Don’t File a Patent: A Book by John Smith

011811_0237_DontFileaPa1 John Smith starts his book thanking "Examiner Ms. E.P." of the USPTO for giving him inspiration for his book. "Without your three absurd Office Action rejections, this book would not have been possible." Smith's book is titled Don't File a Patent with the headline caption "the book that the Patent Office doesn't want you to read." Smith is not a lawyer, but rather an entrepreneur and inventor. Smith had no trouble obtaining two patents that covered his relatively worthless invention (designer wheel covers). Then, for his invention with real market value (hurricane window protectors), the PTO refused to issue a patent. (Smith apparently gave-up after three rejections.)

The book is directed toward individual inventors and small companies with little or no budget for intellectual property or litigation. Although the book takes an overly-extreme position, Smith suggests the valid argument that the limited resources of a small entity is often better spent on other business development activities. His "Reason #5 not to file a patent" explains this point:

The patent process costs tens of thousands of dollars. This is a waste of your money. A better investment is making your product first in the mind of your customer. . . . Back in 2005 when I filed my original patent application, I didn't have all this knowledge. At the time, some attorneys suggested that inventors "should wait and not market your product until you have a patent." I'm glad I never listened to that advice. Good thing I started marketing Storm Stoppers right away! Had I waited until getting a patent, I'd have nothing now. No awesome name brand, no millions of dollars in past sales, no thousands of customers, no appearances on CNBC & CNN, no Goodwill donation trips to the Bahamas and no learning and improving my product. Marketing your product right away is the only way to demonstrate that you have a good product.

About one-half of the book is dedicated to explaining why patenting is a waste of time and money for folks in his situation. The other half is devoted to providing some guidance on marketing and manufacturing.

At times throughout the book, Mr. Smith appears so burned by his past experience that he is blinded to the potential that patents can add in certain situations. With that major caveat, I think that the book is a good read and could be a useful tool for containing over-exuberance of innovators.

 

 

235 thoughts on “Don’t File a Patent: A Book by John Smith

  1. I contacted Mr. Smith to get a serial number to see for myself what happened in his storm chasers app’n. He told me that it wasn’t public and that giving me information he has submitted to the PTO would violate attorney-client privilege (as if printing copies of letters from your attorney in your book doesn’t!), but that if I wanted to see his horror experience I should buy his book. Well, I bought it. Here is an email I sent to him after reading just 23 pages:

    Dear Mr. Smith,

    I have only read through page 23 (Reason #2 not to file a patent) of your book so far and am dismayed at how much incorrect information and logically fallacious argument you have put forth in just those few pages. I will address your points (to that page) in turn.

    Introduction:
    You state that the examiner combined the claims from six references to support her assertion that she would be able to assemble your invention, but that none of the referenced prior art is made from corrugated plastic, fastens with 3M Dual Lock fasteners, has been LMI tested to 130 mph, use adhesive primer to fasten to the window frames and plastic panel, and had the commercial success your product has achieved. You then state that “commercial success is relevant in patent law as the PTO never wants to stand in the way of a popular product.” As for combining claims from the prior art, that is not what an examiner does. An examiner can combine the teachings of the prior art, but in general, the claims in the prior art references are not what are relevant to an allowability/patentability analysis.

    On the other hand, the claims that are relevant to the analysis are the claims in your application. While you do not appear to have included them in your book, from the reprint of the third office action, it would appear that they are, for the most part, directed to a lightweight, durable and strong impact barrier system for protecting windows and doors against high wind storm damage consisting essentially of a translucent plastic panel with a front wall and a rear wall with a top side, a bottom side, a right side and a left side, and first, second, third, and fourth corner locations. The panel is adapted to fit over a window or a door, with interlocking, high-tensile-strength fasteners that hold the panel in place, and it includes a loop handle. As for the primary reference (Samford) on which the Examiner is relying, it does, in fact, disclose translucent storm panels, preferably made from inexpensive and durable metal and plastic materials, e.g., quarter inch thick fiberglass. Furthermore, the notes on the references indicate that the Samford and Gower shutters are bolted on. However, the 3M website (link to 3m.com) clearly states that the Dual Lock fasteners “are a fastening solution that can replace screws, bolts and rivets.” As for some of the other features, e.g., a weatherproof strap loop handle, while I understand your disbelief at the examiner relying on a sports toy reference and/or a boat lifeline reference for that, and while rejections can be overcome where the references the examiner is relying on are from “non-analogous art,” here, the features the examiner is relying on those references for are rather common features in many different fields, and she probably could have taken Official Notice of such common nature of the features, but she at least made the effort to show you by proof (other than just saying they are known features).

    Regarding commercial success, strictly speaking, the PTO doesn’t care about the popularity of a product in determining whether to grant a patent. While commercial success IS secondary evidence that can be relied on to show that a claimed invention was not, in fact, obvious (contrary to an examiner’s assertion of obviousness), popularity does not, ab initio and for its own sake, enter into the patentability calculus. In other words, the examiner does not say “oh, this product (blackberries, for example) is used world-wide; it gets the gold star of patent approval; this product (wind-up toilet plungers, for example) has never seen the light of day; it goes back into the queue!”

  2. There’s an east reason to see why there are no movies on patent agents.

    PA007, with license to walk, when you got your patent license, did you skip over a few parts of the Law, rules and MPEP about confidentiality of unpublished applications?

  3. It should be easy to determine the serial number. Just get an examiner to do a UPAD search on claim language.

  4. “And now for the ultimate blame the customer line”

    I kno rite?

    “Ya better be careful 6 – that shtt may have been common place under Dufas, but Kappos done say that aint right.”

    Lulz, he’s entitled to his opinion, I’m entitled to the facts.

    PS, don’t forget the line about the lawyer buddies.

  5. There goes 6 again, practicin his opposite day creative word plays.

    And now for the ultimate blame the customer line:

    Applicants, by pretty much everyone’s estimation, cause every problem there ever has been with the patent system

    Ya better be careful 6 – that shtt may have been common place under Dufas, but Kappos done say that aint right.

  6. “That from the man who creates these problems.”

    I have created no “problems”. Applicants, by pretty much everyone’s estimation, cause every problem there ever has been with the patent system, assisted by their lawlyer boddies. Without them, none of it would have happened.

  7. >>his job is to scam people

    I tell people up front that the PTO is filled with low life like you 6 and that getting a patent can be trying.

  8. IANAE: OK clever boy. I didn’t see you answer my question about other alternatives/costs. Just wise cracking.

  9. dont file a patent another thing that makes paatents worthless or of little value is limiting the scope of claims. This means that new startups cant get going because of pto allowed competition.Clearly the term patent patent needs to apply and be granted to new catigories of invention for full patent term or incentive to create is destroyed again. Not having the money from the first patent means invention black hole formations.

  10. It is because he’s not very good at his job IANAE.

    On the contrary, he’s very good at this. He doesn’t even want to do it because it’s a terrible distraction from his job as a mild-mannered litigator, but super heroes aren’t allowed to take days off when innocent patents are in peril.

    Our reward is that justice has been done. Our invoice will follow.

  11. “Well, ping, actually, I have found that it costs about $4,000 to prepare for an interview, convince the examiner, and get all the proper amendments/responses filed to deal with concerns of the examiner. And, usually, one must speak with the examiner multiple times and bring in a SPE. Sorry, but all that costs about $4,000.

    Sometimes it can be cheaper, but seldom is it.”

    It is because he’s not very good at his job IANAE. That, and that his job is to scam people. Something we all knew a long time ago.

  12. And finally I’ll add, I don’t need the work. I am very busy and actually the prosecution work I am doing now is flooding me and keeping me from litigation and transactional work that I enjoy.

  13. And, by the way, that is the speak with the examiner. I find almost everytime that the problem is that the examiner simply doesn’t understand the technology. And explaining complex technology to the examiner and getting them to the point of allowance is a lot of work.

    I am considered very good at this and have gotten many patents allowed for people like Mr. Smith. Many. I tell them up front: we can appeal or bang it out over the phone. Both are expensive.

    If others have different experiences, I’d be interested in hearing them.

  14. Well, ping, actually, I have found that it costs about $4,000 to prepare for an interview, convince the examiner, and get all the proper amendments/responses filed to deal with concerns of the examiner. And, usually, one must speak with the examiner multiple times and bring in a SPE. Sorry, but all that costs about $4,000.

    Sometimes it can be cheaper, but seldom is it.

  15. The point, NWPA (and a completely reasonable one), is to pick up the phone and talk (or set a time to talk) prior to the $4,000 solution.

    Of course, there will be expenses of properly preparing for that talk, having that talk, and then following up with any actions that may be generated from that talk (which may still entail enacting that $4,000 solution).

  16. IANAE:
    I see you’re going off the deep end again.

    “examiners aren’t even given 10-15…” We are talking about the attorney not the examiner.

    You tell me the options an attorney has to handle an examiner that is applying a bad reference smart guy. And what each should cost the client.

    Attorneys can only offer the possible.

  17. NWPA, I was pulling your chain to make a point. Rather the same point John Smith is making, I think.

    As important as it is to send your kids to college, a $4k solution is not an appropriate solution for your client. Besides, examiners aren’t even given 10-15 hours of “other time” for an interview, so why is it that expensive?

    You propose to handle his case in a way that is completely at odds with his budget and his needs, while at the same time condescending to both your client and the examiner you’re trying to “overcome”. You know, the two parties we’re trying to learn to interact with as if we were all properly socialized human beings.

  18. IANAE: now you see that IANAE, you better be willing to get your chain pulled if you go around pulling other people’s chains.

  19. I do see a lot of Examiners resorting to impermissible hindsight reasoning now that Newman (In re Vaidynanthan) has shut the door on the “motovation to modify” trick that they were pulling for so long.

    As in the case of the “motovation to modify” argument, the MPEP has misconstrued caselaw on impermissible hindsight reasoning to give Examiners what appears to be a license to use impermissible hindsight reasoning with the following form paragraph:

    7.37.03 Unpersuasive Argument: Hindsight Reasoning

    In response to applicant’s argument that the examiner’s conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant’s disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).

    But anyone who has actually read that case can tell you that the Court also said that the elemement lifted from the prior art reference must have been used for the same purpose as that element in Applicant’s claimed invention. So, if the element is not used for the same purpose (e.g., baseball backstop material cited to teach a window cover material, etc.), the impermissible hindsight argument should win, even though a non-analogous art argument is likely to fail.

  20. it usually add about $4K of cost to overcome an unreasonable examiner

    That’s the bad news. The good news is that if you can’t afford bread anymore, you can always eat cake.

  21. John D. Smith:

    I don’t know about you. You are complaining about an examiner not understanding and applying a bad rejection, but there are remedies, which include appeal and a discussion with the SPE or tech supervisor.

    I work with small inventors and deal with these type of rejections all the time. There is always a way out, albeit it usually add about $4K of cost to overcome an unreasonable examiner. I find that the unreasonable examiners get beaten down after a while and leave or learn their art unit better and stop making bad rejections.

    The point is that you ran into a typical problem at the PTO and seem to not have handled it well and now are drawing conclusions and offering advice based on a single experience.

    Does not sound very valuable to me. Sounds like you were probably a bad client or your attorney a poor attorney. I tell my clients that the examiner is a bad one and what it is going to take in terms of time and money to get past the examiner.

    Oh well, my 2 cents. I won’t be reading your book. I live these type of rejections, but only some of the time. Most examiners are pretty good.

  22. 6: “I’m not discussing this with your obviously AI level retarded arse anymore. Wallow in your pit of ignorance and stupidi ty until you wish to extract yourself.” (Followed by 9 more lines of “discussion.”)

    What a diatribe!! Oh, how I love to rattle this Neanderthal’s cage…

  23. NWPA, do you consider my “sucking up” to be a marked departure from the sort of thing I usually say?

    Surely this isn’t the first time I’ve mentioned that many lawyers are completely incapable of having a rational discussion with an examiner that leads to the allowance of claims.

    And why would I care about being “strongly rebuked” by a stranger on the internet? Assuming that by “strongly rebuked” we mean “said some stuff that’s blatantly wrong, some stuff I’ve always agreed with, and some stuff I explained why I disagree with”. So I guess “strongly rebuked” means something like “conversed with”.

    Yet another example of a “Patent Attorney” who wouldn’t recognize a conversation between two humans if it bit him on the behind.

  24. >>It’s pretty startling how often you encounter >>lawyers

    IANAE: you are just sucking up after being strongly rebuked by John D. Smith.

  25. Many of the patent attorneys and agents who have purchased my book tell me they plan to use it to have better communication with their clients,

    It’s pretty startling how often you encounter lawyers who have no idea how to talk to regular people until they read a book about it.

    What do sperm and lawyers have in common? One in fifty million has a chance of becoming a human being.

  26. Hello all you fun posters! Let us not forget my AWESOME & INSPIRATIONAL book and website, link to dontfileapatent.com that inspired all this wonderful discourse and discussion! Many of the patent attorneys and agents who have purchased my book tell me they plan to use it to have better communication with their clients, as well as a teaching tool to temper their clients’ enthusiasm. You might consider these benefits for your own clients.

    Ping, Orlando is about 60 degrees right now, warming up to a balmy 75 today. We’ve had a lot of chilly weather lately, but i’d rather be chilly in Orlando now, versus chilly in my hometown of Chicago this time of year.

    FYI, the Patent Examiner’s 3rd Office Action and her ridiculous 6 prior art patents that she is combining with hindsight reconstruction are all in the book. That way all of you patent law professionals can see the source of inspiration for the book. And, regarding the dedication to Miss E.P. of the USPTO, i think she needs to own her rejections of my patent application. When you see her prior art selections (i.e. the 58 year old patent for a lifeline for boats and Tomer’s baseball backstop patent), you will see she was clearly not using ridiculous prior art. Anyone that would think my Storm Stoppers hurricane protection product was non-obvious needs only to look at Tomer’s baseball backstop (#5,460,363). My Storm Stoppers product is obviously an improvement of Tomer’s. It is all there in my book.

    James Bellie, glad to have your support. Mr. Ping, were you named after golf equipment or tennis equipment? (Ping makes both). Have a nice Thursday all of you!

  27. One way to help out inventors and save money: issue everything that passes muster under 112, and let the courts sort out issues of novelty and obviousness. Given the expense of litigation, few patent holders, properly apprised of the expense, are going to do anything more than frame their patents and hang them up on the nearest wall. As for the numerically tiny remainder, well, litigation can do more to see who invented what than the average examiner can. And it would also incentivize the courts to be more rational and efficient in their work.

    And now for my morning coffee….

  28. No way someone uses “John Smith” over a name like “Mikey Bachynski”.

    Sides which – Johny boy done already said that be his real name – and the other patents do have that name.

    How is Orlando, Johny? Do you know a good publisher?

  29. I think I found his application: 11/475,445 Title: Hurricane protection harness

    Cf:

    First named inventor: Michael Raymond Bachynski

    W

    T

    F

    Because John D Smith is so close to Michael R Bachynski

  30. The Nat. Geo. documentary on North Korea that 6 mentioned is very good. It’s on Netflix’s instant watch service.

  31. If Storm Stoppers were so obvious, how come no other inventor had invented this product prior to me?

    Translation: How could my invention be obvious when it’s novel?

  32. “This conversation is getting away from the real problem. Crazy rejections…”

    We’ve got no evidence other than Mr. Smith’s rather hyperbolic posting to suggest that the rejection was crazy.

  33. Nick Landau says that the PTO is “never adequately funded.” Wait until the House Republicans cut funding even further.

  34. Yeah I still don’t see why 500$ is the magic number.

    It’s $500, not 500$, for Pete’s sake. What grade are you in?

  35. The further problem, Nick, is that the incentives drive lousy examination. Collect enough points and you get bonuses! Get points by cranking out first actions and final disposals as fast as possible. First actions are easy if you don’t read the spec and keyword search on the claims. Sometimes the application is abandoned without your further involvement – for reasons other than the rejection. Full points on that case without any real effort. If an applicant does respond, call it unpersuasive, go final, and trot out a few form paragraphs. Quick easy points. Maybe then it will be abandoned. Or you’ll get an RCE.

    Not every work situation is well suited for compensation by quantity. Examination is not analogous to widget manufacturing or tire mounting, or shouldn’t be. Quantity of examination should not be rewarded with bonuses. Years of service, maybe, but not throughput because that leads to payouts to those that game the system best.

  36. This conversation is getting away from the real problem. Crazy rejections are common because the PTO has a hard time attracting and keeping talented people. Turnover is high. The work is hard, the pay is lousy, and you get guff all day from irrate applicants. The examiners themselves often get burned out on the process. Those that stay might do so out of dedication to the PTO’s mission or out of love of the work, but some certainly stay because their prospects outside of the PTO would be poor. Like most civil servants, they are hard to dismiss for mere poor performance.

    The problem isn’t the patent laws or some conspiracy to hamper the patent laws. The problem is a PTO that is perpetually overburdened with work, never adequately funded, and in need of civil service reform (BTW, I’m a private practitioner, not an Examiner).

  37. If you haven’t read it already, read Charles Dickens short
    story about acquiring a patent. Sounds familiar. Unfortunately, I
    can’t disagree with Mr. Smith. For large corporations, patents may
    be great. For most, forget it. Every patent attorney I know (and I
    know a lot) will tell you how beneficial it is to the client that they continue
    to work overtime at $350.00 per hour, “looking out for their client’s interest”.
    In 99% of the cases, it is only the attorney that makes money.

    link to readbookonline.net

  38. “You’ve still got it wrong.”

    I don’t, nor did I ever “have it wrong” tardface. Your preaching that a pf case must be made first is of course how it is, but it is irrelevant to whether or not someone is, in practical terms, required to persuade either the examiner, the board, or the CAFC/USSC that no pf case was made, or get them to spontaneously declare that none was made based on their own analysis, or whatever else app wants to argue if the office says no IF THEY WANT TO GET THEMSELVES A PATENT. Note that this is not a “burden” or even slightly related to a “burden”.

    “Quit with the wankery that the applicant has a burden to persuade you.”

    I never said that he had any “burden” you tard, this is what I’ve been telling you, but which you’re too dum to understand.

    I’m not discussing this with your obviously AI level retarded arse anymore. Wallow in your pit of ignorance and stupidi ty until you wish to extract yourself.

    “to persuade the applicant, and potentially the BPAI and the CAFC, that some art discloses each and every element/step and limitation. ”

    And nobody gives a sht because that is not what is under discussion. Tard. As soon as you manage to wrap your mind around that you’ll be halfway out of your hole.

    Come in towards the diamond a little bit from out in left field already.

    “You are wasting the client’s money, you are scrwing the system, you are lazy, indolent, a cretin, an ill-begotten son of a canine mother, and you ought to be marched out into the middle of Dulany St. at high noon on a freezing day and summarily piddled upon.”

    Go d you are re tarded.

  39. Yeah I still don’t see why 500$ is the magic number. And like you say, if 500$ (or moreso 250$) is the reward for winning and the punishment for engaging in this act why even have it on the books? Have some balls and simply strike the whole thing.

  40. 6, he never actually tries to bite me. It’s just that his humor is so subtle I stumble into the trap every time and that’s the bite.

    You’ve still got it wrong. The applicant’s right to the patent is presumed as long as he files a bare-bones application. He doesn’t have to persuade anybody of anything at that point. All he has to do is set forth the best mode known to him and a claim, maybe a drawing. And the filing fee, for sure.

    Quit with the wankery that the applicant has a burden to persuade you. You have the entire burden at this point — to persuade the applicant, and potentially the BPAI and the CAFC, that some art discloses each and every element/step and limitation. This is the prima facie case.

    If you reject the claims without making the pf case, you have fkd up. You are wasting the client’s money, you are scrwing the system, you are lazy, indolent, a cretin, an ill-begotten son of a canine mother, and you ought to be marched out into the middle of Dulany St. at high noon on a freezing day and summarily piddled upon. (But that’s only if you fail to make the pf case.)

  41. Why not simplify things and let companies pay the $500 directly to the government?

    Because then the company would actually have to pay the $500, whereas with the bill as is, they will pay nothing – no one would be foolish enough to engage counsel (even inside counsel) to draft a complaint for the hopes of $500 in the aggregate (which would then be split 50-50 with the goverment). Seriously, $250.00 means no one will ever file suit and there will be no deterrent to false marking whatsoever.

    This is covered in Chapter 5 of my upcoming book: How to disassemble meaningful patent protection.

    Ebonics editions available.

  42. Babel Boy, he is not trying to bite you, he’s trying to tell you that your comment was off in left field and totally unrelated to what I was referring to.

    Of course, you’re probably not bright enough to understand this, or else you wouldn’t have made your original comment.

    When you tell someone they have confused persuasion with the proce “the affirmative duty of a party to establish his or her right to judicial relief by convincing the trier of fact”, is that persuading them?

    Rhetorical question.

  43. INANE: “what word other than “persuading” do you use to describe the process of explaining to the examiner that she hasn’t made a prima facie case?”

    I have gotten bitten by this guy’s (?) incisive sense of humor so many times, I’m afraid to reply. I never know when he’s (?) havin’ me on.

    When you tell someone they have a booger hanging from their nose, is that persuading them? Rhetorical question.

  44. Metis: Ya I did superman batman and spiderman all at once in around 1957 also comic books can I get a parent patent.Znutar; Yes if youv got investments in the wrong chain of title definately take your meds and plenty of them.

  45. As I was saying Superman was never cited. and in 2006 along with a new list of Ids’s listed. Then the Issue fee is never matched until 2006. I get that NOW. That was when I was dropped into the hole. But was never again billed when I said SUE Me. He never did. I don’t know what the second set of Ids’s reference too. I was never given a true set of files. But I was called by the Examiner a few times. He told me “I” stopped the files order.

    And now on to the second “Moot Application.” It too never mentioned Superman, why is that? Elementary my dear Watson.Because Superman was never in any Patent site “EVER” until 2004 or later.
    Hmmm so many dates … so many matches.
    And what is this about a Strap?

    *Superman = his alter ego

  46. Folks – friendly reminder to take your meds before posting.

    Ping – just for fun, try passing the first output back through the English to Ebonics translator.

  47. I actually concieved that quite a wile ago in referance to bill fords or mulleys expenditure of fords r+d money Bill is trying to call it a death threat so he must have plenty of my I.P. in his name or investments.there is always people moving in opposite directions to my jokes but the barts wont respond to any thing less that mild only shock therapy. Certain indiuvidules may require repetative dosages under physicians care.Thats a joke for all you nasty vicious vindictive people such as yourself Ianie.

  48. Malcolm: False marking bill reintroduced.

    $500 sounds like a pretty good deal for whatever perceived value a company gets from false marking.

    Why not simplify things and let companies pay the $500 directly to the government? That would free up judicial resources and double the government’s take. The government could then mail the company a certificate to the effect that it is entitled to falsely mark a particular patent on its products.

    I bet we could invest some of those $500 payments in an online registry of all the patents for which false-marking privileges have been secured.

  49. Ianie; youve done it again you inspired me to create a new system of executive bartmen and investor financial catastropohic error behavior correction. The financial decision makers are wired to a mild electrical shock machine and everytime they messup they get a behavior modifying jolt think of the trillions that could have been saved and the pensions that would not have been wiped out after years of hard work.Of course some of these individuals are getting money under the table so other options judicially involved may be nessary and attorneys are giving bad advice with profititing in mind.

  50. Ianie: no nothing definate yet the original filing date will many times get me to it right away.Yes your right again possibly my earliest remberance initially is in the movie frankinstein I mot sure if this is superceeded into my grandfathers invention era initally each one is an investigation.Life cerial was possibley in 1961 as wi lived in the neighborhood of coral ridge market I also invented saralee foods and patio frozen and others in this cluster.Your definatly talking to the original mikey though I may have created the comercial at my uncles house 1963 to five.

  51. ya I had several inventions in the coral ridge market cluster life possibly round shreded wheet sara lee foods and patio mexican foods raid mouse traps probaably others 1961 your right welived about 2 blocks from it the commercial may have come later but Iam mikey the original.Electro shock ya I think that was grosse point woods late fifties likley frankinstien I did all those si fi things.

  52. I think I’m starting to recall you also inventing electroshock therapy.

    ..receive, …invent, sometimes Mikey mixes up his words.

    Must be one of those creative context thingies.

    TINLA,

    details details (and I guess that context kinda requires the actual law there, huh?)

  53. IANAE: “Obvious means it hasn’t been done, but the teachings of the prior art references, when combined in a permissible manner, fully enable one skilled in the art to make and practice the claimed combination without undue experimentation.

    fixt

  54. Hey hey hey, morning sickness is just as much her fault as it is mine!

    Classy, 6. I might just change my mind about you.

  55. MRT: “remember with any marketable invention there is a filer then there is the true conciever the odds are thats me although I sometimes cant initally remember the location and circumstances some times others can before me.”

    This morming, over your bowl of Life cereal, you were starting to remember inventing Storm Stoppers, weren’t you? I think I’m starting to recall you also inventing electroshock therapy.

  56. Ianie; are you so nieve to believe that if you were the worlds only inventor that in adition to stealing invention through direct contact intimidations that higher level blanket methods would not also occur in pto itself.Acording to some they have fired all the corrupt insiders and the electronic file system that I created is hampering potential internal efforts.This remains to be seen as I havent recieved a patent yot they may robbin hood them throuth other rules also.as far as starbucks goes I should be standing outside asking customers to boycott for not paying me for use of my intellectual properties involved in there business.Thats right I am not filing anything right now because of no investment meaning the system is esentially shut down concerning new marketable significant why arent you looking for business for me.No ianie I am attempting to create something thats very bright from a system thats very dim and aworld full of people that are very dimwitted.I would like to see your tax records on indigent contributions Ianie myself even though my income is zero so its tough to contribute.

  57. From long, bitter experience, this is what I’m always going to tell solo inventors and other small clients:

    1) So, you want a patent: what do you want it for? Surprisingly few small clients ask themselves this simple question. You can in fact do a lot of things with a patent, and even with a pending patent application, but if the whole point is to frame it and hang it on your wall, believe me, for the same price you can get *very* nice paintings.

    2) As good as your idea might be, or at least seem to you, be aware that your application may not be granted. Grant rates oscillate around 50-60%, and they are probably much lower for individual inventors, who are generally less aware of the prior art than large corporations. Even if a patent is granted, it will probably not be as broad as you would wish. And enforcement will also be uncertain and vastly more expensive. So, consider the patent as a possibly very useful extra, but do not bet the farm on it.

  58. ed stirling; If your talking to me I dont have any refrences on my website about attorneys and pto wanting money. Only the frustration of a patent system that works against the inventor in every concievable manor possible.Ed if your not earning money in a capitolist system you should move to north korea. No ed I am not to broken up about my own right to recieve a profit from rare marketable conceptions.The true irony of your statement is wile creation everything worth trillions I have recieved nothing wile allthe greedy thieves such as possible yourself have stolen everything what part disgusting dont you understand. the great things that I could have done with that money should put these dispicable thieves in a new class of crime.

  59. John D. Smith: “I wrote the book for the independent inventor who may not know all the costs associated with a patent. My book is for them. My book also lays bare the empty “protection” that some of the posters claim a patent provides. All a patent does is give the patent holder the legal right to sue. That is it. There is no “Patent Police” or “Patent 911” to call when you are being ripped off. So, “protection” is a misnomer. And, if you are unlucky like I was to get a stubborn Patent Examiner, the inventor is screwed. It is like fighting City Hall.”

    Any patent attorney worth their salt would explain all of this (and much more) to a potential client up front, especially when that client is an independent inventor. It’s a matter of course. The fact that any of this took you by surprise tells me something’s amiss.

  60. harriett Korn;True the vast majority of patents are genuinly worthless only a handfull are marketable. This reality is especially true in the last five years as I have refused to be robbed by hoods The solutrion is not in eliminating the patent system but improving it with genuine inovation promoting provisions instead of lobbying political corrupting incentive destroying patent reform proposals that lehee and hatch have birthed. They refused any significant input from me and they and big business should repay america for squandering a billion dollers and delaying integritious reforms.

  61. Why are these concepts mutually exclusive?? I’m assuming that if John could force out a competitor with an issued patent he’d be happy.

    Maybe in this rare instance it doesn’t matter. I don’t know, but to assume that’s the rule is naive.

    Imagine if he had built a new “tool” used in home improvement projects. Are we seriously supposed to believe that an issued patent on such a device wouldn’t be valuable??

    Not every inventor is there to build a business out of his invention. Some inventors are essentially feed-ins to companies that later buy the “invention.” Home Depot will pay a heck of a lot more for the invention if it comes along with the ability to keep Lowe’s out of the market. While contract law can keep the company you’re negotiating with from stripping you of your IP, it won’t do anything with regard to that companies competitors.

    I agree that for low value ideas patent protection may not be an economical solution. But for inventions that could yield millions $10-20K is worth the investment. Moreover, with proper counseling he can do it in a tiered and multi-step process thus mitigating some of the risk on his end. It doesn’t have to be an all or nothing situation.

    I understand John’s frustration, but he is simply applying tunnel vision here.

  62. Michael R. Thomas: youv been granted enough patents we will throw this one to the wind and let the public have it.

    You really think the PTO draws the line at two patents per inventor over a 7-year period? Because I have a feeling quite a few inventors (as well as their corporate overlords) are getting more than that.

    Besides, they couldn’t “let the public have it”, because the application wasn’t even published.

    Michael R. Thomas: This discourages great inventors from filing

    A compelling argument from the world’s only inventor (at the moment), who isn’t filing anything anyway.

    Have you considered standing outside a busy Starbucks and saying that their prices discourage people from drinking coffee?

    Michael R. Thomas: creating a black hole in invention.

    It’s definitely creating something that’s not very bright.

    edstirling: for all the talk on his website about how attorneys and the pto want money, this guy isn’t too broken up over his own efforts to profit, is he?

    I’m sure all he cares about is saving the poor windows and orphans who come from broken homes.

  63. for all the talk on his website about how attorneys and the pto want money, this guy isn’t too broken up over his own efforts to profit, is he?

  64. les; remember with any marketable invention there is a filer then there is the true conciever the odds are thats me although I sometimes cant initally remember the location and circumstances some times others can before me. So theoretically awarding would be incorrect anyways.

  65. ianie; the allow allow reject mentality is a robin hood concept that says youv been granted enough patents we will throw this one to the wind and let the public have it.This discourages great inventors from filing because they know no patent will be granted creating a black hole in invention.

  66. The PTO is full of idot examiners who are incapable of understanding that the applicant has no burden of persuasion until a prima facie case for rejection is made by the examiner.

    I understand that three cases for rejection were made by the examiner. Even if they weren’t technically a “prima facie case”, what word other than “persuading” do you use to describe the process of explaining to the examiner that she hasn’t made a prima facie case?

    Also, I do believe you underestimate 6′s ability to persuade a “lady examiner”.

  67. 6: “My condolences to you that you or your attorney were not persuasive enough to get this lady examiner to allow your patent if indeed it should have issued.”

    This pretty much encapsulates the major problem in the whole process, which leads to the botched examinations Smith complains about.

    The PTO is full of idot examiners who are incapable of understanding that the applicant has no burden of persuasion until a prima facie case for rejection is made by the examiner.

    You’ve got a claim with 6 elements and 10 limitations and the brain-ded examiner (BDE) will enter a rejection based on the assertion that reference A discloses element 1, and that’s the end of it. The BDE then thinks he/she has shifted to burden to the applicant.

    Instead of traversing such nonsense on the grounds that a pf case for rejection was not made, a lot of practitioners take the bait and shift into persuasion mode thinking it will save the client money. Better to force the BDE to either make a choice: make the pf case or file an Answer with the BPAI.

    In those rare cases where an examiner does point out how all of the claimed elements/limitations are met by art, then, of course, the applicant has the burden of persuasion. That is not what Smith appears to be talking about.

  68. Well well, if it isn’t Episode 3: The Revenge of the Smith…

    John Smith: A poster named IANAE flippantly and ignorantly wrote that my product’s components are “off the shelf,” when he or she knows NOTHING about my product.

    I read that stuff about your product on your own website.

    John Smith: If Storm Stoppers were so obvious, how come no other inventor had invented this product prior to me?

    Because that would have made them anticipated. Obvious means it hasn’t been done, but anybody could have done it at the time.

    It’s a very, very basic point of patent law (section 103 of the statute, in fact) that “it hasn’t been done before” is no defense to obviousness.

    John Smith: That is why I say, “Never sue copycat competitors. …”

    I admittedly haven’t read your book, but if your advice to inventors out there is “let people copy your invention”, then in that context I agree with your advice to not file a patent application.

    John Smith: This is one of the things I describe in my book—how wholly unaffordable most patent attorneys are to an independent inventor.

    I definitely agree with that. It’s pretty ridiculous what some of us charge, especially when we apparently can’t overcome what some here have implied was a pretty weak rejection, and we can’t service an individual inventor with what appears to be a very technically simple invention for under 25 grand. Even so…

    John Smith: Let’s say it is close to the average of $300 per hour. If I hired you, I would have to sell at least a dozen of my $24.95 books per hour to be able to afford each hour of your time.

    That’s a pretty silly comparison. The patent should be earning its cost back on the invention, not the book. Your website says you have millions of dollars worth of sales. Now, considering that most lawyers don’t bill you for 24 hours of every single day, I think your economic situation is slightly less dire than you let on.

    John Smith: Computers were produced of parts that came from “off the shelf” in the 1970s. Yet, there are tons of patents on the first computers.

    Yes, but making “the first computer” out of a room full of vacuum tubes and whatnot is pretty clever. I’d be surprised if they got any rejections from the PTO at all. Making a different kind of window covering by putting an existing window-shaped piece of plastic in front of a window and holding it in place by an existing fastener so that it works like the old window covering (only better) is a slightly more nuanced argument.

    John Smith: By IANAE’s own logic, smaller computers and smaller memory chips are obvious, are they not?

    Of course smaller is obvious. Unless you can’t keep making them smaller in the usual way and you have to invent a new way of making them smaller. I’m sure Intel doesn’t have that many patents on “a memory chip smaller than, oh, about this big”. They’d have to claim the manufacturing process or the different structure of their chip.

    John Smith: I think there are a lot of patent attorneys that are out of touch with us independent inventors

    That’s true. A lot of us are out of touch with examiners, too. The end result is needless expense and delay for our clients. I’m sorry you caught the business end of that. However, I don’t think you’re justified in saying that a patent could never be worthwhile for a small inventor. Maybe you got poor service from your patent agent, and maybe you caught your examiner on a bad day. It’s completely unfair to generalize that to “don’t file a patent”, especially considering that you did actually get two out of the three patents you applied for, and it’s not the PTO’s fault those other two didn’t turn into a marketable product.

    Had you limited your message to “patent attorneys are out of touch with inventors”, I’d have wholeheartedly agreed with you.

  69. dont file a patent until oboma wakes up and starts my inventor friendly proposals like government sponsored comittee top selective invention development and startups with the inventor actually still owning the patent instead of being comunistically riped off such as the present patent system and blayth-dole.I think oboma should move to north korea the leaders and him have much in common.

  70. Why would anybody even think mine wasn’t first?
    We have mine. Then we have Superman cut in to halves of mine! And if Superman was as smart as that he would have done mine first! Oh now I get it Superman is a frog. And because he is he jumped to the second set.. How silly of me.

  71. The USPTO is smack dab in the middle of any Patent Attorney’s business model. How’s THAT for an achille’s heel?

  72. “But everyone I know in the business tells small inventors that patents are only worth anything in the hands of someone who can enforce them, and that the proper strategy for a utility case is to use NDAs to seek investors for prototyping and getting the product ready to roll out, and then file a PCT application to preserve filing rights while making and selling the invention to demonstrate establishment of an income stream. Then, with an established income stream and preserved filing rights, the inventor’s company becomes very attractive to purchasers, and a high price can be obtained for sale of the company. Slight variations are possible (i.e., going public, etc.), but this is the basic strategy. The PCT filing gives inventors two and a half years to make it happen or cut their losses.”

    I agree with this.

  73. I wonder if China now carrying their own label… is a good thing. And they realize that the gravy train is now heading back to the US. Or are they going to rub your face in not only making all our products, but keeping chinese money with ther own label all in China too.
    Maybe the US will finally get smart and make it finacially stooopiddd to send work elsewhere. I wonder if the US gets that China Label thing as I do.

  74. Since we have Mr Smith on the line, I have for him a question about the PCT route mentioned above. As I see it, there are advantages for garage inventors, such as:

    1. 18 months of secrecy, during which (at least in Europe) the inventor can get from the EPO a first class international patentability search report and decide whether to let the PCT publish.

    2. The WO publication (with search report) puts the world on notice of the scope of claims heading for issue, if the inventor takes up the PCT “option” to patent world-wide. At least in Europe, it initiates a right for compensation for acts of others, committed as from the date of WO publication, that turn out, after issue, to be within the protected scope.

    3. Nearly all of the Government fees paid within the first 2 1/2 years of pendency are for the international search. Where can you get a comparable private search done for so little money?

    4. The PCT route is so good that US industry is fond of it. Duds are dropped after 2 1/2 years, while cases with ongoing promise are taken further.

    Mr Smith, is that no use to you in the USA? Why exactly is such a WO publication not useful as a persuasive prospectus to attract canny investors in a garage invention with potential, and as a deterrent to those contemplating investing in infringement? (Forgive me if you have answered these questions in your book).

    Another poster upstream laments the lack of safe houses in the USA for poor abused bullied and helpless garage inventors. But is the USA yet using to the full the glorious opportunities set up by the PCT system, back in 1978?

  75. It also draws into question Dennis Crouch’s judgment in picking stories to highlight.

    Let’s see – 72 comments and counting about a book about not patenting – on a patent blog. Iza say that Dennis is pretty darn good at selling popsicles to eskimos.

  76. A poster named IANAE flippantly and ignorantly wrote that my product’s components are “off the shelf,” when he or she knows NOTHING about my product

    Yeah, my main man is like that – but man can he write!

  77. I aints the one makin the lube comments, there Sunshine – that be a direct quote.

    And there be no mention of “lube” in fish sticks comment that your quote is directly related to.

    Or did you forget that ya actually made the comment? In that case, just scroll the page back up a bit – it be there in black and white.

  78. One look at “John Smith’s” parody video on youtube will show you exactly how much weight you should give to the statements in the book.

    It also draws into question Dennis Crouch’s judgment in picking stories to highlight.

  79. Oh man, and the sht they say is so fin hilarious. Like in this scene I just saw as soon as I posted, this lady actually says that americans tremble with fear upon seeing their military marching around in a parade. I trembled so much with lols I had to agree with her.

    The whole time I’m sitting here thinking, yeah we could probably take them over in like a month since it took us like 2 weeks to take Iraq. I still can’t believe we didn’t take that place over back in the day.

    That is, if the chinese agree to pay for the war lol.

  80. Look on the bright side though, you could always live in North Korea. Take a look at “state of mind” on Netflix. All these documentaries about North Korea have to be under the pretext of some humanitarian mission or children’s games.

  81. Thats right dont file a patent unless you got big boys with mopney to develop and market the product. The only problem is even if theres billions to be made they dont want to pay the inventor nothing they want it for free and there willing to wait as long as nessary.Heres the stupidy of it would you rather have a large percentage of something big like a billion doller invention or would you prefer 100% of nothing theyll take the 100% of nothing every time.what part of barts-beligerant,aragant,retartive,thieves dont they understand.

  82. “Everything takes a looooooooonnnnnnnnggggg time with the legal process, especially as it is a civil matter.”

    It is also kind of popular, that makes the process take longer as well.

    “As I say in the book, the Patent Office wants your money NOT your invention. Who could disagree with those facts?”

    I can, as I have wanted a few of the inventions that have come through my office to publish and was willing to give them a patent in order to get it to publish. Indeed, cases that involve a valuable disclosure in terms of what is taught to one of ordinary skill and how clearly it is taught is a very nice motivation to get the office to allow you a patent if you submit a non-pub request. Attorneys note that these apps I mentioned were apps with a nonpub request.

    In many cases though, the applicant submitted an app that is somewhat less than thrilling, (and in some cases has already published before examination begins) as detailed on your helpful wheel. While we intellectually “want” the invention to publish (or it has already) so that we advance the art in some small (and perhaps insignificant) way, there isn’t much beyond legal and factual considerations and the office’s legal obligations to motivate us to allow a patent. The only thing besides those considerations which motivate us is whether or not the attorney or pro se applicant is persuasive. And maybe in some cases whether the attorney or applicant sounds totally hawt lulz.

    On the other hand, sure, we “want” your money as well, in order to continue to operate.

    Although, lets be clear, the patent office doesn’t “want” your money any more than you want a patent. Otherwise, people would not file.

    A great radio program though, it really shows off the simple hometown view of patents and what happens with a person that knows a little something speaking a bit as well.

    My condolences to you that you or your attorney were not persuasive enough to get this lady examiner to allow your patent if indeed it should have issued.

    Perhaps if you’d have hired one of these guys to argue for you before the lady examiner you might have had more luck:

    link to google.com

    lol jk jk. But I would have tried that.

    And I’m behind your publishing the book detailing your experience. I hope it helps some folks.

  83. “In case anyone is wondering, John D. Smith is my REAL name!”

    What was your Application No.? I can find a stormstopper patent application with an female examiner whose initials are “EP,” but the named inventor is not “John D. Smith,”

  84. In case anyone is wondering, John D. Smith is my REAL name! I wrote DON’T File a Patent! for independent inventors and small business people who may not be aware of the games and the Office Action Rejections that awaits them if they are foolish and file for a patent application on their product. I’d like to respond to a couple of incorrect posts here.

    I’d like to say a big THANK YOU to Dennis Crouch for mentioning my book in Patently O. I’ve learned that many patent attorneys are fans of my book’s principles. That is awesome! My credibility is the facts that are in my book, particularly the 10 Reasons NOT to file a Patent! in Chapter 1. I appreciate Dennis for introducing my principles to his readers. To hear a radio interview I did recently on the Allan Handelman show out of Raleigh, NC, copy the below into your browser window. This has a dialogue between myself and a NC patent attorney. As you will hear, this attorney agrees with just about everything I have to say.

    link to hipcast.com

    I appreciate all the thoughtful dialogue that is going on. It is great seeing the passion that exists for the principles I talk about in my book. Some of these posts have inquired about being able to see the prosecution file. The 3rd Office Action from the Patent Examiner, along with the 6 prior art patents that she is combining through hindsight reconstruction, is in the book. Many patent attorneys find reading this information to be very interesting. Although I edited out the Patent Examiner’s name and my application number, I included this 3rd Office Action and 6 prior art examples in the book so everyday inventors could see the B-S that awaits them if they are foolish enough to file a patent application on their invention.

    Some of these posts have claimed that a product they know nothing about is obvious and “off the shelf.” I find that to be amusing. A poster named IANAE flippantly and ignorantly wrote that my product’s components are “off the shelf,” when he or she knows NOTHING about my product. It fascinates me hearing strangers judging a book by its cover and claiming that my Storm Stoppers (www.plywoodalternative.com) product is predictable and obvious, when they know nothing about it, nor my IP. If Storm Stoppers were so obvious, how come no other inventor had invented this product prior to me? The answer is that it wasn’t obvious, and that is why the Patent Examiner has to use hindsight reconstruction and 6 prior art patents that have nothing to do with my product.

    IANAE appears not to know anything about hurricane protection. Good thing that I do! Hurricane protection has been around for 50 or so years. These are metal or wood hurricane shutters and they all bolt to the outside of homes with penetrating fasteners, screws and bolts. My patent application clearly disclaims AGAINST screws or bolts since my product doesn’t even use them. Bolted on hurricane protection is a pain in the neck—it takes hours to install those shutters and they are unsafe, as they trap occupants by blocking all the window exits. IANAE writes, “He’s also pretty lucky that nobody has copied his product, since his website suggests it’s simply a combination of corrugated plastic from the 1970s and off-the-shelf 3M fasteners from the 1980s. No wonder he didn’t get a patent.”

    Actually, IANAE, I’ve had to deal with a bunch of copycats, and I foolishly sued several of them. I spent about $80,000 with my former litigation attorney. It is this knowledge and experience that I put in the book. That is why I say, “Never sue copycat competitors. The only one that makes money in a lawsuit is your attorney.” I lived that!

    IANAE continues, “And luckier that he got to complain about his experience with the PTO in what I assume is a reasonably profitable book.”—Actually, I would rather have my $24,805 I spent on this patent application back. I’m definitely unlucky in that regard. However, I do consider myself fortunate that I learned some very valuable lessons as a result and I poured this knowledge into my http://www.dontfileapatent.com book.

    Assume about my profitability all you want. I’m not going to make a lot of money selling the book. As a comparison, I don’t know what your billable rate per hour is. Let’s say it is close to the average of $300 per hour. If I hired you, I would have to sell at least a dozen of my $24.95 books per hour to be able to afford each hour of your time. This is one of the things I describe in my book—how wholly unaffordable most patent attorneys are to an independent inventor. This is why the book is targeted at the independent inventor & small businessperson.

    Here is another example. Computers were produced of parts that came from “off the shelf” in the 1970s. Yet, there are tons of patents on the first computers. By IANAE’s own logic, smaller computers and smaller memory chips are obvious, are they not? Yet, Intel has patents on its memory chips. By this “obviousness” logic, cell phones are an obvious improvement to cordless land line phones. Laptop computers that play DVD’s are an “obvious” improvement to desktop computers. Yet, there are hundreds if not thousands of patents on cell phones and laptops. Heck, the Top 50 Patent holders year after year are companies that make cell phones, computers and other electronics. IANAE, $25,000 is probably what you make in a week, so the fact that I spent that amount of money doesn’t impact you. To most inventors, $25,000 is a significant sum. I think there are a lot of patent attorneys that are out of touch with us independent inventors—-you may be a good example of this.

    I wrote the book for the independent inventor who may not know all the costs associated with a patent. My book is for them. My book also lays bare the empty “protection” that some of the posters claim a patent provides. All a patent does is give the patent holder the legal right to sue. That is it. There is no “Patent Police” or “Patent 911” to call when you are being ripped off. So, “protection” is a misnomer. And, if you are unlucky like I was to get a stubborn Patent Examiner, the inventor is screwed. It is like fighting City Hall.

    Another poster mentioned that if the Patent Examiner is stubborn and you don’t want to file any more RCE, you just do an appeal. Uh, and that would cost more $$$—almost $10,000 I’ve heard when you factor all the fighting you have to do. And, over what? At the end of this game, you get a worthless piece of paper that entitles you to sue a copycat. Yet, in a lawsuit, everyone knows that only the attorney makes money. My experience with injunctions is by the time you get one, the copycat has moved on and the damage is done. Everything takes a looooooooonnnnnnnnggggg time with the legal process, especially as it is a civil matter.

    In closing, if you read my book, you will understand how us independent inventors think. Filing a patent is a game the inventor cannot win. As I say in the book, the Patent Office wants your money NOT your invention. Who could disagree with those facts? I encourage each of you to visit http://www.amazon.com or http://www.dontfileapatent.com, buy my book and read it. Once you see my facts, as well as the helpful tips for inventors and small business people (learned from the school of hard knocks), I think you will understand and agree why so many patent attorneys support the principles of my book. If any patent attorney would like my help with their inventor clients, my contact info is on the website. Thank you for reading this—JOHN D. SMITH, AUTHOR

    P.S. If anyone has friends or colleagues at the USPTO or at other Patent Law Firms, please tell them about DON’T File a Patent!

  85. The serial number is not released because there is a non-publication request. I agree that some of the rejections were odd (though probably exactly what was instructed at academy), but at that point his attorney should have appealed or gotten an SPE or group director’s attention. And even if the guy “doesn’t want this to become a personal attack against the examiner”, it sorta is because any examiner can determine who she is and the application number in question within a couple minutes. He could have at least left out the snide dedication mentioning her initials.

  86. Gets 5 hits. None appear to be the invention described in the book summary.

    Huh. If his attorney really recommended the top-secret-no-marketing-until-the-patent-issues strategy, perhaps he also filed a non-publication request …

  87. searching published applications:

    in/smith-john and APD/12/31/2004->1/1/2006

    Gets 5 hits. None appear to be the invention described in the book summary.

  88. Let’s assume that an individual has conceived of a new product which is very different from those on the market and which has many advantages over those on the market and which appears to have great commercial potential.

    What do you recommend that he do?

    See what happens if he uses even more lube.

  89. Fellow bloggers:

    Let’s assume that an individual has conceived of a new product which is very different from those on the market and which has many advantages over those on the market and which appears to have great commercial potential.

    What do you recommend that he do?

  90. “Pretty hard to tell whether there is merit to his complaints without looking at the file wrapper. And probably his correspondence with the attorney.”

    True, but it isn’t hard to tell whether there is astounding merit to his message. Plainly there is, as I’m sure you will agree.

  91. Pretty hard to tell whether there is merit to his complaints without looking at the file wrapper. And probably his correspondence with the attorney.

  92. The solo inventor phenomenon is 90% ego-driven. Getting a patent means so much to these guys that they’re willing to pay $10,000 because it’s an affirmation that they are smart. It just like that law degree on your wall to show the world how smart you are.

    Of course, these applicants don’t realize that, in reality, that “affirmation” amounts to nothing more than some kid 2 years out of engineering school who was unable to find any prior art.

    Virtually every one of my solo clients who has gotten a patent has done nothing more than mount it in a frame. And that’s ok. I have three patents and I admit I get a certain glow from them that I don’t get from my law ticket or PhD. (Of course, I didn’t have to pay some lawyer $10,000 a pop for my patents, either.)

  93. IBP – there are pockets of help for the individual inventor. In the SF Bay Area there’s the Inventor’s Alliance.
    link to inventorsalliance.org

    I can’t vouch for it, but it claims to be what you say is lacking. “The mission of Inventors Alliance is to educate inventors enabling them to sell their ideas.” Monthly meetings and the like. It’s been around since 1993.

  94. A patent doesn’t even tend to swing the end result in your favor, it is just a pre-requisite to a good faith statement of a legally sufficient cause of action under 35 USC.

  95. A patent doesn’t even tend to swing the end result in your favor, it is just part of a good faith statement of a legally sufficient cause of action.

  96. In theory, nobody needs a license to sue anybody for anything, unless they’ve been declared a vexatious litigant or similar.

    All the patent does is tend to swing the end result in your favor.

  97. “First, it is a license to sue any party reasonably suspected, upon good faith information and belief, of infringing.”

    Rule 11 requires a little more than a suspicion, however reasonable, that is based only on “good faith information and belief.”

    At least in theory.

  98. Alun–

    Practically speaking, a patent is much more than merely a “license to sue infringers”.

    First, it is a license to sue any party reasonably suspected, upon good faith information and belief, of infringing.

    Further, it is a license to threaten to bring suit unless demands are met.

    Further yet, entirely apart from its license aspect, it is a measure of credibility that can be valuable when seeking partners or joint developers–even expired patents can have this value.

    There are many potential sources of value for a patent, and it is up to the intelligent businessperson to extract the maximum value possible, and to assess that value in light of opportunity costs, implementation costs, and strategic business planning.

    The main problem with independent inventors is not that they are of limited financial means, but that they are usually of limited business acumen. They can personalize the venture too much, and sometimes lose sight of the bigger picture. They can be resistant to diverse ownership, revenue-sharing proposals, and co-operative development. They are too emotionally-invested in their “main chance”.

    THAT is what patent attorneys need to realize when purporting to assist these types of clients. Any decent patent attorney isn’t looking to limit his or her association with a potential start-up to simply patent prosecution. Potential clients should be counseled and assisted accordingly, to maximize value from the entire venture.

  99. I’m hardly under a mistaken impression that examination as a whole is not a lawyer created joke. I might personally do a good job, but that doesn’t mean that I believe the institution, or all individuals therein, do.

  100. it might help open their eyes to hear from one of their own just what in the heck is going on.

    cf

    Attorneys have worked for centuries to turn patents into big ol’ jokes” – per 6

    and

    Without your three absurd Office Action rejections, this book would not have been possible.” – per the author

    W

    T

    F

    6, when you aim the gun of deprecation, make sure you understand which end to point away from yourself.

  101. PCT may give 2.5 yrs, but it’s even more expensive up front… I’ve yet to find a newbie entrepreneur that is willing to pay an addition few thousand dollars in government fees at the time of filing.

    Perhaps it would be better if the USPTO let you delay examination by up to five years, the way many foreign countries do.

  102. “But everyone I know in the business tells small inventors that patents are only worth anything in the hands of someone who can enforce them, and that the proper strategy for a utility case is to use NDAs to seek investors for prototyping and getting the product ready to roll out, and then file a PCT application to preserve filing rights while making and selling the invention to demonstrate establishment of an income stream. Then, with an established income stream and preserved filing rights, the inventor’s company becomes very attractive to purchasers, and a high price can be obtained for sale of the company. Slight variations are possible (i.e., going public, etc.), but this is the basic strategy. The PCT filing gives inventors two and a half years to make it happen or cut their losses.”

    Seems like a good strategery.

    In any event, more people should read his book, it might help open their eyes to hear from one of their own just what in the heck is going on.

    Attorneys have worked for centuries to turn patents into big ol’ jokes, it is only proper that the common man should eventually catch on and lol with them.

  103. Agreed, Mr. Dhuey.

    I have a hard time beliving any patent attorney advised Mr. Smith not to market his invention until he obtained the utility patent.

    It might make sense to wait for a design patent, given the short life of the fad that the product hopes to generate, so maybe he got that advice fromt he attorney who did his design patents on wheel covers, and thought that it applied to utility patents.

    But everyone I know in the business tells small inventors that patents are only worth anything in the hands of someone who can enforce them, and that the proper strategy for a utility case is to use NDAs to seek investors for prototyping and getting the product ready to roll out, and then file a PCT application to preserve filing rights while making and selling the invention to demonstrate establishment of an income stream. Then, with an established income stream and preserved filing rights, the inventor’s company becomes very attractive to purchasers, and a high price can be obtained for sale of the company. Slight variations are possible (i.e., going public, etc.), but this is the basic strategy. The PCT filing gives inventors two and a half years to make it happen or cut their losses.

  104. I used to do a lot of work for individual inventors, although I now work for a firm that doesn’t take them on.

    I was criticised online just for taking such work without giving inventors a pep talk telling them not to bother, and also for not being expert on business myself. My take on that is that what I know is patent prosecution, and I could get them a patent if one could be got, but that they must make their own business decisions.

    I told them up front what it could likely cost, and I told them that a patent was only a licence to sue infringers, including in many cases that they couldn’t realistically expect to be able to afford to sue, depending upon their circumstances.

    I also explained to them the downside of not having a patent, and explained the various barring activities and the downside of waiting to late to file.

    Most still decided to go for it. Maybe it is in some ways comparable with buying a lottery ticket, but hope springs eternal. Sometimes people feel lucky.

  105. I generally like the idea of questioning the value of obtaining patents. Inventors give too little thought to the basic question of what good an issued patent will do them. In particular, what are you really going to do about infringement?

    Still, if the inventor sees a realistic possibility of selling a business built around the invention, the absence of any patent protection could give the potential buyer much pause.

    With limited resources, this is a tough call for the inventor.

  106. I don’t know anything about the book, but I do know about the wilderness in which small inventors exist.

    People with a potentially patentable invention, who are not tied to any larger entity or structure, face what is often a lonely and forbidding path.

    There is no coherent system in the USA for the advantageous exploitation of the IP wealth created by small inventors. There is no centralized source of assistance, no easy-to-access sources of funding at different levels and for different purposes, no “community” as such, no consolidated storehouse of information, no regularized mentoring system, no standardization of disclosure documents and industry contracts, and so on.

    Too bad. Some of the more savvy ones, and some of the lucky ones, survive. Required learning comes at a high price.

    SBA and other similar initiatives serve different interests. This area really is a trackless barren expanse.

    It’s like a trip into the Sahara, with very limited supplies. Good luck.

  107. Held:

    Old news.

    Thats like waiting two days to deliver a comeback.

    Seriously, ya dont have better windmills ta chase?

  108. Patent Entitlement Syndrome claims another victim:

    link to cafc.uscourts.gov

    In his complaint, Pupols appeared to claim that he had invented a device that he described as “controllable reciprocating Ac/Dc powered specialty products for life enhancement,” and had filed the ’582 Application directed to that device. He alleged that Topco incorporated his invention into one of its devices and received a patent on it from the USPTO through “Cronyism & fraud, Theft,” and due process violations by “USPTO agents.”

    Held: get a life.

  109. Assuming, arguendo, that if you can’t tell a book by its cover, you can at least get a hint about its author.

    With that assumption, we need to ask: How does one “file a patent?”

    Does that mean put it in your filing cabinet?

    Would I want to buy a book from a layman who doesn’t know enough to know that “filing a patent” has no discernible meaning in law or practice?

    Could a lack of understanding of what he’s talking about be a part of his larger problem?

  110. Did he really get told to wait and not market until getting a patent? Am I reading correctly. I am just stunned. Wait until a Patent Application is in the USPTO or other country YES… but until patent is absurd. I would like to know what Patent Attorney told him that!

  111. Good to know (upthread) that pounding your head against the PTO wall does indeed “get results” for one’s corporate clients. I’m going to equate that with “wearing down” the Examiner.

  112. Yep – a better investment is to first creat teh value in your product without any protection , then it can be stolen from you by the big guys.

    Well I’ll be – my investments in the big guys will indeed profit from this advice.

    Good Ol John is right (but probably not in the way he meant).

  113. Mr. Small Inventor:

    You have spent the time and money developing your invention and building a market for it. Do you mind if someone comes along, copies your invention and sells it cheaper?

  114. IANAE/Publius -

    I have no delusions that John’s book will convince patent attorneys around the world to close up shop and become criminal defenders (with apologies to David Kelley).

    The fact of the book itself is more significant to me than the specific advice it gives. Patents are supposed to “promote the progress” which I’ve always interpreted that, in part, as motivating entrepreneurs like John. (Consider Lincoln’s famous quote about the fuel of interest and the fire of genius).

    The fact that John is so disgusted with the process that he’s invested his energy into telling others not to bother with it should get our attention. From that point, it’s up to everyone individually to decide whether this is an isolated event, or symptoms of deeper problems of the patent system as whole.

  115. If the rejection is wrong, and the Examiner will not listen to reason,

    It’s more or less inherent in the process that if the applicant thinks the rejection is wrong and the examiner will not listen to reason, the examiner also thinks that the applicant’s argument in response is wrong and the applicant will not listen to reason.

    then often the best option is appeal, and the earlier the better.

    Going back to the “practical advice” theme, someone with a single product that is quick to market and just as quickly copied (such as our protagonist) will probably realize more harm than good from spending several years in the appeal queue.

    It sounds like his major problem was that his agent got all caught up in how he normally represents more sophisticated clients with bigger portfolios, deeper pockets, and more patience.

  116. Patrick – “I’m not saying you shouldn’t file RCEs (or patents for that matter). You gotta do what you gotta do … but the typical “pound your head against the brick wall” strategy that gets results for your corporate clients may not make sense for your entrepreneurs.”

    Who said anything about RCEs or about pounding your head against a wall? What I am saying is that Smith’s idea that you never file patents on anything, or that practitioners should refuse to help small entity innovators to file patents is nonsense.

    For the record, I don’t believe in the RCE gravy train. If the rejection is wrong, and the Examiner will not listen to reason, then often the best option is appeal, and the earlier the better.

  117. My point was the scofflaw had likely moved on to his next scam (hurricane season had likely come and gone) …

    Well, hurricane season came and went in 2004, and this guy’s still selling his plastic window covers. Seems there’s always another hurricane season on its way.

    If he hadn’t sued the guy, maybe the guy wouldn’t have moved on at all. But if he had any sense, he’d have simply moved on to selling the identical product with a different name, unless he was just that obsessed with being a scofflaw.

    Still, I persist in being amused that he thinks a “better investment is making your product first in the mind of your customer”, when he’s apparently just as powerless to enforce his trademarks. That’s some serious genre blindness.

  118. IANAE,

    My point was the scofflaw had likely moved on to his next scam (hurricane season had likely come and gone) … I gathered from the book that all there was left to do was pick up the pieces, and it cost more money to do the picking that there were pieces to pick.

    I’d love to see a book about how clients can tell whether they’re getting practical advice that is well tailored to their particular business and economic situation.

    I don’t think you need a whole book for that … reading my posts, one could probably compile a series of questions to ask, the answers to which will tell you whether you’re getting good advice, or attorney rhetoric…

    I’ll probably get around to that someday…

  119. What good is an injunction against a scofflaw?

    You’re kidding, right?

    Injunctions are for scofflaws. They’re not much use against anyone else, to be honest.

    You make a good point in your other post. Lawyers do lose sight of how the law affects their clients. I’d love to see a book about how clients can tell whether they’re getting practical advice that is well tailored to their particular business and economic situation. Unless this is one, but I gather from the title that it isn’t.

    It would help avoid those uncomfortable conversations like this one:

    Client: This is madness!
    Patrick: No, this is Patrick!

  120. Ping: “Sell the invention to an NPE with an exclusive license back and a piece of the pie of any litigation efforts.”

    Like I haven’t thought of that? Finding NPEs willing to risk money on early stage, unpatented inventions is tough. I have a strategy for that, but its a tough sell.

  121. Publius,

    Whether we should advise clients to not file patents is not the point. Rather, John’s tale is important because lawyers too often lose sight of how the law affects our clients lives in a very real and personal way.

    Take the simple matter of PTO fees, for example. The PTO bureaucracy demands a fee from you for just about anything you want to do … Paying $400 for an RCE might not seem like a big deal, but that could be two weeks worth of rent for some people …

    I’m not saying you shouldn’t file RCEs (or patents for that matter). You gotta do what you gotta do … but the typical “pound your head against the brick wall” strategy that gets results for your corporate clients may not make sense for your entrepreneurs.

  122. It is a fact that the vast majority of patents are worth nothing.

    cf

    uncork some of the creative genius that patents keep bottled up

    W

    T

    F

  123. His experience suing the guy for trademark infringement, and collecting what turned out to be a worthless judgment is detailed in the book.

    Didn’t he get an injunction?

    We’ve severely underestimated the ability of this man’s product to withstand the impact of all things irony.

  124. Well, I would ask now many times “John Smith” (if that is his real name) asks who was “first” when he buys a “Made in China” product from Walmart? My guess is zero.

    And, from this realization flows the understanding of the value of patents to an innovator. If your innovation is cold fusion, you don’t need a patent because no one knows how to accomplish it, or could even guess, based on the state of the art. But, if your invention is a somewhat less startling advance, you may need patent protection to overcome the brute force of marketing power when someone decides they like your invention – but they don’t like your claim to have thought of it first, even though they got the idea from you.

    Sure, most patents never make back the cost of patenting. But then most small businesses fail anyway in this country don’t they?

    I always inform my small inventor clients of the odds of success with patenting. That usually does not discourage them, any more than the odds of succeeding with a small business in this country. Maybe they think, nothing ventured, nothing gained. And who can say they are wrong, if they go into it with their eyes wide open?

  125. Iza cant believe that the most obvious solution has not yet been floated:

    Sell the invention to an NPE with an exclusive license back and a piece of the pie of any litigation efforts.

    The NPE would have the deep pockets, would be immune from the nuclear counter attack and the policies advanced by the patent system would still be met.

    That’s a win for everyone.

    Just an observation, mind you.

  126. IANAE: “He’s also pretty lucky that nobody has copied his product”

    Actually someone did copy it, along with his logo. His experience suing the guy for trademark infringement, and collecting what turned out to be a worthless judgment is detailed in the book.

  127. The book might be a worthwhile read for starry-eyed inventors, even if I don’t necessarily agree with the thesis. Too many times I have seen a fledgling entrepreneur spend his last dollar to fight with the USPTO, despite my attempts to explain the reality of the situation. Such clients are rarely happy and just end up blaming the patent attorney, becoming insolvent, and not paying the patent attorney’s final bill.

  128. However, focusing on obtaining a patent is not necessarily the first thing an inventor should do.

    It’s necessarily one of the first things he should do, if it’s the sort of invention that would need patent protection to be successful in the marketplace. For example, if your product is (as near as I can tell) essentially a large sheet of not-plywood that anybody could copy.

    Not that this guy is completely opposed to dealing with the PTO to obtain exclusive rights – he’s got three registered trademarks.

    He’s also pretty lucky that nobody has copied his product, since his website suggests it’s simply a combination of corrugated plastic from the 1970s and off-the-shelf 3M fasteners from the 1980s. No wonder he didn’t get a patent. And even luckier that he got to complain about his experience with the PTO in what I assume is a reasonably profitable book. So few people recognize the role of blind dumb luck in those few inventions that succeed as business ideas, or in so many of those that fail.

  129. Dennis,

    Thanks for picking this up. I spoke to John Smith on the phone shortly after my first post about his book.

    I posted an update today called Don’t File A Patent – Who Needs It?

    Every patent attorney should read about John’s experience.

    As far as the serial number, he kept most of the information private. I get the sense that John doesn’t want this to become a personal attack against the Examiner. But the last rejection, a hindsight-riddled 6 reference combination 103 rejection is in his book … along with the absolutely ridiculous claim amendment and argument his attorney was making.

  130. The “insurance” analogy from IANAE is useful. I think any proprietor of any small business would tell you that to succumb to the blandishments of every insurance salesman would be to see all the profits of the business consumed in insurance premiums. The skill of the business owner lies in deciding which insurances are a must, and which are a mere extravagance.

    And for that debate, we should thank “John Smith” (another pen name perhaps?).

  131. I do find it funny how applicable the “if you have a hammer every problem looks like a nail” mentality applies to some people in this group.

    This guy may be one of those Jerky A-holes with Opinions based an Inability to see the bigger picture; we have all had clients that assumed because they were technically proficient, they understood the nuances of patent law. However, focusing on obtaining a patent is not necessarily the first thing an inventor should do.

  132. Without any negativity toward the USPTO or its practices, any would be entrepreneur is much better off using resources to develop a practical business plan than to spend time on a patent.

    An independent inventor should estimate the production costs and determine the actual functionality of your invention and talk to people in the channels of distribution you expect your product to sell. You can discuss a lot without getting into how your invention works.

  133. It is a fact that the vast majority of patents are worth nothing.

    That fact is equally true about insurance policies, and in both cases the one you end up needing is way more than “nice to have”.

  134. “With that major caveat, I think that the book is a good read and could be a useful tool for containing over-exuberance of innovators.”

    True. Most patents are never commercialized and having them doesn’t always translate to business success, although valid and enforceable patents covering commercially viable innovations are nice to have.

  135. Vast majority useless, Harriet? That can’t be right, can it. The vast majority of patents are there to provide the vital stock-price-nurturing function of building a longer list of patent numbers than any of the corporate owner’s competitors can boast. In the macho exchanges between CEOs and the respective teenage Wall Street analysts, length matters. Or do you disagree?

  136. (Which it could. The Constitution grants the Federal Government the power to grant patents, but does not demand that it actually exercise that power.)

    Uh oh. Them’s fightin’ words around these parts, Harriet.

  137. It is a fact that the vast majority of patents are worth nothing. Either they cover insignificant changes to existing product, or they otherwise cover ground that the rest of the world simply does not care about. The putative benefits are mostly ephemeral. The costs of getting those patents, on the other hand, are hard, quantifiable, and to many small businesses, onerous. I sometimes wonder what would happen if Congress decided to do away with the patent system entirely. (Which it could. The Constitution grants the Federal Government the power to grant patents, but does not demand that it actually exercise that power.) Sure, the patent bar would suffer terribly, but might not such a move uncork some of the creative genius that patents keep bottled up?

  138. Smith had no trouble obtaining two patents that covered his relatively worthless invention (designer wheel covers). Then, for his invention with real market value (hurricane window protectors), the PTO refused to issue a patent.

    Yet another victim of the PTO’s allow-allow-reject mentality.

    Clearly, the lesson here is that if anybody anywhere has a single negative experience with anything, doing that thing is always a waste of time and money for everybody.

  139. >he is blinded to the potential that patents can add in certain situations.

    Care to elaborate on this, as applicable toward individual inventors and small companies?

  140. Sounds like the results one would expect when Big Business decides patents are not good for them and lobbies the Supremes, the Federal Circuit, the Congress and the PTO to make it hard on the little guy.

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