33 thoughts on “Inventors Unhappy with their Patents

  1. 9

    Over the years, there have been a number of inventors who expressed to me that they were unhappy with their issued patents. However, their unhappiness with the patents was mostly due to unhappiness with their prior patent counsel, and issued claims that, in their mind, failed to properly capture their invention due to prior counsel not sufficiently communicating with them during examination. Fortunately, in one case we were able to file a reissue that resulted in allowed claims they were much happier with, and in another case we took over prosecution of the continuation application that resulted in allowed claims that achieved the client’s business goals.
    Good communication with the client results in better overall client satisfaction with the end-result.

    1. 9.1

      Indeed. A degree of “unhappiness with their prior patent counsel” is nothing unusual.

      Where jurisdictions differ is on who shall carry the can for sub-standard patent drafting. Shall it be the one who engaged the below-par drafter? Or should it be everybody else, by which I mean everybody who suffers when the court over-compensates for the less than competent drafting? Judges (and clients too) are not successful patent drafters: they can’t judge the quality of the drafting. So they tend to assume that i) the drafting was competent and so ii) the inventor should not suffer any adverse consequences.

      Otherwise at the Patent Office. Here in Europe, for example, the EPO can judge very well what drafting is competent and what is not. Here, the scope of protection which the inventor achieves is directly proportional to the level of competence of the drafting of the patent application.

      Patent law firms, take note.

      1. 9.1.1

        Utter dross from MaxDrie, with his typical comparative comments coated in the tint and taint of EP Uber Alles.

    2. 9.2

      Certainly, communication is king.

      That being said, it have seen my share of bad clients who spout that it was “the fault,” of prior counsel (whom I happen to know — and know their quality), and careful screening shows that the fault is actually the client’s.

      There are bad clients out there that make your own legal business all that much better by being someone else’s clients.

      It does a simply not true that the client is always right. That’s just marketing schlock.

  2. 8

    Inventors on patents where the defense to infringement is assignor estoppel may have interesting stories to tell.

  3. 7

    A small inventor has a concept and even prototypes. The practitioner points out that the aspect of the invention that the inventor wants to use as the “hook” (inventive element) to hang claim 1 on has multiple prior art issues. There needs to be a different hook. Practitioner offers a new hook (effectively narrowing the original concept.) Inventor still wants a patent and accepts. (Often under pressure from the assignee.) Patent issues. Inventor unhappy, still does not quite understand how his invention got transformed. Assignee has a different marketing challenge to the one he thought he had when he wrote the invention disclosure.

    1. 7.1

      There is also not a small potential of inventors who may be unhappy just based on the misperceptions of what patents ARE (legal documents) and what they are NOT (engineering documents).

      Normally, I like to make sure that the inventors understand the difference, but with some clients, that is just not always possible.

  4. 6

    Here are classes of Inventors unhappy with their patents:
    1. Individual inventors subject to IPR at any time, whose patent costs money to defend with nothing to win, other than to keep the patent as valid as it was the day it issued or the day the IPR was instituted;
    2. Individual inventors whose patents issued pre-Alice, but are now subject to “abstract idea” nonsense that was never part of their patent bargain and who can never address said nonsense via patent prosecution;
    3. Individual inventors whose patents issued pre-AIA, who are now subject to IPR, which was never part of their patent bargain either – and all inventors suffering ex post facto changes to the law, by both the judiciary and Congress;
    4. Individual inventors whose patents are infringed by Big Tech or Efficient Infringers, who do not realize the time and expense necessary to fight off infringement;
    5. Individual inventors who cannot get an injunction to stop infringement, especially by Big Tech or Efficient Infringers, though SCOTUS said in eBay that injunction should be available to “some patent holders, such as . . . self-made inventors, [who] might reasonably prefer to license their patents, rather than undertake efforts to secure the financing necessary to bring their works to market themselves”;
    6. Inventors who believed a patent was an actual right to exclude for the term of the patent, not to collect money as an involuntary, compulsory licensor for the term of the patent;
    7. Inventors whose patents are infringed by Amazon, Apple, Google, Microsoft, Facebook, Twitter, and other Big Tech, said Inventors being rightfully worried about an Efficient Infringer/“implementer” class accumulating too much power, wealth, political influence, and long-term market share that a patent was intended to provide to the patentee;
    8. Inventors counting on Congress to fix the 101 nonsense;
    9. Inventors who have testified before Congress, only to have Congress do nothing;
    10. Inventors who realize their title to their personal property never seems to quiet;
    11. Inventors who cannot fund a business even if backed by patent protection, because of uncertainty in 101 law;
    12. Inventors who cannot gain quick justice in the patent system, but who may be required to spend 10+ years to recover for infringement, all while the limited patent term constantly wanes;
    13. Inventors who used to rely on an honor system of infringers entering licenses on reasonable terms, rather than infringers trying to invalidate each and every patent asserted;
    14. Inventors who reached out, in good faith, to discuss reasonable licensing terms, only to be met with a DJ for invalidity in the infringer’s hometown;
    15. Inventors who thought they reasonably chose a forum to stop an infringer, but whose case was transferred to the infringer’s hometown;
    16. Inventors whose patented products are sold on Amazon.com by infringers, with no recourse against Amazon itself for past sales;
    17. Inventors whose patent protects a market under $1M, for whom access to the courts is impractical;
    18. Inventors suing for infringement who have to prove validity in the complaint, lest it be dismissed on a 12(b)(6) motion for invalidity on 101/abstract idea, without opportunity to amend the complaint;
    19. Inventors who faithfully paid maintenance fees (for what?), only to have the patent invalidated or subjected to an IPR;
    20. And finally, Inventors who have not made a dime from their patents, while infringers have stolen with impunity, are those most “unhappy” with their patents.

    1. 6.1

      Yup. They have made patents a sport of kings.

    2. 6.2

      20 times correct, Anonymous.

      20 times.

      Where are you, Congress?

      Where? Are? You?

  5. 5

    Dennis — For complete subject treatment, should you not also include inventors who are happy with the patents in their names?

    1. 5.1

      Malone better avoid this thread so you won’t jump on his descriptions of the plight of patentees with demands for “complete subject treatment.”

  6. 4

    The picture of Galileo reminds me of a delightfully apocryphal story I heard about the late Justice Scalia. According to legend, he would read through the records of all the cases that were decided in each term while he was on the Court, looking for instances that followed this pattern: (1) district court judge says “the law is X so I rule x1”; (2) appeals court reverses saying “the law is Y, so we rule y1”; (3) the SCOTUS says “the law is X, and we remand to the circuit court to review in a manner consistent with this opinion”; and (3) the circuit court affirms the district court. Justice Scalia would then pick his favorite among the cases that fit this pattern and award the district judge in question the “Eppur sí muove” award.

    1. 4.1

      The irony is that the Supreme Court is more like the Catholic Church — especially in patent laws — to the innovator’s Galileo.

      1. 4.1.1

        Scalia too is the one responsible for Alice/Mayo for not signing on to Bilski.

        But great nugget Greg.

    2. 4.2

      Thanks for the story! Back in the 90s, someone I worked with told me that he had run into Justice Thomas the night before in an ATM vestibule. Apparently, Justice Thomas was completely baffled as to how to work the ATM in order to make a deposit. Whenever Justice Thomas authors a patent or any decision relating to technology, I always think back to this.

  7. 3

    This is to reply to the question about inventors being, “unhappy with their patents.” This question MAKES ABSOLUTELY NO SENSE. The phrase, “unhappy with their patents” is totally devoid of reason and sense. Does it mean that, “the scrivener who drafted the claims failed to understand the invention, where the result that the claims did a bad job at covering the invention.” Is that what it means? Does it mean that the scrivener who drafted claims to the invented device, forgot to draft claims to methods for manufacturing the device, and also forgot to draft claim to methods for using the device? Does is mean that the drawings in the patent are inaccurate? WHAT DOES IT MEAN ? ? ? What does the nonsense question mean ? ? ?

    1. 3.1

      Hi Tom. I intentionally left the question open-ended because I am interested in all of the reasons an inventor might be unhappy with the patent. Examples:

      1. The inventor might not like the current patent owner (perhaps a former employer) or how the current owner is using the patent. In the extreme case the patent owner might be suing the inventor for patent infringement. This is the situation in the Minerva case pending before the Supreme Court.
      2. The inventor might have figured out that the innovation actually causes more harm than good. This case is a different situation than the first case because it is more about the underlying invention rather than purely about the legal patent right.
      3. The inventor might be upset because the patent is too narrow or invalid, etc. Here the inventor wants a stronger patent — whereas in the first case the inventor is wishing for a weaker patent.

      Other examples are also possible and likely.

      1. 3.1.1

        What drives “this interest?”

        What purpose will this ‘research’ serve?

        It comes across as just more of the “patents are bad and enforcing them is the worst” anti-innovation narrative.

        Former Dir. Iancu had the right idea: it’s time to seek to bolster the patent narrative, not find ways to continue to denigrate it.

        1. 3.1.1.1

          It comes across as just more of the “patents are bad and enforcing them is the worst” anti-innovation narrative.
          +10

      2. 3.1.2

        The situation which most interests me is when the PTO refuses the patent application or the issued patent gets revoked, and the inventor is unhappy because their inventive concept was new, inventive and fully entitled to an enforceable patent of full scope. They are rendered unhappy by their belated realisation that the original drafting of the patent application was incompetent.

        Observing opposition proceedings at the EPO, it is not uncommon to see such a train of events. I mean, the invention was good, but poor drafting resulted, years later, in the loss of what would otherwise have been a lucrative IP right.

        Typical of inadequate drafting is to cast the independent claim too wide but then fail to lay the ground for a judicious narrowing of scope to a level of generalisation/abstraction that is intermediate between as filed claim 1 and the embodiments described in detail. It’s a particular problem with US-style drafting.

        Dennis if you cast your net wide enough to include such instances of disappointment there are hundreds of examples out there, waiting to be brought to light. that is, if they have any disappointment about loss of patent rights outside the USA.

        Tip? Arrange for your trawl to be posted on the Watchdog blog for most of the readers there, it seems to me, are unhappy inventors (as opposed to patent attorneys). I’ll wager you will get some reaction there.

        1. 3.1.2.1

          Not surprised (in the least) of your “interest,” but such provides a paradigmatic example of confirmation bias.

      3. 3.1.3

        4. The inventor might believe (e.g., wrongly) that the invention is not patentable, and the employer-assignee disagrees.
        5. Like 4, but the inventor refuses to sign the declaration, forcing the employer-assignee to proceed along the uncooperative-inventor path.
        6. Like 5, but the inventor resigns, only to return to work for the employer some time later, after the patent has issued.

    2. 3.2

      The question is broad, not indefinite.

      1. 3.2.1

        To indulge in the ‘politically INcorrect,” the question is Blonde, as a particular type of broad.

  8. 2

    Re: “Inventors Unhappy with their Patents”
    As I recall [you can check] Thomas Edison must have been unhappy with his pioneer patent on sound recording when its claims were avoided by others [Berliner?] recording or playing needles that fluctuate sideways rather than in and out of the recording media as his claims were limited to.

    I was also aware of a few inventors who were undoubtedly not happy to have their patent claims were taken away from them by another inventor who had filed their patent application later than theirs, yet won an interference with proof of a non-public but well documented prior actual reduction to practice.

    1. 2.1

      The latter problem, of unpleasant surprise patents of others covering one’s product developments, even though later-filed, and 102(g) secret prior art, was an major incentive for the statutory gradual elimination of interferences, leaving only derivation proceedings, in the 2013 AIA [America Invents Act].

      1. 2.1.1

        Wow, are you in the weeds, Paul.

        That “feature” that you seem to want to crow about resulted in one of the shoddiest (and most blatant) “just take what was there and wave your arms about” of the entire Act.

  9. 1

    You might want to talk to Stephan Brunner, who is quoted in this episode of This American Life.

    link to thisamericanlife.org

    1. 1.1

      Thanks for the link, I enjoyed the exposure of the suites of fake “local offices” of suing patent owners in Marshall Texas in addition to the stories of the respective patents allegedly covering all podcasts and all internet software upgrades.

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