Jill Gilbert Welytok is the managing attorney for Absolute Technology Law Group LLC, which is a team of Registered Patent, Trademark and Transactional attorneys.
Next Meeting: September 17, 2009 at 5:45 p.m.
Absolute Technology Law Group Offices
135 W. Wells, Suite #518
Milwaukee, WI 5320
Recently Milwaukee Journal Sentinel did a three (3!) part series on the patent system, which included some “interesting” information about backlogs and disallowance rates. It is interesting to me, because it is certainly not the experience in our office. Patent applications filed in our office tend to get through the patent system in half the time cited by the Journal Sentinel, and our disallowance rate is less than 10%. The patents get issued, cover what our inventors need to cover to help them compete, and we do not go over budget without a very good reason.
I tried to e-mail the reporters and invite them to our Inventors' Forum, but did not hear back. I would like to thank them for identifying issues that I think exist for lots of inventors, and we try to avoid for our clients. However, I do not think the patent system is so out of control, or that inventors lack leverage when they have novel subject matter. Much of the success of the patent process depends on prosecution strategy. I was recently interviewed about this issue on public radio. I am happy to share our insights with inventors who are not clients.
While interviewed, I presented the suggestion that disallowance rates and backlogs may also be due in part to the *public* behaviors/trends such a lack of understanding as to the requirements of the office (e.g., all of the software programs and do-it-yourself services on the market). There is also a trend for attorneys and other applicants to seek overly broad claims (e.g., claims that are just too open-ended for the Patent Office to allow) simply because this is what they taught to do in seminars and in some law firm cultures. These applicant (and attorney) behavoirs, as far as I can tell, seem to be escaping media and Congressional notice and a lot of blame is attributed to the poor patent examiners.
Can you imagine how overwhelming Legal Zoom must be for patent examiners? I have seen more than one PhD try to write their own complex application using this service. Patent laws are designed to protect innovation, and a patent must be specific as to what it is claiming. A patent is a “mini-monopoly” and forecloses innovation . This means there is a lot of pressure on the patent examiners to get it right when they issue a patent. The examiner has to decide whether to foreclose whole areas of technology for 20 years based on the document they have in front of them, not on the concept itself.
Legal Zoom certainly has its place, and reading a book on patents can be helpful .(e.g. my book). But using using software, etc., without the training to write an application can cause you frustration and jeopardize your rights. Going to the other extreme and hiring an attorney that treats your application as a treatise, rather than a commercial tool, can also delay things for you. And none of this is really not the patent examiner's fault.
Patent lawyers are required have engineering degrees or backgrounds and must pass a special bar exam to draft claims to be called a “Registered Patent Attorney.” Only Registered Patent Attorneys (and Patent Agents) may communicate with examiners on your behalf . But this does not mean that they are always more efficient. In fact, sometimes they are the worst. They can get bogged down in case law and argue endlessly with patent examiners to get you legally broad protection. Yes, “broad” protection is good, but it is worthless if it does not cover things your company is actually ever going to sell. We attorneys love to brag about broad claims, and this can ramp up a client’s bill, delay issuance or get a patent denied outright without the client ever knowing why they needed such broad claims. It’s important, as a client, to reign your attorney in to protect only what you ever reasonably contemplate selling.
Also, the Patent Rules allow telephonic interviews. Our office always conducts them to make sure we are on the same page with the examiner, and the application can be issued economically with a minimum of amendments and back-and-forth paperwork. Paperwork (in the form of excess office actions, Requests for Continuing Examination and appeals) clogs up the Patent Office, costs a lot of money and generally frustrates inventors. But the Patent Office is not always the culprit. Attorneys bill by the hour and certainly we make more money writing responses than making calls.
I think the Journal Sentinel article was very valuable in starting a state-wide dialogue on this issue. But focusing on examiners and Patent Office procedures is not entirely fair. While we are all waiting for patent reform legislation there is a lot that you, as an inventor, can do to expedite the patent process on your end and improve your own allowance rate.
I welcome responses and comments from those of you who have experience in this area.