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.

 

 

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

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

  1. It’s offensive to guarantee results?

    Help me out, my main man, why is this bad and what does this have to with “quality”?

  2. This just reminds me that I am always hearing about “quality” products, jobs, etc. in the corporate world as if “quality” equals “high quality”.

    I find that almost as offensive as when people “guarantee results”.

  3. This just reminds me that I am always hearing about “quality” products, jobs, etc. in the corporate world as if “quality” equals “high quality”.

  4. Malcolm: Taco Bell is a perfect example of a company that has made billions of dollars without patenting its flagship products.

    That’s presumably because all of their “flagship products” are ancient traditional Mexican folk recipes that form part of the prior art, and not because the quality of their “beef” borders on non-statutory subject matter.

    Also, is “100% USDA inspected” supposed to impress anybody? Surely the stuff the USDA deems unfit for human consumption is, by definition, “USDA inspected”. It’s as reassuring as when Stephen Colbert refers to one of his segments as “award-eligible”.

  5. The fast-food company said that its beef is “100% USDA inspected,” and insisted that its meat mix is “88% beef and 12% Secret Recipe.”

    Taco Bell is a perfect example of a company that has made billions of dollars without patenting its flagship products.

  6. NAL I am sure that if it took 3+ years to obtain a driving licnes the system would indeed have been changed long ago.

    Or if driver’s licenses were routinely handed out to 12 year olds who weren’t entitled to them.

  7. There doesn’t seem to be any shortage of designs to go around. As far as I can tell, you and ping are the only degeneracy.

  8. IANAE, you’ve succeeded!

    I give up. I don’t care for this anymore–you’ve succeeded in making it boring.

  9. You see, NAL, what happens when you let your assistant draft your response?

    Fool me six times, shame on you. Fool me seven or more times, shame on me.

  10. Thats some unusually weak carpet bombing there my main man – what’s up with that? Getting all “nice” to Dim?

  11. Thats some unusually weak carpet bombing there my main man – what’s up with that? Getting all “nice” to Dim?

  12. Thats some unusually weak carpet bombing there my main man – what’s up with that? Getting all “nice” to Dim?

  13. Thats some unusually weak carpet bombing there my main man – what’s up with that? Getting all “nice” to Dim?

  14. Thats some unusually weak carpet bombing there my main man – what’s up with that? Getting all “nice” to Dim?

  15. The primary purpose of the patent system should be evidencing conception in a secure environment the initial disclosure document program should be returned to service to economically register intellectual property in potential inventorship dispute situations by filing within 3 days of another party and should be an evidencing method the 90 day improved provisional for 2 years improvement time. then the non provisional after that with one year.In indegency or low income situations where reduction to practice is not phesable The intellectual property should be retained as the filers for 20 years.

  16. the value per cost basis of a registration only system would skyrocket – dwarfing anything possible with tinkering with modified examination standards.

    Well, yeah, but you could get even more value per cost if people didn’t have to bother with registration in the first place. Just sue whomever you like, and produce in court some sort of proof of your date of invention.

    It all depends on what you consider “value”, and from whose perspective you want to realize that value.

    Examination is a very good idea. It weeds out nearly half of all applications, and it focuses the remaining ones through the lens of the cited art. It makes applicants think, at that early stage, about whether or not they really need or are entitled to a patent. What’s more, it spreads the cost of examination over all users of the system, rather than piling it on top of the poor soul who wants to enforce his only patent. It’s not perfect as it stands, but it’s definitely a step in the right direction.

    It’s silly to give up on examination just because it has some implementation issues, when those issues could be addressed. Especially when the main issue is capacity, which the PTO is already addressing by finding new places where it can hire and train examiners.

  17. IANAE,

    Many share my “passion” that the current system does not work and must be replaced. I would daresay add, that there is a very small minority that think that the current system is not broken, that the system does work (and you are further removed from reality if you are now advocating this position). Quite a few, including IBP, who rather set out a sound logical argument, think that a pure registration system is the right answer. Or do you now also think that BPI and I are the same person?

    And people spending money on the only system available is a poor argument for your cause. The US patent system lacks a competing system for you to make any such remarks and count them as viable positions. All uesrs of the current system have no choice if they want the protection of a patent. They have not been asked the question of whether they would prefer a pure registration system or not, so you cannot put those words into their mouths. Your fallacious argument fails.

    The “quasi-widget-whatever-you-call-it-system” is not the mian point of my position. You are so eager to not listen that you missed the point I made that the value per cost basis of a registration only system would skyrocket – dwarfing anything possible with tinkering with modified examination standards. It simply isn’t a matter of widgets or wudgets – examination itself is failing. And it is failing at a very expensive price tag (being the only way currently to get the patent is not a strong argument for your position).

    I am sure that if you asked people if they could have their patent – for 97% that patent would have the exact same value – right now and for a fraction of the cost, that the overwhelming response would be a giant YES, I WANT THAT.

  18. I would have to agree with mr. Smith dont file a patent unless you include the actual inventor on the application because its not inequitable conduct situatoion.

  19. NAL: Because it does not work.

    That’s your opinion. The many for-profit companies who make business decisions to spend lots of money on the system would seem to disagree. And it’s their money, after all.

    NAL: And believe it or not, more than one person can believe in the pure registration system.

    None of them share your fiery passion for sending the quasi-widget-whatever-you-call-it-system to an early grave.

  20. Why shouldn’t that money stay in the system and be spent to improve the process?

    Because it does not work. See my earlier comment about insanity.

    And believe it or not, more than one person can believe in the pure registration system. So calling me the name of some other poster who believes in that system only shows your ignorance and much-too-high view of your own beliefs.

    You clearly lack any touch with reality.

  21. O and IANAE, don’t argue with the NAL. She’s NAL after all, she can’t be reasoned with, you must speak down to her and then move on.

  22. “Once again–there are MANY people living/working in the DC area who are compensated less than examiners, and they can make a go of it.”

    How many of those are qualified? How many of those that are qualified had all C’s and D’s on their report cards? Please don’t even act like there are qualified technical people just laying around every other street corner in DC. The PO imports people from all over the US.

  23. the private sector and the public sector are VERY different, what works in one often does not work in the other.

    Repeating that statement won’t make it true either.

    Sure, some things might not work the same in the public sector as they do in the private sector. However, hiring more people when more work needs to be done is obviously not one of those things. More people do more work than fewer people, wherever they are.

    Besides, the PTO is pretty close to operating like a private sector organization. It’s self-funding and self-managing. It’s probably just about achieved low enough employee morale to compete with the big firms. The big differences are that it doesn’t stand to benefit from increased productivity (though at the moment management wants it anyway, so that’s not significant), and it doesn’t stand to benefit from increased profitability (which requires action by Congress to fix).

    And, of course, it can’t turn away clients, and it has very little control over the total demand or cost of its services (most of which is generated by patent agents). So naturally, it’s going to have workflow issues no matter what it does.

    You’re surprised that they can find examiners with the salary they pay?

    I’m surprised they can find that many examiners in the DC area at any price, quite frankly. No wonder examination quality is so inconsistent. But do please explain again how “huge” the total compensation for examiners is, compared to other jobs they could get with similar qualifications.

  24. IANAE, a statement is not made true by simple repetition.

    Hiring solving things: the private sector and the public sector are VERY different, what works in one often does not work in the other.

    You’re surprised that they can find examiners with the salary they pay? How tired that is. Once again–there are MANY people living/working in the DC area who are compensated less than examiners, and they can make a go of it. We’ve been through total compensation before–it is HUGE. Would you like the thread?

  25. NAL: I can deal with the odd name calling

    It’s not that odd, under the circumstances. But I’d rather talk about quasi-average widget production units, wouldn’t you?

    NAL: ASk any real examiner what this “average” time means and you will see just how meaningless your play on words is.

    What did they tell you when you asked them?

    Whatever metric you have for measuring examiner throughput (and there will always be one), examiners will look to get the most counts for the least effort. Because they’re human. Sure, one could come up with a better metric, such as scaling counts up and down based on page and claim counts and art class, and it would probably be a relatively straightforward thing to do, but your continued fixation on the problem to the exclusion of the other very real problems (there will always be an average, and dividing total examination resources by that average will still give you too small a number) continues to puzzle me.

    Examiners wouldn’t even have a chance to game the system if the backlog were manageable. The oldest case in each of their dockets (or whatever it is they’re required to do every other bi-week) would be much younger.

    NAL: We have seen that “hiring more to get through this” is not a viable solution, as pendency has gone up with increased highering, bad examination has gone up with increased highering and the system simply does not work.

    Hiring more is a viable solution, but it has to be done in a sensible way. Hiring new examiners while losing experienced examiners at the same rate isn’t helping. Hiring doesn’t help generally when you run out of local people who can handle the job. Frankly, I’m surprised they could even find 6,000 examiners in the DC area for the salaries they pay. And of course, rapid hiring will always reduce throughput in the short term because experienced examiners spend time to train new examiners, who are themselves inefficient at first. It happens in law firms, too. Look how much of a student’s or first year associate’s time gets written off. And even if you get all that sorted, pendency will still go up as long as the filing rate increases.

    You can’t say “hiring more people to get more work done simply does not work”. It defies all common sense. Every company in the world hires more people when it needs to push more paper or assemble more widgets or ship more packages, and it always works. If it didn’t, every company would be AI sitting in a room with a patent on the wall, and it would be staggeringly productive.

    NAL: That revenue generated would be freed to spend on other areas by the applicants and would truly be infused into the economy.

    Applicants are free to do that already. Applicants choose to file patent applications. In the face of all the evidence, they see some value in the patent process, and that’s where they choose to put that money. Why shouldn’t that money stay in the system and be spent to improve the process?

    NAL: Safety is not a factor with patents

    Sure it is. You could be (literally) minding your own business when it gets totaled by someone else’s patent. It’s no consolation that his patent is registered, because there’s no way his insurer is going to cover your losses.

  26. Please excuse the spelling errors. The baiting by IANAE is senseless and infuriating. He is obviously an intelligent, but very bored individual – and a great waste of talent. If he were to actually use his intelligence for constructive means, the comment section on this blog would be so much more worthwhile.

  27. IANAE,

    Please respect what I say and at least have the courtesy of addressing the points in a meaningful manner.

    I can deal with the odd name calling and with disagreements that have some reasonable foundation, but your comments rank right up there with Ping’s for lack of value.

    You delve into semantics with the “average examination time” argument. ASk any real examiner what this “average” time means and you will see just how meaningless your play on words is.

    The point about “Clearly, the applicants (and those of us who represent them) want both quality and throughput.” is that you want what is not possible. We have seen that “hiring more to get through this” is not a viable solution, as pendency has gone up with increased highering, bad examination has gone up with increased highering and the system simply does not work. More of the same and expecting different results is a sign of insanity.

    The revenue generated verus what they spend is a false argument. That revenue generated would be freed to spend on other areas by the applicants and would truly be infused into the economy. Clearly, taking that “revenue” level per Office employee and considering the resultant value (as opposed to other investment options) you would clearly see the fallacy of you rargument. If you were disposed to actually care about the fallacies oof your arguments, that is. But others reading this will understand and will care.

    Your driving cars example is likewise lame and disengenuous. Safety is not a factor with patents – so that line of argument is dead on arrival. Millions of dollars and millions of applicaitons are not tied up in the DMV queues – so that line of argumetn is also intellectually bankrupt. I am sure that if it took 3+ years to obtain a driving licnes the system would indeed have been changed long ago.

    Ty to stay on topic and away from your self-indulgent mocking, IANAE, and at the very least, try to have some self-respect.

  28. NAL: a government body that insists that every application requires some average time

    I don’t think the government body insists that every application requires the exact same amount of time. Rather, they’re insisting the much more reasonable thing that there exists an average amount of time that examination takes.

    NAL: and that examiners maintain their jobs by throughput, rather than by any sense of real examination quality.

    Funny, but the “the beatings will continue until morale improves” crowd insists that the whole system is inefficient and examiners should have way higher throughput (with the implication of less time per count).

    Clearly, the applicants (and those of us who represent them) want both quality and throughput. Clearly, a quality examination takes a certain amount of time on average, whether that’s more or less than the time currently allotted to examiners. Examiners need ongoing training like the rest of us to keep their examination techniques current and efficient, but chances are there still aren’t enough of them to do the job.

    Of course, none of that means that their job isn’t worthwhile, or that it couldn’t be made more worthwhile by letting the PTO “waste” the examination fees it collects on actual examiners who do actual examination.

    NAL: It is time to simply abolish this horrific waste of resources (How much did the Office spend last year?).

    They spent significantly less than the revenue they generated. Not many government offices generate this level of “waste”.

    NAL: It is time to try pure registration again.

    Let’s do that for driving cars, as well. There’s always a long lineup at the DMV, and while the test is hard enough to fail some people it’s far from good enough to clearly and convincingly presume that a licensed driver is any good.

    Can you imagine that lineup instantly disappearing? I’d gladly trade that for the traditionally expected 3% increase in road accidents and litigation. Of course, I would also expect that 3% to drop as well because people will quickly realize that driving a car in a loose style, one geared only to get by the other cars on the road, will not be fit for pressing forward in the inevitable litigation battle. With costs being borne by those who choose to drive, rather than by the public at large, the value per cost basis would skyrocket.

    I’d stay off the sidewalks for a little while, though.

  29. All these points under discussion reflect the inadequacies of attempting examination by a government body that insists that every application requires some average time and that examiners maintain their jobs by throughput, rather than by any sense of real examination quality.

    It is time to simply abolish this horrific waste of resources (How much did the Office spend last year?). A pure registration system will place the onus on those that wish to spend on their patent rights. Combine a pure registration system and a loser pay all costs lititgation standard and the truth of patentability will be left where (and how often) it is truly needed.

    Having a patent (individually) may mean less, and the value of any particular property so achieved will undoubtedly mean less, but isn’t the argument so often repeated here is that what is patented really is not worth the value ascribed to it anyway? So in a very real sense, having a registration only system would be much more efficient. Same true value acheived by an extremely small fraction of the current costs.

    The law of unintended consequences would, I believe, also drive the general state of applications to be of a much higher quality (for those who are serious). Knowing that the true mettle of the patent will not be tested by a heavily constrained government agency, but by a well healed and determined adversary, will drive those who are serious to take the drafting stage much more seriously. As merely obtaining “a patent” loses its power, obtaining a high-quality rigorous, well researched and well written patent will be the only insurance of having a patent right worth fighting over.

    Of course, the 97% of patents that are never litigated would still achieve the “status” of having a patent and provide the applicant with something nice to hang on the wall, but at an incredible cost and time savings.

    Can you just imagine the backlog of more than one million applications awaiting some type of Office action instantly disappearing? I would gladly trade that for the traditionally expected 3% increase in court actions. Of course, I would also expect that 3% to drop as well because people will quickly realize that those patents written in a loose style, one geared only to get by the Office examination, will not be fit for pressing forward in a litigation battle. With costs being borne by those who choose battle, rather than by the public at large, the value per cost basis would skyrocket – dwarfing anything possible with tinkering with modified examination standards.

    It is time to try pure registration again.

  30. Peer-to-Patent IS a try. It is a first step on an inevitable journey.

    If it did take 50 years to achieve a workable examination-based PTO, would it be worth it, assuming there were incremental benefits on the way?

    My only “self-interest” in the PTO is the value that it provides to society. It bestows property on people pursuant to application therefor, and it is the concept of property, along with private ownership thereof, that has been a cornerstone of western civilization.

    I happen to agree with the conditions set forth for patentability. I want all patents granted to be valid and enforceable. I want a meaningful examination that supports at least a C&C standard. I want a more cost-effective and specialized dispute resolution forum. I want examiners who understand and properly apply the law. And I want it all done sufficiently quickly.

    This may be idealistic, and may not be the view held by some who work for entities that profit from junk patents–but it should be recognized as the view that is best for society as a whole.

    Like it or not ping, things are going to have to change. The only extent to which I’m being political is that given two options, one of which results in increased government and the other of which results in decreased government, I will initially prefer the latter as a starting point for discussion.

  31. Wow, a veritable wall of info to read through during my morning, um Consitution.

    IBP – ya fit right in with the other political hacks with your “its gotta be” views. Weren’t ya bashing poor kmf for the same line of argument?

    and hence we try Peer-to-Patent” Um, sure, if ya wanna call the like totally pathetic participation in that program a “try”. How many zeroes behind the decimal point is the percentage participation in that program compared to all applications? Thought so.

    With a beginning like that, weza be up to full speed in about fifty years and a backlog O billions I reckon.

    The PTO will become like other governmental bodies–it will perform basically review functions. The interesting thing is that the PTO might not have to compensate its future examiners, as they are driven by self-interest to perform or contribute to the examination.

    Full blown chuckles there, ya sound just like the anti software patent folk – they will work for self-interest. Talk abouts a need for reality check time…

  32. That was thorough. Merci kmf!

    You could have added something about freedom to operate, patent infringement, and all that jazz. One might well be obliged to play the patent game whether he likes it or not.

    What would Mr. Smith do if someone knocked on his door and shoved a piece of paper marked “United States Patent” in his face? Just ignore him? Write another book ranting about the cr*p granted by the patent office? (it’s always the other guy’s patent that shouldn’t have been granted, isn’t it?) He might perhaps be happy of having a (pending) patent of his own to use as a bargaining chip or for retaliation.

    I’d be curious to see the actual claims filed, from the rejection excerpts it would appear to me that these were probably quite problematic.

    – or it was clear the Examiner’s point was valid – yes, they do, in fact, sometimes come up with very legitimate rejections –

    Purr purr purr purr. 😉

  33. kmf–

    I agree totally with NWPA.

    Anon–

    Since when has the PTO really cared about the law????

    Do you think that the PTO just sits back and takes orders from Congress?

    Who is going to hold the PTO accountable for ignoring any purported “mandate” in 131?

    Have any applicants brought civil actions for damages resulting from ineffective or effectively nonexistent “examination”?

    Have any applicants sought an order of mandamus to compel the PTO to consider a piece of applicant-submitted art, or to perform any particular examination function?

    What exactly IS the “mandate”? What exactly does “examination” mean?

    A “mandate” that is brushed aside or considered substantially unachievable is no mandate at all.

    I know my premises are thin. It’s the only way I can make sense of what currently is allowed to pass for “examination”.

    The PTO must know that in the modern era, it is not best positioned to perform comprehensive examinations. Sure it can contribute to examination, but it cannot by itself examine effectively.

    They MUST know that a distributed model of examination, undertaken by interested parties, would have advantages.

    Of course it would also have disadvantages–i.e. lots of references and arguments to sift through–but with pendency already at 4 years, if that remains acceptable, there would be plenty of time to solicit and review submissions.

    The PTO does know, and hence we try Peer-to-Patent. It is only the beginning. Face it–for whatever reason, gov’t as represented by the PTO is incapable of examining. And they know it.

    The interesting thing in the future will be how the mechanics play out, and whether or not there will be revisions to 35 USC to reflect the new paradigm.

    Will there be qualifications for reviewers? Will there be a graduated reviewing system? What will be the form of submission? What type of content will be sought? What weight will be afforded the content? Will an expert system be set up?

    Will the core functions reserved for PTO “examiners” be increasingly related to data mining, and will they be progressively outsourced?

    The PTO will become like other governmental bodies–it will perform basically review functions. The interesting thing is that the PTO might not have to compensate its future examiners, as they are driven by self-interest to perform or contribute to the examination.

    We’re in a transition period right now, with the PTO all but having given up on the 131 “mandate”. The examination “mandate” is currently illusory, although at some point it is likely to be substantively revived.

  34. kmf: You have the basics right. You should edit what you wrote and ask Dennis to post as a reply to Mr. Smith.

    Don’t mind the heel nippers. Your big points are right just tone down the rhetoric.

  35. I do not accept your premises IBP. So mush so, that I do not know where to begin to formulate a reply to your last post. What is set forth in 131 is the rest of the law. If you feel that is not enough, I do not know what to tell you.

  36. Thanks, Anon!

    The problem is that 131 sets no real thresholds or conditions for the sufficiency of the so-called “examination”.

    For instance, must all applicant-supplied references be considered?

    Must every printed publication in this, or a foreign country more than one year old, be considered?

    etc.

    The “quality” of the “examination” can thus approach zero, and therefore constitute no examination at all.

    There is effectively no examination requirement.

    Do you really believe that the PTO “examines” for each and every “condition of patentability”, as 131 would purport to require? Of course they don’t.

    The world has grown since 1952. There is no longer any way for the PTO to effectively “examine” an application for violation of any of the conditions of patentability.

    So they give it the “college try”. What does that mean? That means that they err on the side of granting patents that shouldn’t be granted. I know the mantra has allegedly been “reject, reject, reject”, but that was an aberrant phase in PTO management, and probably the vast majority of rejections in that era were wrong and/or unlawful, and done to make it look like the office was doing something. We’re back to trying to make the occurrence of false negatives zero.

    Unfortunately, as pointed out endlessly by MM and others, what we get, because there is effectively no examination, is a bunch of false positives. It is the price to pay for the REAL mandate of the PTO, as articulated in 35 USC 2.

    Of course, the question then circles back to whether or not the PTO is adequately funded to discharge its mandate. If one argues that there is an other-than-illusory examination mandate, then the answer is clearly “no”, but that is an absurd situation; the answer would ALWAYS be clearly “no”, irrespective of the level of funding, because a search of all required material would take an infinite amount of time (all those Soviet-era papers…all those manual Swiss lab manuals…)

    Rejecting bad applications CANNOT rightly be considered part of the PTO’s mandate, for it is possible in only the simplest of cases. Rather than being a mandate, it is an accidental by-product of a cursory and perfunctory attempt at compliance with 131.

    Anon, when was the last time you prosecuted an application that you drafted, in which you accepted a substantive rejection, for a reason other than that the client didn’t want to proceed with a challenge?

    The best we could do to approach a discharge of such a “mandate” would be to have the PTO accept submissions and arguments by third parties BEFORE allowance and issuance, and also AFTER issue but on the same art with different interpretations or arguments. Only then could we talk of any actual mandate.

    I know I have stretched things, but that is really how I feel about things. Yes, I know there are exceptions, and my feelings may be more true in some arts units than others–but my experience is that the PTO is merely going through the motions when it comes to “examination”, because the examination “mandate” at the current funding level amounts to no mandate at all, other than for formal sufficiency of parts and fees.

  37. “I care that someone will read what Mr. Smith so emphatically states as gospel truth will pursue a path that will cost that person their rights and potentially much, much more”

    And that is precisely why I wrote what I wrote to Mr. Smith. Now I’ll go back to work. . .

  38. It is fairly well known that certain posters are not to be engaged in conversation due to their chicanery and lack of scruples.

    Having said that, I would not have identified IBP as one such poster. And that is why I find this latest exchange more than a bit disappointing.

    IBP states:”The problem is that nowhere in 35 USC is anything like an “examination” mandated

    Really? Does the law at 35 USC 131 not mean anything to you?

    The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.

    If it were only this single item, I might think this a mere oversight. However, even after explaining why it would be good to stay out of the murky quagmire, IBP all but dives in head first. Now diving into muck is not necessarily indicative as to a lack of scruples, but diving in after chastising another for taking an “unsubstantiated” position is.

    IBP, your stance of elevating one form of error (true negative) as more poignant than a another type of error (false positive) is entirely subjective and lacking in legal support. Any support for that position must come from the land of “subjective Value” – the very land upon which you criticize someone else as standing on – and then you do the exact same thing. You submit as your position (“Thus, the only issue with respect to mandate is that of false negative“) only that which is subjective, and you do so “without proof, [in the] same type of transparently political statement of position that we’re used to hearing from the likes of Paul Michel, and which is so unfailingly easy to discredit.

    The easy path to discredit what you have said is here:“The PTO could run a registration system and still meet its mandate.” As I have indicated, the law itself mandates that an examination be made. Registration is not examination, not under the law as it currently stands – the law that defines what the mandate is. And the Office is powerless to change this (should I bother to point out the Tafas case to you to remind you of this?). It would require an act of Congress to change the law to permit registration. You do of course realize that mandates are not only set by Constitution, do you not? Mandates to executive agency bodies (like the USPTO) are set by Congress through law (law, including for example, 35 USC 131).

    As for your question of “Look, in general, why should patent attorneys care what Smith has to say?”, my answer (and only my answer as I cannot speak for anyone else) is simple: Because I care. I care that someone will read what Mr. Smith so emphatically states as gospel truth will pursue a path that will cost that person their rights and potentially much, much more. I care that you have seemingly taken a position adverse to kmf’s position – not as I had thought on substantially bonafide legal principles – but rather, because you are pitching just as much a subjective personal view of that which you attack.

    In this regards, kmf is right for the wrong reasons. I was wrong in that initially I thought you were merely pointing out the wrong reasons, rather than submitting an argument from the very swampland you seemed to caution about.

    What was that title again?” – I need more than mere forgetfulness as your point was not so much with Mr. Smith, as it was with kmf, and then, with me. And while kmf can battle his own battles – I will battle mine – at least with those who choose to do so honorably (and I guess I still consider you an honorable person, IBP).

  39. Look, in general, why should patent attorneys care what Smith has to say?

    Most patenting entities are large businesses with sophisticated IP strategies–i.e. most prosecution business comes from such entities, which entities will not care one whit about Smith’s book or his attitudes.

    Of course some of us could be disproportionately affected–but he’s not the first to give the opinion he does, and he won’t be the last.

    Usually it’s best to ignore things like Smith, low-brow populist easy-reading. His book, if noticed at all, will have entirely disappeared from public consciousness within 4-6 months, if not sooner.

    What was the title again?

  40. kmf–

    Your “point” that someone following his advice “could conceivably” do something is really no point at all–it is a mere suggestion of possibility. Equally likely, given both your evidence and that of Smith, is that someone following his advice “could conceivably” achieve an outcome totally different from that which you propose.

    Without more, your “point” is worth just exactly what Smith’s “point” is worth.

    Now I know that you have written at length in response to what Smith said, the attention for which Smith should be grateful–it seems more than his narrative and rhetoric deserve–but supplanting his conclusory statements with your own gets nobody anywhere.

  41. my posting was simply to refute, on a point-by-point basis, the incorrect statements Mr. Smith makes in the first 23 pages of his book. There are a lot; therefore, my posting was lengthy. Note that my posting was a copy of an email I sent to him; therefore, some of the explanation was for him to understand how the system works and for him to see that what he wrote was incorrect. Re funding/value, points noted are well taken. Regardless, the point still stands that, contrary to Mr. Smith’s assertion, the PTO is not some carnival barker trying to extract maximum dollars from the “fish’s” pocket by holding out false promises. The point also still stands that someone following his advice could conceivably come up with something very valuable but, having spent a year and a day marketing it without ever filing a patent application, naively forfeit all rights to which he or she otherwise would have been entitled. If for no other reason, that poor advice makes Mr. Smith’s book dangerous.

  42. BTW, what do commenters here think of the following:

    The PTO could maximally efficiently meet its mandate of granting patent rights where they are due by granting rights to everything that is filed, and by completely ignoring false positives–that is, by putting absolutely NO resources into weeding-out ineligible applications by examination.

    100% of patentable subject-matter would be granted patent protection, and 0% of resources would be used for any other purpose.

    Registration system = maximum PTO efficiency

    Let the resources of disputatious private parties be used to address false positives in a mutually-agreed-upon dispute resolution forum.

    There is even an argument that the private parties would do it more efficiently and effectively than could the public sector, as the outcome has greater VALUE to the private sector actors.

  43. Anon–

    I was trying to agree with you in principle. You chose to buy into kmf’s characterization of the PTO as having a “job it has been tasked to do” by Congress.

    You ask if the PTO has performed “its mandated function”, a question that necessitates an understanding of just exactly what that function is, for purposes of discussion.

    The problem is that nowhere in 35 USC is anything like an “examination” mandated:

    35 U.S.C. 2 Powers and duties.
    (a)IN GENERAL.— The United States Patent and Trademark Office, subject to the policy direction of the Secretary of Commerce—
    (1)shall be responsible for the granting and issuing of patents and the registration of trademarks; and
    (2)shall be responsible for disseminating to the public information with respect to patents and trademarks.

    (b)SPECIFIC POWERS.— The Office—
    (2)may establish regulations, not inconsistent
    with law, which—
    (A)shall govern the conduct of proceedings
    in the Office;
    (C)shall facilitate and expedite the processing
    of patent applications, particularly those which can be filed, stored, processed, searched, and retrieved electronically, subject to the provisions of section 122 relating to the confidential status of applications;

    The PTO could run a registration system and still meet its mandate.

    The thing that is common to all interpretations of mandate is that patents MUST be granted and issued, with the aim of grant and issuance being “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

    Thus, the only issue with respect to mandate is that of false negatives–that is, if NO patent rights are secured to inventors for their discoveries, the securing of which WOULD otherwise promote the progress of science and useful arts, the PTO will have failed to meet its mandate.

    Does the PTO routinely reject patentable claims? Yes. Is that systemic type of unlawful rejection the sole and direct result of the “level of funding” of the PTO? That is, could the systemic unlawful rejections be lessened or eliminated by a change in the funding level?

    Of this there is no evidence provided by kmf.

    The issue of false positives–that is, when patent rights ARE secured to inventors for their discoveries, when the securing of those rights WOULD NOT promote the progress of science and useful arts–is less important when one speaks positively about “mandate”. False positives are only extra-mandate by implication, and not necessary implication at that. They are an issue that relates to value, and efficiency of meeting the mandate, rather than to the actual meeting of the mandate itself.

    kmf’s statement was simplistic. While it was nice of you to entertain her statement while assuming it had some substance worth discussing, you’d probably be better off turning your fertile mind toward others’ cogent arguments, instead of toward her at least unqualified, and probably unconsidered, statements.

  44. Now, you yourself have stepped over the line IBP.

    but in any interpretation, we ultimately arrive at the basic question of VALUE: does the PTO deliver good VALUE to society?

    Nowhere is a jump to a such subjective question required in reviewing whether or not the Office has performed its mandated function.

    The discussion of whether the Office is meeting its mandate need not be conditioned to “good” or “strong” versus “weak” or “bad”. Has the application been examined? Has the law been met? These are objective questions, with objective answers. Nowhere is there a requirement for a “perfect” examination. Examination is merely done to the standards set forth. The descent into a discussion of “Value” is a quagmire that need not be waded through. As such, it bodes ill to invite anyone into that quagmire unnecessarily.

    Talking about the budget process is one such topic that rises above the quagmire.

  45. Anon–

    kmf’s use of the term “underfunded” is incapable of a meaningful interpretation, as it was used.

    What was meant is anyone’s guess–but in any interpretation, we ultimately arrive at the basic question of VALUE: does the PTO deliver good VALUE to society?

    This is a VERY difficult question to answer. For instance, let’s say that intricacy and therefore costs of prosecution go sky-high, pricing all but the deepest-pocketed entities and the most promising inventions out of the patent market.

    Such an outcome COULD represent excellent value to society–a huge bang for the public buck. Only hugely profitable inventions, by entities big enough to commercialize successfully.

    There is currently no necessary requirement, express or implied, that the PTO must issue only GOOD patents, or STRONG patents–if they’re issuing a bunch of weak cr@p, can they be considered to be doing the job they have been tasked to do?

    Maybe–but even so, the question of VALUE remains unresolved. Could we get weak cr@p for less? Increasingly the answer to this question leans toward “yes”, especially at a logical extreme, a registration system.

    An easier approach to value assessment is to consider value as perceived by a current or potential applicant, but that is a whole other discussion.

    I’m pretty sure we all ignored kmf’s opus, and probably rightly–I just wanted to provide some justification for my own decision not to wade through it all.

  46. Interestingly, I agree with IBP.

    When this argument is used, one has to consider what it means to be “underfunded.” Underfunded as a comparison to what? What does it mean to be “adequately funded”?

    “Funding” and “fee diversion” both need to be analyzed in the context of the larger USPTO operations. I do not know just how the management of the PTO goes through its budget process. I do not know if the problem lays with management simply not budgeting (or planning) for the appropriate expenditures to keep itself at a point where it can “do the job it has been tasked to do.”

    I think it is plain to see (proof enough coming from a common sense view of the backlog and the impending wave of PTA) that the PTO is not doing the job it has been tasked to do. Do you agree IBP?

    As for “funding”, I feel that such is a symptom, not a cause. “Funding” is chosen by management. Management owns the responsibility. If there are constraints on management that absolutely hinder management from performing as they need to perform, then those impediments should rightfully be highlighted. Even so, it is still management’s responsibility.

  47. kmf: “…the truth of the matter is that the PTO is woefully underfunded to do the job it has been tasked by Congress to do…”

    Such certitude.

    Where is your proof? You have presented none, and the assumptions required for your statement to be true are unsupported. It’s the same type of transparently political statement of position that we’re used to hearing from the likes of Paul Michel, and which is so unfailingly easy to discredit.

    In making statements like that one, you place your own rhetoric squarely in the same class as that of the author Smith.

    Next.

  48. omitted portion of email

    In your opinion, the patent industry, including the vast majority of patent attorneys, does a tremendous disservice to inventors by encouraging them to file first.
    First, same question as above: WHAT IS YOUR BASE OF EXPERIENCE FOR SUCH A FAR-SWEEPING STATEMENT? And second, you are the one doing the less informed inventors a grave disservice in making such recommendations without adequate legal training. As noted above and the other day on the phone, if you disclose and sell for over a year before you file your application (even just a simple provisional application, that could be a back-of-the-envelope sketch so long as it fully informs one of skill in the art as to what you came up with and how it works), you lose your right to file. So then you improve your invention to the point that it is really a great product, everyone wants it, it is a commercial success, and Boxco or Knock-offs-R-Us decides it wants a piece of the action, too. So it slavishly copies your invention down to the last nut and bolt and, using its far greater marketing channels, outsells you into oblivion. What are you going to do then? John Q Public is going to buy its storm windows from Home Depot or Lowe’s or Ace; they are not going to think first and foremost – at least not for a long time, and likely never – of John Smith. Some good your build-the-company-name-first advice has done there.

  49. omitted portion of email

    Furthermore, you state that utility patents are the type inventors are most encouraged to file because they are “the most comprehensive.” That is not why they are used instead of plant and design patents; they are used when what your are trying to protect is a conceptual “thing” (apparatus or method, see above) and the invention can be defined in terms of the components or steps that go into the apparatus or method. Design patents are used where what the inventor came up with – what something looks like – can’t be defined that way and isn’t otherwise protectable, and plant patent are used where what the inventor came up with was an asexually reproduced plant. In short, utility patents are used where that is the appropriate vehicle for patent protection.

  50. Websites
    Finally (to the extent I’ve been able to read just 23 pages of you book and see all these flaws in your analysis and assertions), you quote an online inventions disclosure company’s website’s advice that if you can’t afford to patent something without an attorney you shouldn’t be in business; you belittle it despite a fundamental truth that actually does reside in it; and then you ascribe such assertions to the “patent industry” as a whole. As for the fundamental truth in the online company’s come-on, the fact of the matter is that it DOES take money to make money. It does not need to be a lot, but it does take some. Furthermore, although it is a narrow field of practice, patent law is deep in that there are many, many places the layman can screw up and shoot themselves in the foot. While there are some that do successfully patent and market their own inventions, never underestimate the value of the advice an honest, well trained patent attorney who is “on the ball” can provide.

    I’m sorry you feel so cheated by the PTO for being denied your storm chaser patent – I bet you didn’t feel so bad when you got your other two patents, did you? – but what is appearing to me not to be worth the paper it’s written on is your book, not the patent system as a whole.

  51. Regarding the numbers you’ve calculated, you assume $540 for average governmental filing fee (small entity??? Large entity fee is double.) Multiplying that by 482,871 applications filed in 2009 (just small entity, or all? If all, you’re mixing and matching your numbers), you come to a total filing fee revenue of over $260 M. (“WOW!” in your words.) However, spreading that $260M among 6242 examiners at the PTO (using your own number) yields just $41,773.52 per examiner per year. Even adding back in the RCE fees, extension fees, petition fees, etc., which your WOW calculation seems to have overlooked, it is still clear that that is NOT a lot of revenue available to pay an examiner to do what can be a difficult job with limited resources. (In large measure, the PTO’s backlog – another MAJOR factor that makes your notions of the PTO as having a reject, reject, reject, reject mentality inaccurate – is due to the fact that they are short on talented examiners, and the PTO NEEDS funds to hire more to help get itself out from under that backlog.)

    Furthermore, from 42% allowance rate, you conclude that 58% of applications are not allowed, so multiplying $260M by 58%, you conclude that the PTO is making $151 in gross revenue from the examiners making continued rejections. That, Mr. Smith, is shoddy logic. Regardless of whether the PTO rejects or allows an application, it takes money for the examiner to do his or her job. It is not an agency where every penny spent on an ultimately rejected application goes into some PTO piggy bank as pure profit, and no penny spent on an application that issues is realized by the PTO. Patents are intangible rights – they are not manufactured goods – so simply rejecting an application does not allow the PTO to keep more money in its pocket. Seriously, now, do you really consider that a legitimate business calculation???

    Different Classes, Different Fees
    You assume that an art class (e.g., electrical connectors) with a 50% allowance rate (1 allowance per 2 rejections) requires 2 responses (at an assumed average cost (based on just YOUR personal experience) of 3K per response) to get allowed, whereas one with a 5% rate will require 20 responses to get allowed. Therefore, you conclude that some art classes require an applicant to pay more to secure allowance than other art classes. As explained above, however, you have completely misinterpreted or misused the chart data. An allowance/rejection ratio does NOT indicate how many times an applicant has to respond to finally get to allowance; rather, it reflects the difficulty of getting A claim allowed in general in the particular field in light of many different factors (alluded to above), including the possible fact that some subject matter isn’t even patent-eligible. Accordingly, your assertion that if the ratio was higher the PTO would be making less money – again, that’s NOT their raison d’etre – and that that explains why the PTO purportedly hides the real information is simply fallacy.

  52. If, on the other hand, you amend the claims in some fashion and that amendment does not secure allowance, the examiner will come back with another office action with new rejections necessitated by or responsive to or in light of your amendments. In that case, the subsequent action will be final. Alternatively, if you respond to the first action by argument alone and that argument does not persuade the examiner to change his position, the subsequent action will again be final. (However, if the examiner comes back with any new ground of rejection that was not necessitated by some amendment you made, regardless of whether it was a rejection based on prior art or alleged indefiniteness or purported lack of enablement or disclosure in the specification or any other reason, the subsequent action cannot be made final, and you will have the exact same “free reign” to respond to that subsequent action as if it were any old non-final action.) If the action is final, however, your strategic options are NOT, in fact, as limited as you write (“only recourse is to file an expensive Appeal with the [BPAI].” To the contrary, you can argue against the new rejection, and if the examiner withdraws it, you are back to non-final land or even allowance-ville. Alternatively, if you see a further amendment that can be made to clarify or sharpen a distinguishing feature, or to recite a new feature that moves a reference “off the table,” then by all means amend. If the amendment is something that requires further search and/or consideration – and I have never seen an examiner say that anything other than the most trivial after-final amendment doesn’t require further search and/or consideration – THEN you will need to pay for an RCE to have the amendment entered and considered. Regarding cost, small entity fee for an RCE is $405, i.e., half of the large-entity fee you quote. Furthermore, the form for submitting an RCE is simple (one page, a couple check boxes); the only attorney time needed should be the time to prepare a suitable amendment and remarks. As for proceeding to appeal, you have far more options available while you are dealing with the examiner, including the ability to speak to the examiner’s supervisor if necessary (and I’ve done that many times with success, even where the examiner is a primary and has his “wings” to fly on his own); therefore, you should be going up to appeal ONLY when all other options (including appropriate declarations) have been utilized. It is not the first-line, go-ask-dad-instead choice! (If you want to see how this should work, check out the file history for U.S. 7,859,386, where we paid for one RCE (necessary to scrap the claims as they stood when I picked up the case in favor of clearer claims, in 09/2007) and had to fight diligently (and ultimately successfully) to make the examiner see the light (including two calls to his SPE). See, also, the file history for U.S. 7,844,428 (another one where we paid for one RCE to scrap claims I got the case with in favor of clearer claims.)

    Making Money the PTO Way
    As noted above, the PTO is not a profit-seeking organization. Furthermore, as explained above, you do NOT have to pay a governmental filing fee of $405 (or $810 large entity) to respond to a non-final office action. (You may, however, need to pay for extensions of time if you don’t timely respond, but that is something that is entirely within your and/or your attorney’s control and is not what you are referring to.) Furthermore, your statement that the PTO will continue to reject your application and that it is all a scam perpetrated on inventors by the PTO and the Examiners – “collusion at its finest” in your words — is undercut by the fact that there are, in fact, more than just some of us in the profession who know what we’re doing and how to get a patent-meritorious claim allowed (or will have the decency to tell the applicant what they don’t want to hear, that the Examiner has a valid point and the claimed invention can’t be patented).

  53. The Office Action Procedure
    As an initial matter, your characterization of the patent examiner’s goal as being “to reject the patent application” is pejorative and is as skewed as your all-lawyers-are-PacMan-whores notion. Furthermore, reasons for rejection are not “roadblocks” or an obstacle course the examiner is trying to make you run. Rather, the examiner is trying to ensure that what ultimately does issue has had its mettle tested so that it is, in fact, valid and properly deserved. If the examiner’s position is incorrect and you can take the time to explain it properly, examiners can and do withdraw rejections.

    As for non-final actions, final actions, rce’s, and further fees, you’ve gotten things completely mixed up! The first action in a case will be non-final. At that point, you can amend the claims (but not the specification); you can explain how the examiner interpreted the reference incorrectly; you can submit declarations explaining why the examiner’s view of what would have been obvious in the field is skewed; you can even submit a declaration (if facts warrant it and if other factors allow it) showing that you invented your invention before the reference was properly prior art to your invention. The PTO cost for doing this (assuming you do not introduce more independent claims or total claims than your basic filing fee gets you)? Big fat $0. Nothing. Nada. Zip. Zilch. What you DON’T get at this point is the appropriate time to file an RCE. If you persuade the examiner that his interpretation of the reference(s) was wrong, or if you convince him that the combination of references really wasn’t plausible, or if your declaration shows him that his understanding of the field was wrong or that the reference wasn’t, in fact, applicable prior art, he might allow the case right then and there. Alternatively, the Examiner very well could come back with another action raising new grounds for rejection that don’t suffer the same defects. In that case, the subsequent office action will not be final, and you get another bite at the apple and you can respond to that further, non-final rejection the same as before.

  54. The catch-22 and purported conflict of interest
    Reputable attorneys build their practices on giving sound advice, even when that advice is NOT to file because of various factors. The notion you suggest of not being able to make a living or pay salaries if an attorney gives a client candid advice not to file is making an occasional situation into a far more problematic situation than is the case. Yes, it is true that many patents never lead to financial success, but that is for the client/inventor to assess and understand. To the extent you assert that attorneys are just in it for the money and will sell the client anything they can, once again, I question the extent of the base of experience from which you draw your conclusions, which come across as little more than regurgitated type-casting.

    Misunderstood Significance of Allowance Ratios
    You have included a chart showing different allowance rates for different art units, which you assert reflects by inverse relationship the amount of time and money it would take to get a patent in a given art unit. From that, you posit that the PTO “does not provide one [allowance chart] that covers all product classifications [because if] it did, they might receive a lot fewer patent applications and a lot more outrage from inventors. You have clearly failed to understand what the graph shows and the reasons behind the different allowance rates. The ability to get a claim allowed turns on many factors, including how “crowded” the art is, how well established or “cutting edge” the relevant field is, how predictable the particular art is, etc. For mechanical inventions (e.g., electrical connectors), while there is a lot of prior art, people trying to patent a connector usually understand that and draw their claims narrowly. Therefore, they are not trying to cover the waterfront and are more likely to get something – appropriately tailored – through. Furthermore, there is a requirement that a patent application enables the claimed invention. For electromechanical inventions, a diagram usually suffices. In the biotech and chemical arts, on the other hand, the science is, at times, unpredictable, and applicants often have to prove to an examiner that the invention does, in fact, work, and that those of skill in the art would be able to make and use the invention as broadly as claimed. That requirement can hamstring an inventor and limit allowance. Furthermore, many times a pharmaceutical application will be drafted in a way that says the compound should have one component selected from group I (having ten members), another component selected from group II (having eight members), antoher from group II (having twenty members), etc. Then years later, the inventor hits on a specific combination of components that was never disclosed, per se or specifically, in the disclosure but that theoretically is covered by the broad guidelines of one component from each of the specified groups. If you figure out the various possible combinations of components, there are millions! Trying to get a claim allowed to the specific compound that is later hit upon in that case can be difficult indeed, not because the examiners in the relevant art units are more “out to get” the applicants in those art units, but because of the specific intricacies of the science and how the various general requirements for patentability play out in the context of the specific field. And as for the insurance and finance field, the reason the allowance rate is so low (and likely will go down even further) is because some subject matter simply isn’t grist for patent protection. See, in this regard, 35 U.S.C. Section 101 (identifying the types of subject matter that are patent-eligible) and the recent Supreme Court case of Bilski v Kappos (holding a method for hedging risk to be too abstract and therefore not grist for patenting). Therefore, you could spend 1000 times more money in that field and likely not get a patent (and I and many other good, honest patent attorneys would TELL you so so that you DON’T waste your time and money barking up that tree).

  55. Utility Patent Term and Coverage
    Utility patents expire twenty years from the earliest claimed priority date, not twenty years from date of issue. If you file a stand-alone patent on 1/1/2010 and it issues 1/1/2012, it will expire 1/1/2030 (twenty years from 1/1/2010). On the other hand, if you have a series of continuing applications claiming priority back to a parent that was filed 1/1/2010, you could have a patent issue on, say, 1/1/2025 and it would still expire 1/1/2030 (i.e., twenty years from the earliest claimed priority date of 1/1/2010), thus giving it only five years of term. The old rule was that patents last seventeen years from when they issued, regardless of how far back they claimed priority (something that gave rise to “submarine patents” that could come up out of the dark and hold industries hostage based on originally filed applications that were in many cases not truly germane; see, e.g., Lemelson. The 20-year-from-earliest-claimed-priority-date approach obviated that problem.) Furthermore, they do not, strictly speaking, “protect the function and use of a product.” A utility patent protects a conceptual “thing.” Sometimes, that “thing” is an apparatus (e.g., storm windows), and the patent lets the owner prevent others from “making, using, selling, or offering to sell” the claimed apparatus. The claims in that case will define the apparatus in terms of components and how they fit together or interrelate to each other; it will not define the apparatus in terms of how it functions. Other times, the “thing” is a method (e.g., a method for making bricks), and the patent lets the owner prevent others from practicing the claim-recited method (i.e., making bricks according to the “recipe” set forth in the claims). Sometimes, a patent can, in fact, protect the use of a product – so long as that use is, itself, novel and non-obvious. For example, if I discover that I can run my car using French dressing instead of gasoline, I can’t get a patent directed to French dressing, per se (because that is long-known, per se); however, assuming it has never been done before and would not have been obvious in light of other products that have been used to power internal combustion engines, then I could get a patent covering a method of powering an internal combustion engine using French dressing to do so (i.e., use of a product). Generally speaking, patents do NOT cover “the function of a product.”

    Any patent attorney will encourage a client to file an application to protect their concept
    WHAT IS YOUR EMPIRICAL BASE OF REFERENCE FOR THIS ASSERTION? As far as I can tell, you are shooting from the hip based on your limited experience in not getting your storm window application allowed. To go from that to asserting that any patent attorney will encourage a client to file a patent to protect their invention is completely unsupported and, frankly, reflects a lack of understanding of the various types of protection that could be relied on instead of a patent and considerations that would tell the attorney to tell the client NOT to proceed. For example, some inventions have value to an inventor and give the inventor a commercial advantage without the world ever needing to know about it. For example, if an inventor discovers that the catalytic cracking yield of gasoline from crude oil can be increased by 30% (so that you get more salable fuel per barrel of crude) by putting chicken droppings into the crude, and then all evidence of the chicken droppings can be removed so that no one ever knows that’s how the yield is increased, then relying on trade secret could very well be the more appropriate route to go to “protect” the invention. The benefit of trade secret protection is that, unlike a patent, it lasts as long as the secret is kept secret, and thus public disclosure is avoided. On the downside, however, a patent will let an inventor prevent others from making, using, selling, or offering to sell the covered invention regardless of whether the accused infringer copied or merely came up with the same idea himself independently of seeing the inventor’s product or patent, whereas trade secret protection only protects the “inventor” against others who obtain the protected information by improper means (e.g., spying, buying off employees, etc.) If someone else comes up with the same concept independently of the inventor, they are free to practice the concept themselves to their heart’s content.

  56. Furthermore, you characterize the patenting process as “a cleverly disguised illusion of protection” that takes inventors’ money and robs them of their dreams, encouraging inventors to file applications and rejecting all of their claims. Contrary to your biased, bitter misunderstanding, the PTO is not some sort of a carnival game where the barker is trying to get your money by holding out false hopes that you can get the ball in the basket or knock over the three simple milk bottles. The PTO is NOT trying to make a profit off of inventors; money is NOT going into individual PTO employees’ pockets; and the truth of the matter is that the PTO is woefully underfunded to do the job it has been tasked by Congress to do (pursuant to the Constitution, Article I, Section 8 (“The Congress shall have power … To promote the Progress of Science and useful Arts, by securing for limited Times to
    Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”)). (See below re $$$, using your assumed numbers.)

    In this book:
    Only the attorney makes money on a litigation and judgments are worthless as they are impossible to collect? Is that why major corporations invest so heavily in developing their IP, then protecting it when necessary? What experience do you have on which you base that assertion?

    PTO wants your money, not your invention
    Frankly, the PTO doesn’t want either. It needs money to pay the examiners to do their job; it is not trying to maximize some sort of profit. As for wanting your invention, the purpose of the PTO is not to try to get your invention or collect inventions. The whole purpose of the patent system is to foster advancement/development by giving inventors a governmentally sanctioned monopoly for a limited time (not 20 years, as your incorrectly state; more on that below). It’s a quid pro quo. You make public (via the patent document) what you have invented, so others might follow on your concepts and even build on them to make them better in the future, and the government gives you the right to exclude others from doing what you have invented (as defined by your claims) for a specified period of times. Thus, the PTO is trying to spread knowledge for the benefit of all. That is its raison d’ etre. (Again, see the Constitution.)

    You’ve spend hundreds of hours writing arguments on three action responses
    Frankly, if you’ve put that much time into the arguments in just three responses, you’ve wandered “into the weeds” far too deeply for the argument to succeed. You need to be able to explain to an examiner from a fundamental standpoint why what you’ve invented is different from what the examiner is relying on as prior art, or why the examiner’s logic is flawed, and there are well established ways to succeed in that. In twenty years of practice, I’ve had to resort to the Board of Appeals just twice. In all other cases, I’ve managed to secure allowance – usually as broadly as originally desired, but sometimes more narrowly in view of the prior art – or it was clear the Examiner’s point was valid – yes, they do, in fact, sometimes come up with very legitimate rejections – and with my advice the client decided to forego prosecuting the application further.

  57. 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!”

  58. 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?

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

  60. “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.

  61. 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.

  62. “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.

  63. >>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.

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

  65. 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.

  66. 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.

  67. “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.

  68. 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.

  69. 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.

  70. 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.

  71. 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).

  72. 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.

  73. 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.

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

  75. 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.

  76. 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.

  77. 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.

  78. 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…

  79. 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.

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

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

  81. 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.

  82. 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!

  83. 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….

  84. 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?

  85. 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

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

  87. 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?

  88. “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.

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

  90. 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?

  91. 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.

  92. 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).

  93. 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

  94. “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.

  95. 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.

  96. 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.)

  97. 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.

  98. 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.

  99. 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.

  100. 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.

  101. 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

  102. 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.

  103. 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.

  104. 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.

  105. 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.

  106. 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.

  107. 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.

  108. 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?)

  109. 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

  110. 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.

  111. 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.

  112. 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.

  113. 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.

  114. 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.

  115. 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.

  116. 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.

  117. 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.

  118. 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.

  119. 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?

  120. 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.

  121. 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.

  122. 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”.

  123. 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.

  124. 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.

  125. 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.

  126. 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.

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

  128. “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.

  129. 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.

  130. 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?

  131. 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.

  132. 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!

  133. 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.

  134. 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.

  135. 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.

  136. 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.

  137. 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.

  138. “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.

  139. “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,”

  140. 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!

  141. 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.

  142. 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 …

  143. 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.

  144. 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.

  145. 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?

  146. “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.

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

  148. 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.)

  149. 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.

  150. 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.

  151. 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.

  152. 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.

  153. “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.

  154. 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.

  155. 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.

  156. 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.

  157. 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.

  158. “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.

  159. 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.

  160. 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.

  161. 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.

  162. 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.

  163. Held:

    Old news.

    Thats like waiting two days to deliver a comeback.

    Seriously, ya dont have better windmills ta chase?

  164. 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.

  165. 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?

  166. 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!

  167. 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.

  168. 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).

  169. 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?

  170. 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.

  171. 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.

  172. 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.

  173. 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.

  174. 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…

  175. 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!

  176. 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.

  177. 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.

  178. 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

  179. 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.

  180. 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?

  181. 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.

  182. 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.

  183. 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.

  184. 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.

  185. 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.

  186. 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?).

  187. 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.

  188. 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.

  189. 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”.

  190. “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.

  191. 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?

  192. (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.

  193. 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?

  194. 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.

  195. >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?

  196. 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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