Patent Strategy

Getting Patents Cheaply

It is not uncommon to receive a phone call from an inventor who wishes to write their own patent in order to save money but wishes me to help them in some way. Usually, the inventor asks me to read or edit their patent application and help them file it.

This type of situation is one in which neither the inventor nor attorney can possibly get what is best for either of them. It is a road to disaster.

Building a Patent Thicket

One of my clients likes to describe patents as hyenas. A lone hyena can be easily frightened away, but a pack of hyenas can be very aggressive.

With one patent, a competitor or potential infringer has one thing to analyze, dissect, and find a way around. It may cost a little bit of money to analyze, but it is certainly a doable proposition.

With a dozen patents, the competitor’s workload is substantially increased to the point (hopefully) that it is cost prohibitive for the competitor to find work-arounds for every one of the dozen patents.

Inventor’s Myopia

There are times when an inventor can be very myopic. There was one inventor several years ago who insisted on very specific definitions of his invention and would not permit any variation from his vision of the invention. The inventor would not consider any expansive definitions or alternatives to his idea. He was so fixated on his little view of the invention that he could not see how it could possibly be expanded.

As I work with a client to understand an invention and begin writing an application, I spend a considerable amount of time and effort to come up with different embodiments and alternatives for the concept. Since my background includes many years as a practicing engineer, patent holder, and entrepreneur, I have a unique vantage point to expand the scope of coverage for a patent application.

Slowing Down Patent Issuance

There are many strategies and situations where slowing down the patent from issuing is an enormous benefit to the client. Personally, I take a very proactive approach to making the patent issue as late as possible where this is needed, such as filing a provisional application. I could not bear the thought of writing a sloppy patent application or intentionally filing claims are ambiguous or need a lot of work to clean up. I think it is reprehensible to intentionally and needlessly drag out prosecution by filing endless responses to Office actions, because it lines the pockets of the attorney without benefiting the client. I do think there are legitimate, low cost mechanisms that can extend the prosecution time to help the client get the most protection for the money spent.

How to Speed Up A Patent

In order to speed up issuance, the patent may be filed as a non-provisional application right away. This gets the application into the queue at the patent office first.

Even though the examiners are supposed to take the applications in order, every examiner has some discretion on which ones they handle. In order to get the application through quickly, the patent attorney should draft the application with the examiner in mind.