Hi Susan,
This is from a pro’se or do it your selfer point of view. Office actions can take a lot of time to prepare properly. So $1500.00 to $3000.00 is not unusual at all. It’s before the office action, I believe money can be saved. The small individual claims verses the one or two long claims I have a problem with. If the attorney’s/agents wrote a long claim that covered the hole structure of the device with conjunction after conjunction and finally ending with a period. A lot of unnecessary office actions would be gone, helping to reduce the bottle necking problem at the patent office. That of course would mean less money out of pocket for the inventors. The small individual claims can easily, and purposely be written in by attorneys/agents, knowing they’ll never make it through, and creating an unnecessary office action.
A lot of pro’se or do it your selfers will seek an attorneys/agents on there first office action. The examiners will even recommend it.

Hello Susan:

Your experience mirrors mine. My patent was drawn up by an attorney who previously worked for the United States Patent Office as an examiner. So, I felt confident that his expertise in this field would translate into a relatively easy examination of my claims. Wrong thinking. Almost every claim was rejected for one reason or another. And, yes, the attorney wanted $2,500 more to proceed. This is on top of the $5,550 initial write-up and drawings. Plus, there could be additional costs depending on the attorney’s time spent.

So, I contacted the attorney and his partner and asked them in their professional opinion, and knowing every detail about my idea, what did they think the chances were that this patent would actually go through. I also asked them their opinion on the chances of successfully litigating an infringement if this patent did go through.

I’m still mulling over their answers. However, there is a time-limit to respond to the patent office before the application goes into abandonment.

So, Susan, I suggest that you ask the attorney some tough questions – it’s your idea and your money and the lawyer is suppose to be looking out for your best interests.

I certainly hope this helps.

Thanks for your input, Todd and Cindy.

I just sent an email to my attorney asking him to briefly explain how many claims were rejected and why. I also asked him how confident he was that a response and examiner interview would be successful.

From what I understand, the claim rejection has something to do with prior artwork my attorney believes is appropriate. Hopefully he’ll explain it in a way that will help me better understand the situation.

Susan:

By rights you should get a letter either from your attorney or a copy of what the attorney received from the examiner showing each claim that was rejected and a detailed reason why the examiner rejected said claim(s).

Susan:

Your claim is going as mine did. My patent was rejected and a bunch of prior art was sited. While my attorney was very confident with the initial application, even in the face of other patent attorneys telling me the idea was unpatentable, with the office action he left all the decisions to me.

He felt that he was unqualified to assess the prior art and determine its possible relevance. So, I reviewed everything, decided that while some of the art was relevant, much wasn’t. I wrote the defense, with which the attorney then responded.

The bottom line is that I spend the additional thousands of dollars and now have a shiny patent to hang my hat on.

In my opinion, you should not trust you attorney, ex-patent examiner or not, to evaluate prior art rejections. You understand your product better than anyone else, all the real analysis should be done by you.

Thanks for your help, guys.

My attorney sent me a copy of the documentation he received from the examiner. I have to go through it this week. It would be nice if they included a summary that basically told me in one paragraph what the examiner said in several pages of industry jargon.

Marc, would you mind telling me what the problem was with the prior artwork in your case?

I agree with Mark. Look up the patents cited in the O.A. on Google and see how they are the same and different than your invention. You don’t even have to read the claims of the other patents to get a good idea of what the inventions do. Even if you let the attorney do all of the work be sure to carefully read what you are giving up in the reply to the PTO. You also might consider picking up the book “Patent it Yourself”. I’m currently working on a Office Action myself and it is not that scary, but time consuming. In my office action, all of the claims, but one was rejected due to a simple technical problem (112). Fixing the problem makes more than half the claims allowable. The main problem is the first claim with a prior art 102 type problem. The other claim problems are 103 type problems mainly because of the first claim problem. Good luck.

Hi Sue,

It is normal to have the rejects to the patent. Have you done an advanced search on the uspto’s website to see the rejection ???

http://portal.uspto.gov/external/portal/#7_0_18L

click on the above link and put in you patent application number. Go into the file wrapper and you can view any rejections from the examiner. It’s an advance search and took me a while to get so if you need anyhelp I can walk you through it. Its good to know this especially when working with an atty…cuts the bill in half when you dont have to be charged hourly for them to show you things you can access yourself :-) you will also be able to see your attys response the to rejection once it gets to the uspto’s office

Hope this helps you some

Sorry Sue it wouldn’t let me copy the entire link. Use the first link I sent and that will take you to the retrivals page….then click on public pair…then add you application number….then look for the file wrapper to find the rejections and all sorts of other stuff.

Like I said if you need any help just give me a shout

Good advice Alipat ( I assume that’s you in the red cap?) It’s easy to use PUBLIC PAIR at www.uspto.gov…and I recommend it all the time. Asking your attorney or patent agent for a summary will add to your bill, but at least have a brief discussion on the phone.

I’ve spent decades in the patent system (most at the USPTO and the past decade as a patent agent) and I can tell you the vast majority of patent applications are rejected on the first examination…around 90%. If not, you have to wonder if your claims were too narrow (for example, claims filled with multiple details interconnected by conjunctions as someone suggests above). Even borderline cases are rejected by the Examiner since the eventual patent grant will be considered more “solid” if the applicant has added arguments to overcome examiners’ rejections.

BTW, while the patent application struggle goes on, you should be constantly re-evaluating the market potential and competition for your “baby.” It’s all about business. Good luck.
Don K

Hi again Susan,
This is under (Do your own patent searches for free) I copied these three steps, they should get you your information you need.

8) Hint: I recommend down loading a free adobe reader found here
http://www.your-software.info/adobe-reader/ to view PDF files.

26) Go back to http://portal.uspto.gov/external/portal/pair type in your verification code and your in.

27) Search under “application #” paste your application # into search box. then click on “image file wrapper” to also see drawings an other neat stuff.

What you will look for in the “image file wrapper” is a page that says (Non- Final Rejection) open that PDF file up.
The first two pages are the (Office action Summary).
The third page will be the detailed action page, look for the page(s) with (claims Rejections).
Read the claims rejections over and over again until you understand what the examiner is saying. You will get it sooner or later. Your attorney has 3 months to respond to this office action from the date it was mailed. You can apply for extensions for up to three more months past the first free three months, but those extensions get pricier after every month. 6 months is max.

If you want to see other patent applications, change your last 6 #s on you application, type the new # into search box. then click on “image file wrapper” to see there Non Final Rejection PDF page.

Here is a list of fees you would pay to the patent office.
http://www.uspto.gov/web/offices/ac/qs/ope/fee2...
You would probably fall under Small Entity Fee.

LOL Don, nope thats not me in the redhat….but the 3 littles ones are mine. I am glad you liked the advice I gave, I must admit I am even a bit flattered cause I know when it comes to patents you know your stuff. I am new to this industry and have been trying to learn as much as I can. Lucky for me I have been blessed with a really great mentor and friend who has been teaching me the ropes. I find it so interesting that there is so much information on the uspto website. Its a great resource.

Marc
interesting comment about you knowing your product best. Because that point has been going around in my head for a while. the attorney and other peoples experience is very valuable, but also, perhaps, only you know your product best,(certainly so in my case I think)
Thanks for insight

Thank you for all the input everyone.

My attorney said he felt the reasonings cited in the Office Action made little or no sense. Now I understand why. After going through the Office Action last night, it’s clear the examiner either overlooked or ignored a critical design feature of my invention.

The examiner cited two patents. The first shared one similarity, a part made of a similar material. The purpose of using this material is different than that of my invention, though. The second patent was the reason why my claims were denied.

My invention includes an attachment structure that is cleverly concealed. The examiner believed this attachment structure did not solve any problem or serve any particular purpose. He also felt my invention would perform equally well with the cited patent’s attachment structure. Here’s the problem. The cited patent has no attachment structure to join the two main parts.

There’s a significant reason why the two pieces of my invention need to be joined. In addition, the method of attachment had to be concealed. Therefore, it was strategically designed to be inconspicuious. Without this point of attachment, my invention would not function properly.

I typed my comments on the rejection of each claim and put it in the form of a letter that I sent to my attorney. Now that I understand why the claims in my patent application were rejected, I’m feeling pretty confident that we’ll be able to respond to the Office Action and successfully argue against the examiner’s rejections.

One last thing… I’m relieved that the examiner cited just two patents. Is this a very good sign, or should I expect additional Office Actions rejecting claims based on other patents?

For my office action the examiner found one prior art reference to knock out the first independent claim instead of combing two references to knock out yours. Dealing with one prior art reference is easier than multiple combined references because you only have to become an expert on one patent and not multiple ones. Multiple combined references also means more writing and more cost. From your post it sounds like the examiner just didn’t get what your invention is and what it does. I would suggest that your attorney and you call up the examiner (his/her number is in the office action) and ask them to provide more detail about the office action.

Thanks for your post, Dond.

My invention is an common item. Let’s say it was a doormat and I created a new doormat designed to solve a particular problem.

My patent application describes an attachment structure that connects the two parts. This structure is also depicted in the artwork. What the application fails to do is adequately explain the purpose and/or importance of the attachment structure. This may be why the examiner overlooked it. Hopefully this won’t be a difficult thing to address.

The other patent that was cited was flagged because one of the parts is made of transparent material, as my design is. However, my invention uses transparent material for a completely different reason. Because of the way my product is designed, it could not be used to perform the same function.

I’m tempted to call the examiner myself just to point out the purpose behind the attachment structure to see what he says. I just don’t want to tick off my attorney. Making the call myself would probably save me a good chunk of change, though.

an examiner made a mistake here in the u.k. with my patent, according to the WIPO report and 2 other independent attorneys (and myself).
It must be hell trying to examine other peoples patents all day. mistakes do happen easily I imagine. Someone told me once, that examiners have to work to a tight time limit for each patent.(I would rather be gardening myself)
Maybe It is just a matter of pointing out the mistake and getting it rectified I think.
Like was said, nobody knows your patent perhaps like you do

Hi Susan,
Your examiner will record in writing the exact nature of your phone conversation and file it in your image file wrapper, especially if you discuss the claims. I would probably consult your attorney first on talking directly to the examiner. I’m wondering if the examiner would even talk to any one but the assignee, which would be your attorney. You definitely need to keep us informed on this one. I would be curious to know your attorneys opinion on you calling direct. This to me is a great thead, thanks for sharing.

Hi Susan,
You may not be able to talk directly to the examiner if you signed over Power Of Attorney to your attorney. Your attorney is probably listed as ( Attorney,Agent,or Firm) on your application. So that means your attorney is the only one that has the ability to talk to the examiner as far as I know.
Todd mentioned in the above post about your attorney being the assignee. Thats not a correct statement. Your Attorney should be listed as ( Attorney, Agent,or Firm ), it will be on the application if you have a copy. There is no assignee at this point, your application hasnt been approved for a patent yet. Your still in the examination stage of the patent game…..If you end up getting the application approved for a patent, then there will be a area for (Assignee), the attorney still wont be listed as the assignee unless you sold or gave him shares.
What I would suggest is get a copy of the rejections or go in the uspto file wrapper, read all the examiners rejections then write down why you think the examiner is wrong or not understanding your product correctly. Then sit down with your attorney and go over the rejections. Its much easier that way and cuts down on the time and money you spend with your attorney. 99% of all patent apps have rejections, alot of times its a matter of changing the wording around.

Hope this helps
Gizmo

All of your feedback has been helpful.

Looking at Patent Application, my attorney’s law firm is listed under the correspondence address. The name of my attorney does not appear.

I went through the Office Action and addressed each claim rejection in writing. I then put my responses in the form of a letter that I sent to my attorney. (He’s in VA and I’m in CA). My letter also more clearly explained the purpose my invention’s attachment structure. I’m hoping this letter will cut back on the amount of time it takes my attorney’s office to draft a response to the examiner.

I’ve decided not to call the examiner directly. The last thing I want to do is create any problems or step on my attorney’s toes.

Susan,
Have your attorney let you look at his comments before he sends them back to the examiner just to make sure he’s on the same page as you. Make changes if need be.
Even though your attorneys name doesn’t appear on the application under correspondence there law firm is, I would say you signed over power of attorney at some point.

You made the right decision letting the attorney handle the rejections

That’s an excellent suggestion, Gizmo. I’ll make sure to ask my attorney to forward their response to me for review before it’s submitted.

Thanks!

My patent attorney has gone into Real Estate Law because the premiums for malpractice insurance were just too high: that must tell us all something.

Good luck…

Hi Gizmo,
I just wanted to say thank you for correcting me on the “attorney still wont be listed as the assignee unless you sold or gave him shares.” That clears it up for me too.

Susan your saving your self a lot of unnecessary stress by using an Attorney.
Good luck and I hope you keep us up dated.

No problem Todd,
Actually when a patent is granted and you have it Licensed out, you dont have to put the assignee on the patent document. It’s to your best interest not to because the assignee has the right to do what ever they want to with the patent technology from my understanding. If the assignee decides to screw you over it becomes a civil matter,then you need to decide if you want to bite the bullet and go after them. Why even give someone a chance to get you in that predicament.Your license agreement should be sufficient enough between you and who ever you licensed to. Some larger companys want to be listed as assignee, try not to let it happen if possible.

What would happen if you licensed your patent to multiple companys, man things could really get nasty if there all listed as assignees……

Gizmo,
Your clearing this up big time for me. So the other side of this would be, if you were a big company or (the assignee), and several employees were named the actual inventors. You (the big company) would have full control over the patent, not the employees? Does the assignee have all the power because of there signature as assignee?

Todd, what happens is just say you worked for Black & Decker as an engineer and you design a product at work. Your listed as the inventor and B&D would be the assignee. In reality you as the inventor could go out and manufacture the product on your own. B&d would come after you with a civil suit plus you would get fired. Pretty much all companys have employees sign a non-compete agreement especially if there engineers or in a tech dept. Anything they develop belongs to the employer.
The inventors and assignees have the right to do what they want, if there ok with a civil suit at the end of the day…….

Hope this helped
Gizmo

Gizmo, got ya.
Is this different than; lets say there’s two people named as inventor on one patent (no assignee). would there be a problem legally with one of the inventors going out on his own and producing this invention and not including the other inventor?

Todd,
It wouldnt matter if five people were listed as the inventors. The same thing could happen. There should be a written agreement between all five inventors. If one of the inventors goes out and produces the patented product on there own and is selling it. Then it becomes a civil matter. so yes it would be a problem with me.
If one of the inventors listed on the patent is your buddy, starts buying boats,cars etc, you know he pulled a snooker shot on ya, Thats the only way I know how to explain it to you. Hope this cleared things up.

Gizmo,
Thank you very much. Now back to you Susan ;-)
—-No wait
Julie: “premiums for malpractice insurance were just too high”
So the attorneys are responsible if your patent is infringing on another? Or is the malpractice for proof of incompetence on the attorneys part for inability to prosecute well enough with an application?

Now this would explain why they have to put disclaimers at the end of there post.
One day they’ll require insurance for laymen like myself, I can’t wait to see that disclaimer at the end of my posts.

• The foregoing is not, and should not, be considered always funny advice, and no laymen-client relationship is established or exists by reason of the foregoing commentary.

WOW lots of good info here. I always thought it was normal to have the person you have licensed your invention to listed as an asignee but could never understand why it was done. Maybe someone can explain it better to me. My fear is that if a company (say EPI) is listed as the asignee what happens when the 3 or 5 year term of our exclusive agreement runs out ? Since EPI would be listed on the patent can they still sublicense out the invention even after the contract has expired ? I can’t see what could stop them if they are listed on the patent, but I can be understanding it wrong.

Here’s a document I found on WIPO website…very informative…

http://www.wipo.int/export/sites/www/sme/en/doc...

Margaret, excellent info …………..It pretty much what I was getting at in a shorter version.

Thanks Don those points are very interesting and gives us a clearer
picture of how the patenting decisions come about.

Margaret’s link dispelled a bit of the eternal darkness too

I think I read in the info Margaret posted that an patent assignment is irrevvocable. Something didnt sit right in my gut with it, so I called the USPTO Assignment Division just to verify .

What I was told was if you sign a license agreement with Sears and they want you to make them the assignee listed with the USPTO to make sure theres a performance clause or time limit in the license agreement so the assignment comes back to you if something goes wrong.
All you need to do is have Sears assign the patent back to you , then forward the document to the USPTO assignment division with the USPTO fees and the assignee will be changed.
Its always best to use an attorney that deals with license agreements . Dont use some real estate att……
It has a good chance to come back and bite you.

Great info Margaret – Thanks

So I am guessing it would be best to not have the asignee on the patent at all. Can’t that stuff all be covered in the licensing agreement if there is a 3 or 5 year agreement ?

Todd, I’m not sure – all I know is that 10 years after applying for the patent, I called her and asked her for a consultation on some other idea and she explained that the malpractice insurance was too high so she got out. Infringement might be part of it and the writing of the document, all 8 pages plus drawings, might be another part. What if she had not protected my idea enough and someone else was able to make and market it because of that loop hole and without a patent of their own? I guess I would go after the attorney because I couldn’t go after the company who found the loop hole. I’m going to the lounge – this is all too much for me.

Hi Susan E,

Yes it is very common and most patent app. will get rejected 1 or 2 times but doe’s not mean you will not get it. Mine was rejected twice but I finally got it, my lawyers said it’s all in the wording and how the office wants it written. Unfortunately for us poor inventors it cost more $ each time but for me it’s going to be worth it. I had my lawyers broaden the scope of my patent (which they felt I had a very good chance of receiving)and on that chance it’s costing me a another $6,000.00.If you believe in what you have and there’s a market for it, then it’s worth every penny to get as much protection as you can and when you finally receive that patent it’s a great feeling. Best of luck Tim G.

Here is a paragraph from Profit From Your Idea: How To Make Smart Licensing Decisions…

“Never Assign Your Invention for the “Promise” of Future Payments. Always get the money before signing the assignment. That’s because if the assignee (the person who owes you the money) fails to pay you, you will be trapped in litigation, fighting to get your patent back. If the assignee insists on a series of payments, there are several solutions, such as establishing an escrow account, transferring partial assignments per payment, or setting up a license agreement that allows for ownership transfer after the final payment. You should consult with an attorney to best protect your interests."

Thank You Margret. Great info

I’m glad I started this thread. So much excellent information has been posted in response.

I’m in this for the long-haul. I’ll update you when my attorney has drawn up the response.

Susan: Good post on your part. There still are some rough edges in the posts…but it’s surely been helpful to some. A few points for clarity.
1 It’s definitely a very bad idea to sidestep your agent or attorney and talk directly to a patent examiner about your patent application. The USPTO will insist on maintaining communication only with one party…typically the inventor’s representative…however, as a courtesy, an examiner may engage in some discussion with the inventor…but as someone said, it’s all on the record…and too often results in veddybad outcomes. As a former examiner, I witnessed some that would be funny if they weren’t so pitiful.
2 Tell your agent/attorney you expect to see the correpsondence (coming/going), but be mindful that the more time taken by your rep. in helping you to understand the law and prosecution interaction will sound like a soda straw on your bank account…funds likely needed for later responses.
3 Most patents are assigned since most are filed and prosecuted by corporations whose employees must assign the invention …which may be recorded in (a)the application ready for filing, (b)the pending application, © the granted patent. Independent inventors don’t typically have any assignee during the pending stage so none is shown on the granted patent Assignment and licensing are different animals.
4 Liability Insurance is God’s punishment for those who dare to practice patent law. That and constant prof. development training requirements are factors in your costs for patent prosecution. Cheers dk

Susan,

It is not only normal, but it is the “norm” to have all of your claims rejected. You can consider it part of the process that there need be amendments.

After I took the time to read through the Office Action from the examiner, it was easy to understand why my claims were rejected. I put my comments in writing and sent these over to my patent attorney last week. I believe things will move forward as long as my attorney adds language that further explains the fuction and purpose of an attachment structure that joins the two main pieces of my invention. The examiner’s opinion makes it clear that he either overlooked this feature or ignored it completely.

This patent is very important to me, so I’m leaving it in the hands of the professionals. I don’t want to become a nuisance or step on anyone’s toes. My lawyer may secretly pad my bill out of spite if I do.

I’m cautiously optimistic that this is only a temporary setback. Hopefully no other red flags will go up once we get past this hurdle.

No, sorry… There will most likely be another office action required. That’s just the way the PTO operates. They actually take pride in rejecting a certain high percentage of patent apps. But even in the ones that make it all the way to receive a patent, they have many reasons to make it look like they challenge each and every application.

The patent process is a negotiation. So, your attorney is doing at least a normal job if OA’s are required…

It’s like, if you are ready to pay up to $ 4000 for a car, you don’t offer the $ 4000 at first. You start at $ 3000, then maybe $ 3500. Your attorney probably wrote the claims intentionally too broad, as he should have…

My experience with a previous patent was only a single office action where everything was rejected, The attorney narrowed a claim slightly and removed another. Patent was approved. I just responded to an office action for a different product where once again everything was rejected. Over half of the claims would be allowed if I fixed a technical error. Had to narrow the first claim. Should know something in 3-6 months.

Hi Susan, Good luck with your patent! I’d have to echo what other folks have said here, that a first or even second rejection from the PTO is very common. As sounds like is the case with your patent, there are often good arguments that can be made to overcome the cited prior art, and the Examiner will hopefully be receptive to them and willing to work with you.

Don makes some great points that I’d like to follow up on, from the perspective of a practicing patent attorney.

The PTO does prefer to keep discussions to a single point of contact, even though that “point” might be an entire firm. When we file an application, we usually list the firm instead of an individual attorney, as that gives us some flexibility as to who exactly can file the response or speak to the Examiner. For example, if I’m on vacation, or swamped with other work, one of my colleagues is allowed to sign the office action response even if I drafted it, or speak to an Examiner who calls with a question. In some cases, the primary attorney might sketch out the core argument and leave the actual drafting to an associate with a lower billing rate to help keep costs down.

Your attorney should certainly be willing to provide you with copies of anything that comes from or is sent to the PTO. Some inventors take the attitude that “I don’t want to see it, that’s what I pay you for,” however, so make sure your particular attorney is aware of your preferences.

Malpractice insurance is very high, but it sounds like there’s some confusion as to what is malpractice and what isn’t. Todd asked “So the attorneys are responsible if your patent is infringing on another? Or is the malpractice for proof of incompetence on the attorneys part for inability to prosecute well enough with an application?”
No attorney can (or should) guarantee you that your invention will get you a patent. Even with a good search of the prior art, the PTO may still come up with something new or different, or read the known art in a different way. It generally isn’t malpractice to try and fail to get a patent – sometimes it just doesn’t matter how skilled the attorney is, the invention just doesn’t qualify. What is malpractice, either deliberately or through inaction, is to do something that violates the laws or regulations of the patent office.

Deliberately writing a bad application to draw a rejection and get more work would likely be malpractice, as would ignoring a communication from the office and allowing an application to go abandoned. Beyond the obvious, deliberate improper behavior, there are all sorts of ways that an attorney can be tripped up in patent prosecution. Misunderstanding and mischaracterizing a piece of prior art is one the inventor can help minimize, as the inventor is typically more of an expert on the specifics. Another way the inventor can help is by making sure the attorney is aware of ANYTHING you might have read or relied on in developing your idea, whether it be another patent or a magazine article. Another area that comes up frequently in questions of malpractice or inequitable conduct is who exactly is an inventor. Putting someone’s name on the patent just to give them credit (or excluding someone because you had a falling out) can invalidate the patent as surely as turning up undiscovered prior art, and it’s the attorney’s responsibility to discover this information.

Usual disclaimers apply – I’m an attorney, but I’m not YOUR attorney. This is hopefully helpful information, but is not intended as legal advice and should not be taken as such.

Even though I had asked to review the response before it was submitted, my patent attorney’s office filed the response before I had a chance to see it. Oh well.

Most of the claim rejections involved the examiner’s belief that my product design contained an element that was similar to two other patents. My attorney seems to have done an excellent job explaining in detail how my product design is much different and includes design features that are not disclosed in the other patents.

I suppose I have to wait it out for a while to see what the outcome of the response is. How long does this usually take?

I think the time is somewhat dependent on the type of product you are patenting, but I think it will be a minimum of 60 days and more likely 120 before you will hear back from the PTO. To get a better idea you can look up recent similar patents using Public Pair and look at the Transaction History for a selected patent. Did your attorney get a chance to talk with the patent examiner before sending in the response?