bender doesn’t think its simple … I think we have seen only the tip of the iceberg in this case … it seems to me to be a “miscarriage” of Justice to disbar a competent practicioner who acted in good faith (see In re Daniels) because the marketing company who retained him and the prior disciplined attorney misconducted before Bender took over already filed design applications that were covered with embellishments. At least Bender should have been given credit for getting rid of the patterns and giving the Gilden clients an opportunity to file utilities basing priority upon the cured design apps (In re Daniels again!). Bad decision by CAFC … but what else is new.

  6. This is real simple. If you file or prosecute a bunch of design patents to get the quick fees that come with them when those patents should have been filed as utility patents, the PTO is going to thump you and the court will back them. This case is full of holes, but justice was served in the end in the PTO and court’s view.

    It is very rare for some practitioner to do squeeze hundreds of clients for the easy design money when their legal needs were utility patents, and thus it is rare that the PTO takes such action as in this case. This case is a hold over for actions takein in the 1990s, so most everyone since then has gotten the message. There are few disciplinary cases in general and of those, only a few deal with this design/utility switch-a-roo. See

    link to uspto.gov

  7. Bender seems to have gotten the short end of the stick from the Court (CAFC). None of the charges seems to relate to misconduct “before the office.” They all seem to be “communications” between him and his clients. If the PTO can disbar for such “out of the PTO Office” reasons there is something terribly wrong here. Also, the court seems to have bent over backwards to find Bender being evasive in answereing questions from OED, yet there is no charage of “failure to cooperate.” See 37 CFR 10.23(c) et seq. This is a fatal contradiction. Finally, I recall a 4th circuit case … I think it was Moatz v. Goldstein or something like that … where the panel held that the use of OED RFIs violated PTO rules because they were improper discovery. How is this not a conflict with the CAFC view of finding these RFIs beneficial to a practicioner. This case is so full of holes … I doubt we have heard the last of it. I would not be surprised if the Supreme Court grants cert.

  8. More like this “if it’s good for large multinationals, it’s good for China”

    Yeah, China will also benefit greatly from so-called “patent reform” in US

  9. Well, the reality is, the patent system as it exists today is not for the purpose of promoting innovation nor rewarding inventors. It, like our Congress, is a wholly-owned subsidiary of Corporate America, Inc. and as such exists to concentrate as much wealth into as few hands as possible. Of course no one is going to represent the individual investor, and to make sure of it, decisions such as these are to be meted out.

    Remember, if it’s good for large multinationals and their bithcboys, it’s good for America… uh… sort of… good for some Americans… the important ones… who own everything…. you KNOW ;)

  10. I read the Fed Circuit opinion. Basically, Bender stepped in the shoes of sanctioned Gilden without changing step. The court stated that Bender’s engagement letters were well written and perhaps sufficient as an engagement letter of a client in the first instance, but were insufficient for client’s in the middle of a filed design patent application.

    The Fed Circuit harped on Bender for not explaining to the clients the consequences of pursuing an ornamental design patent instead of a utility patent. The court did not say what those consequences were. What would you tell a client regarding the consequences of pursuing an ornamental design patent instead of a utility patent?

  11. > What this lawyer should have done was make clear that he
    > represented the compnay and not the inventor and gotten
    > a written acknowledgement from the inventor.

    I’m not sure that would be possible, ethically. It’s fine to do that where the patent application is assigned to a company, and you represent the assignee, who owns the application, rather than the individual inventor(s). In this case, though, the inventor, applicant and owner are the same, and the company has no legal relationship to the application. As such, the company’s directing the prosecution of the application amounts to practicing law without a license, according to the USPTO.

    The USPTO OED has issued a number of rulings over the years which say that an attorney/agent is not allowed to accept direction from other than the inventor (that is, the invention promotion company), and to do so is to aid the company in the unauthorized practice of law (DR 10.68). This came up in the Colitz case suspending another of AIC’s lawyers – link to uspto.gov

    In response to another post in this thread, earlier, the DR has an explicit exception allowing a patent attorney/agent to accept direction from a foreign patent firm.

  12. I agree completely with PCloutier. The underlying question in every case for an attorney is Whom do I represent? It is convenient to ignore this question, particularly when representing a corporation. Often an attorney is faced with doing what is right for the client and trying to satisfy the requirements of in-house counsel. What is often missed, however, is that just because the in-house counsel says so is not a free pass to having one’s action being sanctioned. The in-house counsel and the outside counsel are co-equal in their duties to represent the client zealously. It become real interesting when the in-house counsel instructs outside counsel to do something that the outside counsel believes is detrimental to the client. The question becomes when does the outside counsel become disengaged. I believe we will begin to get some answers in the stock back-dating cases.

  13. I read this story with great interest. I think that most of you have missed the cause of the underlying ethics violation. What this lawyer should have done was make clear that he represented the compnay and not the inventor and gotten a written acknowledgement from the inventor. If the company wanted lawyer only to file design patents and the compnay was the lawyer’s client, no problem. However, that distinction needed to be made to the inventor.

    You lawyers out there, this is basic ethics 101. Who is your client?

  14. This thread is great – MM accuses others of being “intellectually challenged”. Brilliant.

    This level of self-deception is a dead giveaway – Mooney is an “independent inventor”!
    At last we’ve rumbled him.

  15. You have to remember that the attorneys working with invention submission companies are not really selling their patent services. Rather, they are part of a greater collective that is selling the marketing of the product to manufacturers and retailers. They say, “We can get you in front of companies, take your product to trade shows, etc.”. That is a load of crap. These companies rarely have a product that sells, and when it does, some may actually just steal the product without paying the inventor, knowing that the inventor has already spent their life savings and cannot afford an expensive, difficult, and time-consuming lawsuit.

    We all know that a lot of our corporate clients do not take unsolicited submissions because most are junk and because of possible liability issues, but the average inventor that contacts these companies probably doesnt know any better. They think that these companies hold some special inside track, knows somebody important, etc., and can get their invention into the system.

    Just because someone incorporates and calls themself a startup doesnt make them more knowledgable. So, the real issue is not whether or not someone is an individual inventor, but rather, the sophistication and economic status of the client. I have a prepackaged brochure for unsophisticated clients, which may include companies without a general counsel, explaining the costs and issues with patenting. In most cases, I ask them to read it prior to meeting with them.

    Some solo inventors are great to work with, but one of the first things I let them know is that I dont shop their invention around and I tell them that they should write a business plan first before deciding to patent anything. Some things dont need a patent, and it would be a waste of their money to retain me. I also tell them that they should do their own research and not rely upon any economic forecasts generated by a company with a stake in whether or not they file a patent.

  16. I find the comments regarding alternative embodiments interesting. It’s not the attorney’s job to be an inventor. But it’s certainly a good idea to solicit design-arounds and alternative embodiments.

    I don’t have a problem with attorneys throwing in attorney-conceived obvious variations into the specification. But, if those variations show up in the claims, you can bet there will be some litigation on inventorship.

  17. Tom-

    The reason is because there is no patent classification or other categorized search resource for “silly” (except perhaps http://www.halfbakery.com) and thus Examiner’s don’t have much options as far as 35 USC 102 or 35 USC 103 go. Perhaps the PTO should invest in a couple of Dr.Seuss books for the library.

  18. I just looked at the kneepad patent (6,810,541). It was issued 14 months after filing. The first office action allowed most claims. A quick review of Claim 1 shows that the invention is for a pillow encased in a flexible wrap and further encased in a decorative casing. As if that has never been done before!

    One thing that I have noticed, a lot of the really silly, never should have been patented, inventions fly through the PTO.

  19. An Examiner pointed out on Jun 22, 2007 at 09:28 AM that
    – The “kneepad thingie” IS patented. US 6,810,541: “Peanut-Shaped Prayer Cushion”

    and he posted a TinyURL to the PTO site.

  20. Malcolm, If your referring to the pad the woman in the picture is kneeling on, I thought that went with the article and therefore, the patent in question would have been a design patent. Or is there a utility patent on such a pad?

  21. Mine is but an observation that those who may decry “solos” may on occassion fail to appreciate that even they are capable of creating a solution to a problem that will strike a responsive chord with consumers.

    Of course, the fact that a “solution” is popular should be irrelevant to its patentabilty.

    But it’s not irrelevant, is it?

    Prediction: that consideration will become legally irrelevant within the next decade.

  22. Do you simply file your clients’ invention disclosures

    No, I prepare a draft application and let them review it before I file it. Often I throw in a ton of obvious variations of their invention, per their request.

    If it turns out that some additional “novel or non-obvious embodiments” were necessary to get a patentable claim out of the application, the failure to include them is clearly not my fault. It’s the inventors’ fault.

    It’s not malpractice to file an application describing the invention that was brought to you by the inventor. And it never will be. Nor is it “weak.”

    What is “weak” is a patent on peanut-shaped kneepads.

  23. Alex,

    I note you have used by initials, and believe that you meant to direct your response to another contributor.

    As an aside for those who eschews “solos”, and mindful of the fact that many, many solo inventions eventually become wall decorations and no more, in many instances a practitioner cannot with any certainly determine what will become a “winner” and what will become a “loser”. I have seen many cases where my initial first impression of “loser” went on to become a big-time “winner”…and I do mean big-time.

    How one chooses to deal with “solos” is a personal matter. Mine is but an observation that those who may decry “solos” may on occassion fail to appreciate that even they are capable of creating a solution to a problem that will strike a responsive chord with consumers.

  24. MLS: “Sure sure I could take retainers, but I hate that crap.”

    Retainers/”advanced deposits” are to prevent exactly the type of nonsense that you’re dealing with. I started taking full up-front retainers from all solos and haven’t had an issue since then. Also, as a result, I have many clients that actually thank me because they received some of their advanced fee back after the work was completed at a cost lower than what I’d quoted. As Giuliani suggests, underpromise and overperform.

  25. Malcolm-

    First, I think you missed the forest. $10K for a 9-page application claiming (as an example) a screwdriver with a belt-clip is exorbitant. There were many failings, I mentioned one which is serious. There were others as well.

    I am no longer a patent prosecutor, but when I was, I earned my money by helping to flesh out and discuss the full range of the invention with my clients. If I had simply taken the one embodiment brought in by the inventor, written it up as is, and claimed it without any work to determine the breadth of the invention, I would have considered it malpractice. I pushed the inventor to come up with alternatives, so that my client would get a meaningful patent, and not one that could be designed around in a minute. Do you simply file your clients’ invention disclosures or are you named an inventor on all applications? Did you not once ask a client, “could that be done another way?” No? That is exceedingly “weak.”

  26. For anybody who has a desire to become an independent inventor one strategy I would suggest would be to spend a few years as a Patent Examiner in the art that you want to invent in. Basically, you can be paid to learn the prosecution process from the point of view of an Examiner while at the same time be given the opportunity to study the corporations who regularly patent in the art (future licensing prospects). You would also be in a prime position to get a overview of the technology as a whole and to see the missing pieces that can lead to commercially valuable intellectual property. Of course you would be barred from filing patents until 1 year after leaving the PTO (35 USC 4) but you would probably be in a better position to prosecute your own patents than any attorney would be.

  27. “Someone needs to improve their reading skills.”

    Yeah, but that “someone” ain’t me, brother. As I’ve urged other intellectually challenged commenters here, if you are going to pop off with obnoxious crap like that in quotes above, check twice for accuracy. And please don’t apologize — I might have a heart attack.

  28. Just a Pat. Attorney wrote: “Gideon, I found your comments sad. It just goes to show that not all patent attorneys are good businesspersons or good at working with others.”
    Gideon responded with “You are out of your f—-ing mind.”

    I stand corrected. Your intelligent and articulate response convinces me that you have an uncanny knack for working with others.

    Gideon also says: “If you work with solo inventors and small operations and you do prosecution, then I can guarentee you that I make double what you make, and more likely triple what you make, and I’m probably working fewer hours,” and then states some dribble about low hanging fruit.

    I never said taking low hanging fruit is bad business. But, allowing any client to stiff you is bad business.

    Your statement as to income is totally unfounded with respect to my practice. My clients come to me, so whether they are high on the tree or much lower has no bearing because the cost of acquisition of my clients is pretty much the same for all clients. Also, everyone pays my rates. In other words, I work, I get paid. Just because in your experience you put in more time with independent inventors and that time is unpaid does not mean that is true for me.

  29. “Someone needs to improve their reading skills.”

    Someone needs to improve his or her writing skills.

    PDS Wrote: “Gideon: I found your comments amusing. Not because I disagreed with them, but because I’ve experienced much of the same thing. As I wrote earlier, I have just one independent inventor I am working with now (it was a moment of weakness when I took the case), and I’m regretting it already.”

    Isn’t that always how it works? You get a reference, the guy calls, he wants to hire you, you’re excited for him, you break down.

    I made myself a rule – never take a new client without sleeping on it.

    Result – haven’t taken on a bad client in a very long time.

    Just a Pat. Attorney wrote: “Gideon, I found your comments sad. It just goes to show that not all patent attorneys are good businesspersons or good at working with others.”

    You are out of your f—-ing mind.

    If you work with solo inventors and small operations and you do prosecution, then I can guarentee you that I make double what you make, and more likely triple what you make, and I’m probably working fewer hours.

    Where do you get off making that comment?

    It’s really very very simple.

    Solo guy – fruit at the top of the tree, on long thin branch, very tough stem to break.

    Fortune 2,000 client – fruit in reach from ground, plentiful, and easy to collect.

    You think me taking the low hanging fruit is bad business?

    You can argue that your work helps the world more, or is a bigger contribution to society, and I might agree, but it’s ridiculous to think that representing solo guys is better buisiness than having large, repeat, established clients.

    And fool can tell you that.

    And in terms of “working with others”, I work with others very well thank you very much, and the solo guys would beg me not to dump them after I got tired of the “check’ll be in the mail next month” crap.

    I work great with solo guys – it’s not me who creates the problems.

  30. MM states “Placing the blame on an attorney for not providing “alternative embodiments” is pretty weak”

    Someone needs to improve their reading skills. OyltnetaP said that the app did not include alternative embodiments. I think a good attorney should advise an unsophisticated client on things that may help in obtaining a patent, including the advisability of identifying alternatives. Whenever I think an application would benefit from, or the invention lends itself to, alternative embodiments, I ask the inventor to provide me with them.

  31. “A patent firm he found through some patent promotion agency charged him about $10K for the simplest invention, which amounted to a combination of two well-known tools. The application was poorly drafted and did not have any alternative embodiments to use in arguing novelty or non-obviousness.”

    Placing the blame on an attorney for not providing “alternative embodiments” is pretty weak, unless of course the attorney is getting royalties from inventions whose patentability depended on the “alternative” limitations. At the very least, the attorney should be an inventor under those circumstances.

  32. My brief experience with such outfits suggests that many are unscrupulous. A maintenance employee at my company was taken by a similar operation. A patent firm he found through some patent promotion agency charged him about $10K for the simplest invention, which amounted to a combination of two well-known tools. The application was poorly drafted and did not have any alternative embodiments to use in arguing novelty or non-obviousness. I could have found several local attorneys or agents who would have drafted a much better application for about $3K. A preliminary search (or advice to get one) also might have let the inventor avoid the cost entirely until his invention was either more unique or better defined.

  33. Gideon, I found your comments sad. It just goes to show that not all patent attorneys are good businesspersons or good at working with others.

    Before I went solo, I caught a lot of flack for spending too much time in the initial interview with independent inventors and then not “closing the deal.” I felt like I was selling used cars. Now that I am solo, I still spend a lot of time in the initial interview for two reasons: first, to educate the prospective client on the process and pitfalls of patents and business, and second, to ensure that the prospect understands the FULL costs and can afford to get a patent. I still do not have a high “close” rate, but I have a zero default rate.

    I quote a fixed fee and require at least 1/2 upfront as an advance payment for all new clients. The remainder is payable before filing.

    For those clients that cannot stop asking questions and bothering me or cannot stop inventing and keep changing the invention, I explain that my quote was based on the time it takes me to do the work and that the questions/changes are outside the scope of the original quote. I then tell the client that I will charge by the hour for answering questions/making revisions to the draft application. This is also spelled out in my engagement agreement. Have I been burned? Nope, and I don’t expect to be.

    About 1/2 of my clients are independent inventors. The other half are start-ups or small companies. I enjoy working with independent inventors, but I find many of them are idealistic and naive when it comes to the business side of profiting from their inventions. But, that doesn’t mean I have to be equally naive in how I work with them.

  34. Gideon:

    I found your comments amusing. Not because I disagreed with them, but because I’ve experienced much of the same thing. As I wrote earlier, I have just one independent inventor I am working with now (it was a moment of weakness when I took the case), and I’m regretting it already.

  35. Bender got his Reg No in 1966. That makes him about 65 years old. Does he care about getting disbarred? I doubt it. The opinion says Bender was making $30k/month on the deal. Easy money. This case started in the late 1990s.

  36. Solo inventors = Huge pain in the ass.

    Major problems with solo guys –

    1. Never have money. Really love their idea, but not enough to drop 2-6 grand on an appeal. Don’t have THAT much faith in it.

    2. Never have money. Have a million questions, but do not want to pay for answers.

    3. Never have money. Unsophisticated. Don’t understand anything, and can’t afford to learn.

    4. Never have money.

    After getting burned a few times, I now offer estimates that reflect the massive handholding required.

    So, after seeing my estimate, they go to scammers like the bottom feeder who just got suspended.

    You get what you pay for.

    Solo guy calls, I say, for a basic application, flat fee of 12k to take case through issue. Then they say, “how much if I pay by the hour.” I say, “no gaurentees, but probably more than 12k”. That sends most of them running for the exits.

    Another problem with doing the solo guys hourly?

    “Yeah, uh, I was just wondering what this 5$ charge was on my bill, because I’m not sure whether . . . ”

    “That charge was for postage . . . ”

    “Well was that necessary?”

    I had one guy beef about a 300$ bill after I had literally given him about 4 free hours of my time helping him. That’s the thanks you get . . .

    I gave one client a flat fee for a case. I detailed what the flat fee included prior to taking the case. I was VERY explicit, because I know there’s always an issue.

    So the work gets done, the case gets filed, and the bill doesn’t get paid. I write the client 6 months later and ask them whether they intend to pay it.

    They respond that they want an hour by hour break down on what I did because the bill seems excessive. I tell them to go _____ themselves, in a nice lawyerly way, and if they intend not to pay the bill I’d like to know right away.

    Another guy doesn’t pay his bill for almost a year. Gotta run him down and threaten a lawsuit.

    Sure sure I could take retainers, but I hate that crap.

    I had one other guy come to my office and chat me up for an hour to see “if I was right for him”, after which he says he’d love to hire me, just one problem.

    What’s that?

    I don’t have any money and I need you to find me investors.

    Goodbye.

    One last thought.

    Equivalent cases, first for the corporate client, second for solo guy.

    Corp pays 5k for the application drafting.

    Solo guy will pay 7 or 8. Why? Because solo guy will amend the app more, need more explanation on claims, and so on and so forth. Further, solo guy will require a lot more “Cover your ass” type letters over the course of the matter.

    Whereas the corporate attorney in house with 30 years of experience can be sent a one paragraph letter saying “60 days to 1 year date . . .”, the solo guy will need two pages, or you are putting yourself at risk.

    Just like this suspended scum bucket, except you are not a scum bucket.

  37. The drawing accompanying this article was taken from US Patent No. 6,810,541, and has nothing to do with AIC or Mr. Bender.

  38. Leon Gilden sighting — my main man. He was an Examiner is Group 320 in the 70’s as was I. Took an empty office and created a lunch room for the clerical staff. Named it “Pour le gourmand” Look it up.

    Am I surprised Leon was involved with AIC — Not! Tell me how a journeyman examiner becomes the King of the Design Patents? Only in America.

  39. “it looks like AIC was quite clearly running a scam”

    A $60 million scam, as it turned out. The principals of AIC were sentenced to jail terms.

    Considering that his predecessor at AIC had been disciplined by the PTO for his role in the scam, Bender had no excuses. He should be disbarred by his state as well as by the PTO, if he hasn’t been already.

  40. Based on the opinion, it looks like AIC was quite clearly running a scam, and the PTO didn’t abuse its discretion by sanctioning Bender for his participation in it. As commenter “judith” says, invention promotion companies are probably a special case.

  41. “Well, if it’s sized right, God may not see that your being a wimp (if he only takes a quick look from directly above).”

    Hmmm. How about a pair of fake inflateable crutches that pop out of the front of the pad when you kneel on it? That might do the trick.

  42. “Anybody see any unexpected results from the peanut shape ‘modification’? ”

    At the risk of sounding like I’m down on my knees defending the aforementioned patent…

    If one could see an unexpected result, then it wouldn’t be unexpected.

  43. Unexpected results for the peanut prayer mat? Well, if it’s sized right, God may not see that your being a wimp (if he only takes a quick look from directly above).

  44. LOL – the inventor of the peanut-shaped prayer pad would have been better off with a design patent. The claims are narrower than what a design patent would have provided.

  45. I get on my knees and thank the Supremes for their KSR decision, which plainly renders that knee pad patent a worthless piece of junk. Not that it had any value before.

    Anybody see any unexpected results from the peanut shape “modification”?

    Neither do I.

  46. I really enjoy litigator stories. Do you guys ever represent someone who is less than deserving of your services?

  47. The scam in Bender was telling a client he would get a “patent” and then filing for a design patent. More common is the shyster patent lawyer who sells the client a “patent” for a few thousand $$, then files a provisional, and then wants 3x more $$ to file the regular. The crook does a “patent search”, doesn’t find anything but produces a few “dummy PA references” to make it look like a good faith search.

    Last summer I tried my first patent malpractice/fraud case to a jury against such a shyster. Without any written contacts, it was a I-said-he-said factual issue. The jury gave us compensatory damages but declined punitives. Most of these crooks don’t give naive clients written contracts for just that reason.

    I wanted the client to file criminal charges, but he was burned out by the time the suit ended. If Bender got off with just a suspension, he got off easy, in my opinion.

    Babel Boy

  48. I think the moral of this story has more to do with working with an invention promotion company (AIC) than working with individual inventors. That being said, I usually avoid working with individual inventors. I don’t disdain individual inventors (I think most of us have seen that attitude – even on this board), it is just that most balk at our rates and require a lot of hand holding. The enthusiasm most individual inventors show for their inventions is usually considerably more than what one find elsewhere.

    I have more than enough work from sophisticated clients that I don’t need the hassles of working with an individual inventor (I have just one such inventor now, and I’m probably going to bill for about 1/3 of the time I spend).

  49. “Ultimately, there should not be a problem filing an application drafted by a foreign attorney, as long as the U.S. attorney or agent has at least performed some level of review and adivsed the client if there are any recommended changes.”

    OK. Now who is the client? The foreign attorney, the foreign attorney’s client or both?

  50. As far as filing an application drafted by a foreign client or a foreign attorney;

    Remember, A client determines the goals of representation, the attorney is responsible for the means for attaining the goal.

    Ultimately, there should not be a problem filing an application drafted by a foreign attorney, as long as the U.S. attorney or agent has at least performed some level of review and adivsed the client if there are any recommended changes.

  51. Since we are on the topic of ethics, maybe someone could answer this question for me.

    Patent applications filed by foreign inventors are often drafted by foreign IP firms. They then are filed to the USPTO via US IP law firms without the US firm reviewing the content of the applications. Is this unethical?

    Or, let’s say a foreign IP firm hires a US agent/attorney to file applications to the USPTO directly. The applications are not drafted by the US agent/attorney, but are drafted by local agents or “patent engineers (often the case in asia)”. Is there a problem with this?

  52. Shouldn’t all lawyers for AIC be disbarred? I worked at an IP clinic back when I was in lawschool, there were at least 3 clients that came in with BS patents filed by these companies for an insane amount of money. How are any of these people meeting the duty of care and client confidentiality. Clearly they share all the info with the company, and clearly the company makes the calls.

  53. The Man

    Never mind the ethical standards. This is a simple “dine and dash”

    In scenario one, IC has personally perpetrated a fraud.

    In scenario two, if BCA still does not have the resources to pay for future work, IC has personally perpetrated a fraud.

  54. Ok let’s take this scenario. Inside counsel (IC) at Big Company A (BCA) assigns work to outside counsel (OC) knowing that BCA does not have the resources to pay its bills. OC bills BCA and BCA fails to pay for, lets say, one year, has IC breached an ethical duty for assisting BCA is procuring work knowing that BCA can’t pay the bills?

    I think a few of you know where this is going.
    Now let’s say the BCA requests that OC perform certain duties that are ethically required but refuses to pay for. Now IC tells OC that it must perform these duties free of charge in order to get additional work. Has there been an ethical violation by IC in this instance?

    Remember that OC is already on the hook ethically for the case at issue which IC has required work to be performed in order for the ethical obligations to be met and has refused to pay OC for it?

  55. “Please don’t tell me that kneepad thingie is patented.”

    Amen. I pray that the kneepad thingie is not patented.

  56. What is really humorous is that there are many attorneys who work for Employment agencies, despite the fact that it is unethical. I had to two down a job at a law firm, because they wanted be to be paid through the temporary agency. Of course the agency kept a certain percentage of the hourly rate I charged. I mentioned the issue with the prospective employer of unethical fee splitting and they said they were not interested in my services.

    So the issue is that the courts and the government will allow a company to do anything for a profit, even fraudulent activities by banks, see the new SCOTUS opinion this week. However, the individual will always be held to the highest standards.

    Isn’t this why the colonist revolted against the crown?

  57. Invention Promotion Companies are a special case. I wouldn’t worry about the applicability of this to normal practice.

  58. This is really funny…

    Do you think that writing junk patents for your big corporate bosses and pushing those junk patents through the PTO is some kind of rocket science ?

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