Jim

I’m well aware of that, in fact, I’ve recruited MANY people to this site for that reason. Unfortunately, I was already pretty far my round before I ever heard about EN…

Beadle Rock, Best wishes on your endeavor, but remember EN takes care of all the intellectual property protection for you and it allows you to concentrate on inventing without all the hassles you are now encountering.

Jim

If you were able to write your own application then kudos to you because that’s WAY beyond my capabilities. Having said that, and having seen what the original attorney produced, it didn’t take me long to conclude that I probably COULD have done it myself and when it comes time for the next one, I just might.

The new attorney has not only been much more responsive to my needs but there’s no doubt about it, he inherited a bit of a mess generated by the first attorney. After the second rejection he stepped in with the next response. I had the great added benefit of the fact that his office is located in DC AND as luck would have it, he had dealt with the examiner involved on a prior occasion. I was able to send him some product samples and some other props that allowed him to do a real demonstration for the examiner which proved extremely helpful. As to the critical information that the first attorney left out of the second application, well it’s too soon to know how that’s going to all play out, but I think I’m going to have a fight to the death on my hands. Roger Brown will often point out that patents don’t necessarily add value to a product and cannot guarantee sales, but that simply isn’t the case here. It’s a VERY simple product that ANYONE could make; it’s just that no one ever thought of it before I did. This is simply a case of no patent, no product, period.

Beadle Rock, believe it or not I was in the exact same position you’re in now with my first patent application. I hired an attorney to prosecute the application after I had already written the specification (and Claims) and submitted the application. The first office action arrived and the attorney re-wrote some claims after he had a big argument on the phone with the Examiner, but the new claims clearly showed the attorney had no idea how my invention worked! So the Examiner responded with a final rejection that objected to the new claims. I told the attorney it seemed like the Examiner simply wanted the Claims revised again to coincide better with the way the invention actually operated. The attorney instead dug in and wanted me to pay him a lot more money to file an appeal. I fired him. By the way, he even tried to charge me $300 for reading the e-mail I sent to fire him! Anyway, since I no longer had an attorney representing me, I was able to have interviews with the Examiner and it came down to the Examiner writing new Claims for me and even suggesting how he was able to write them in a way that drastically broadened the protection against infringement! And that’s another important point, which is the Examiner is obligated to write Claims for a pro se applicant when there is obvious patentable material included in the application. And if you get along good with the Examiner, you can even negotiate with him/her to broaden the newly-written Claims as much as possible! Don’t get me wrong though. There are some real a-hole Examiners that won’t give you the time of day. That’s what I mean when I say you need to learn to read the situation and act accordingly. So you need to learn enough to at least do that effectively. Get legal assistance when you need it and especially when writing the Claims!

Jim

You appear to be quite correct when you say:

“If Beadle Rock didn’t write either of the specifications, the new attorney has an added burden of being bound to what’s been already written by the previous attorney since new material can’t be added to the specification.”

I understand that claims can be added, deleted or modified as it’s already happened as part of the examination/response process already. When you say:

“…try and write Claims for both the device and the method so that the earliest filing date applies to everything originally included in the specification.”

I’m not quite sure what you mean by that. The claims for both the device and the method were already written by the original attorney. Forgive me if I sound obtuse, but my sense is that the issue is about the specification and not the claims. It’s more about a detail that was specified for the final draft that never made it in. So perhaps that invalidates the claims? I honestly don’t know because I don’t speak the language. All I know is that the first guy screwed up, the second guy is somehow stuck with that and it could sink the entire patent somehow. That would be a very bad thing because the patent for the method could easily be worth MUCH more than the one for the device over time…

Luis, my original suggestion was that any serious inventor should learn as much about the patent examination process as possible so they can do what they comfortably feel they can do for themselves without incurring the costs of an attorney. No doubt some inventors would be proficient at doing more before obtaining legal assistance and some inventors would have to pay more for legal advice earlier in the process. There should never be any skimping done when it comes to writing the claims though, because they’re what determines the scope of protection against infringement. If Beadle Rock didn’t write either of the specifications, the new attorney has an added burden of being bound to what’s been already written by the previous attorney since new material can’t be added to the specification. Jayme just gave a suggestion to get around that problem, which was to file a continuation-in-part application, but in that case there would have been limitations imposed. Beadle Rock will find out (maybe the hard way!) that Claims can be added, deleted, or modified in order to overcome objections of the Examiner or else to broaden the scope of protection. My suggestion is to try and write Claims for both the device and the method so that the earliest filing date applies to everything originally included in the specification. The least Beadle Rock can do is ask the new attorney if what I’m suggesting to do with the Claims is possible.

Yes, they have passed the bar exam, so you have to wonder, why the ball dropping?. You just changed attorneys due to alleged incompetence and you are amazed at the possibility that they do it?

Jim, as a direct result of the lack of proper funds, which is a direct result of their diversion, Examiners are on a production quota regime. They must allow and reject cases within a prescribed ratio. I think it is 60% allowance/40% rejection. This I learned directly from an examiner. Don’t you love the arbitrariness? ((If you have 100% of allowable cases, for God’s sake, allow 100% of the cases. And if you have 100% of rejectable cases, just go ahead and reject them all))

Guess which cases they are more inclined to fight and make difficult? Yes, the ones filed by what they perceive a ‘weaker’ opponent: A pro-se-filer. (This is only my opinion, of course)

Guess which cases they are more inclined to grant? Yes, the ones filed by what they perceive a stronger’ opponent: A patent attorney. (This is also only my opinion, of course)

These attitudes and predispositions are promoted by the absurd quota system (Brought to you by the Diversion of Funds). Even ethical and honest examiners may be trapped iinto this way of reasoning (at a conscious or subconcious level). That PTO is a wild jungle. A patent examiner once told me: “Sorry, Mr. Rodriguez, I just had to get rid of your case.” [SIC]

Now, based on these opinions of mine, my strategy would be to try to have all correspondence handled by an attorney. Yes, you are right, in this case Applicant can not participate in personal interviews. That is not necessarily a bad thing, IMHO.

If you retain a patent attorney to represent you as Luis suggested, then you may have better bargaining leverage, but you will not be allowed personal contact with the Examiner and they won’t talk to you directly anyway because they can’t. Filing as a pro se inventor allows the inventor to keep the privilege of having a one-on-one interview to try and get into the Examiner’s head. There are many good reasons for seeking professional help with a patent application, but maintaining close contact with the Examiner is not one of them. On the contrary, getting a biased interpretation from a second person about what objections an Examiner has and what will or won’t be allowed may be a big impediment that can cost the inventor many thousands of dollars!

Jayme

The original patent was rejected on the first two attempts with the first attorney. That’s when I brought in his replacement. He set up a face-to-face with the examiner because his office is in DC. He felt that went very well as he was able to demonstrate the product for the examiner. While this was ongoing, I received the first office action on the second patent which is now also in the hands of the new attorney. He has a copy of what was filed and is preparing a response. It was just by coincidence we ended up speaking on the phone about it today because I had asked him if he had anything to report. It was then that I discovered that the critical piece of information that I had SPECIFICALLY asked to be included was somehow omitted! This information can quite simply make or break the patent. My new attorney tells me we can’t put it in now. I decided to ask about this situation to see if there is anyone else who has ever filed a patent had experienced anything similar. Not being an expert on any of this, it seems SO PLAUSIBLE to me that this could easily be a very COMMON experience when filing patents. In other words, I can’t believe something like this has never come up before.

Luis

I have NO DESIRE to take any legal action against my former patent attorney but it certainly seems to me that one could make the case that his office dropped the ball on that original application. If my new attorney can’t find a way to fix it and it could end up potentially costing millions, I ask again, what other recourse do I or anyone else have?

As far as the issue of double patenting is concerned, again, isn’t this the sort of thing you hire these guys for?? Aren’t THEY supposed to know how to proceed?? I’m sure the book you refer to has lots of great information but certainly it can’t compare to someone who has passed a bar exam. And the fact of matter is, it can’t help in this case right now. I’m sure there are MANY things I’ll do differently when I go to file my NEXT patent, but I can only fight so many battles at one time…

I am just trying to help, BeadleRock. It is not that simple.

Even if you do the work yourself you may want to have an attorney representing you so you have better negotiating leverage with the examiner.

On the other hand, the whole thing is very tricky. You ask pro-se (and also lay-people) filers to answer specific patent questions. That is just like practicing law. You need a law degree (at least an Agent Certification) and be registered with the PTO to do that. Then, it gets trickier when there are so many aspects and circumstances that need to be known to offer a specific answer.

Anybody can address abstract, general issues here and there, but your situation is way too specific for that. That is why I pointed you to the PIY book. I still recommend that route.

Failing at retaining a practitioner that you trust 100%, your best bet is to get some deep enough first hand understanding of the whole thing. You don’t need to learn the entire book. Or an entire chapter. Or even an entire paragraph. You just consult it to answer the questions that concern you. You may forget the whole thing by next week. But I think that reference is more reliable and useful than any opinions you may gather here (in the vacuum)

That is what it is: a reference.

BTW, in the situation you relate, namely: two applications for essentially the same thing; there might even be a risk of double patenting with potentially fatal effects to your IP. Both patents may void one another leaving you with no protection at all (You would then need a Terminal Disclosure to fix this). I am only speculating about one of many possibilities. That may not be the case, but it might perhaps be. This is a complex thing indeed. Not as mysteryious as some want to portray, but it is indeed a complex thing.

Again, this is not legal advice. I am not an attorney or Patent Agent.

As for legal action against anybody, yes that is an option that you are entitled to. I do not question its legitimacy. I simply wonder its practicality towards a happy, satisfactory ending. Is it worth it?

Just trying to help, my friend. Good Luck.

Better yet, if the method and device are adequately described in the specification, then there is no reason one Claim can’t be written commensurate with the specification for the method and one for the device. You can have three independent claims without incurring additional costs, so use the three wisely.

Beadlerock,

Did your attorney mention filing a continuation in part application to add the new matter in your application?

This may be one option, although it will mean that the new matter will have a later priority date.

Jayme

Get the book ‘Patent It Yourself’ by Pressman and then dive into all the information offered by the Patent and Trademark Office at uspto.gov. To make it all easier, get your own Private PAIR account (Customer Number and Digital Certificate). You can then file on-line with the EFS system and keep track of your applications as necessary. The main point is to do as much yourself as possible and know when to get the right help when needed so you can reduce the cost substantially. Get help writing the Claims for sure.

The two patents are separate yet related. One is for an actual DEVICE; the other is for a PROCESS that can achieve essentially the same end result. They were filed within less than a year of each other. The same prior art applies (or perhaps doesn’t apply) to each. I feel I’ve done enough reading to have an idea of how the patent process works. I can certainly say that a LOT of it appears SUBJECTIVE in my modest opinion, but it is what it is. I changed attorneys because the first one didn’t seem to be getting the job done for what he was costing me. The new attorney has been much more responsive.

Luis, could it not be readily argued that the reason anyone would use a patent attorney is because they know little or nothing about the process? And could it not be furthered argued that THAT’S precisely why they might resort to using a patent attorney? I feel I asked the most intelligent questions I could think of when I hired the guy based on what I had read about the process. Leaving aside the fact that I was not impressed by the overall job the first attorney seemed to be doing, my issue is more specific than that. I SPECIFICALLY told this individual’s proxy that a certain piece of information needed to be added to the application. It’s contained in the last draft I gave them. But I’m just now learning that the information never made it into the version the first attorney filed! Now, the second attorney is telling me we can’t simply add it in, it’s too late. He didn’t seem to be holding out hope that we could ever find a way around that. That’s what prompted me to ask (rhetorically) if my only option was to consider suing the original attorney. What if there were millions of dollars on the line? Is that not cause to consider taking legal action?

Hi, Beadle Rock.

See? It is a very tricky situation. The information you provide is very limited. And that is perfectly fine, because there are many, many possible scenarios. Are the two applications correlated? Is one a continuation of the other? A Divisional? Why did you file a second one? Was it requested by the Examiner?, etc.

What if the attorney that files the suit on your behalf also drops the ball? Are you going to sue him as well?

I think that anybody becomes a better client when they understand first hand the patent process. I think it has been overly mystified. It is not such a big deal. I think understanding the patent process also makes you a better inventor. Yes, I believe so.

My advice? Buy (or borrow at a library) the book “Patent It yourseldf” by David Pressman. You’ll have all the answers to these questions and many more.

Please, don’t sue me! :o) I am not an attorney, and this is not legal advice.

Good luck

Well I could probably spend days using the search button and not find the answer to this one so I’ll just ask it in the hope that it might click with somone who’s had a similar experience.

I have two patents being adjudicated by the USPTO now. I just realized now that on the second application the patent attorney (who has since been replaced) left a key piece of information out that was in the last draft I had sent. Exactly what sort of recourse does one have in this situation? My current patent attorney tells me that it can’t be put in now, so what the hell am I supposed to do? Do I sue the original attorney for his glaring omission? Suggestions?

I have successfully filed one, whether it will successfully be granted is yet to be seen :)

Green search button. Top Right. Bazzzzzzzzzzzilllllllion leads. Welcome to EN! Lots of inventor learning to be had here.