Two Roads. One Destination
The Path in the PTO Dramatically Changes Patent Value on the Balance Sheet.
Many of our clients transfer patent applications that were originally drafted by other firms. At some point the client realized that the progress was too slow and too expensive, and then they seek our help to get the patent process done.
When they transfer the responsibility to us to "get the patent done," the client already strongly suspects that there are too many office actions that ring up too many legal fees without the end result of an issued patent. These clients realize they have paid too much and it has taken too long.
However, these clients were not being told how important is the path their claims have taken in the Patent Office. The path can be more important than the destination (i.e., the words of the claim)!
Consider two paths through the Patent Office examination process. For arguments sake, let's assume that both paths end up with identical claims.
Option #1: The Broad Claims Path
The first path, and unfortunately very frequent path -- let's call it the "Broad Claims Path,” starts out with very broad initial claims, which get narrower and narrower over three or more office actions with no end in sight. (This is the path we frequently see in cases that are transferred to our firm for rehabilitation.)
In this Broad Claims Path, we see very broad claims that cast a wide net that would be infringed by many products. This may seem to a client like they will get a really valuable patent and they are off to a great start with much hope.
However, this Broad Claims Path rarely, if ever, serves the client's best interest. Here is how we see the Broad Claims Path plays out:
A) The impressive and short claims initially filed with the Patent Office appear to be extremely powerful as they enter the queue for examination.
B) At the first office action, the examiner rejects the claims based on unexpected prior art that seems off-topic from the client’s product.
C) The attorney changes the claims to include something that is not in the off topic art, makes some arguments (that are incidentally not directed to the ultimate point of novelty because that still remains to be discovered!), and bills the client for a few thousand dollars.
D) In the next office action, the examiner rejects the amended claims and arguments as unpersuasive and makes it final.
The typical Broad Claim path continues on to loop through one or more of the following cycles ...
E) The attorney tells the client that an RCE needs to be filed to get a new office action, changes the claims, and makes new arguments. The client pays a few more thousand dollars to spin the wheel again.
F) In the next office action, the Examiner does a new search and finds more prior art to reject the again narrowed claims.
G) The attorney changes the claims yet again, makes still more arguments, and sends another bill.
H) In the next office action, the Examiner again rejects the arguments and goes final.
I) The attorney says "we need to appeal" and prepares an appeal brief with arguments and bills the client.
J) The appeal often results in essentially a stalemate and returns the matter to the its state just prior to the appeal.
K) GO BACK and REPEAT STEP "E" AND CONTINUE TO REPEAT STEPS "E-J" AS LONG AS IT TAKES or UNTIL THE CLIENT GIVES UP (because most attorneys won't stop this process)!
You can see how repeating this cycle adds delay as costs skyrocket, all while your claims scope is being narrowed from their initial Broad scope. Even worse, the patent becomes less and less valuable with each additional step! Here is why...
The biggest economic loss of value in taking this Broad Claims Path is not in the attorney and government expenses, but in the LOSS OF CLAIM SCOPE!
How the Broad Claims Path Destroys so much Value of the Patent Asset
The biggest economic loss to the client when we see 4, 5, 6, 7, 8, or more office actions, multiple RCEs, and appeals, is actually hidden.
Every argument to distinguish the claims from the prior art, each claim amendment or cancellation, every word added to the claims to make the broad claim narrower, results in loss of claim scope in at least two ways.
First, every argument that the attorney makes to distinguish claims from prior art creates an argument to avoid the patent. If you try to sue a competitor on this patent, they can avoid your patent if they can flip your attorney's argument around against you.
The goal here should be to make as few arguments as possible, and make no arguments at all if you can.
Unfortunately, the Broad Claims path positions you to have to make multiple arguments, any one of which could be turned to serve your infringing competitor as a "get out of jail free" card.
Second, every amendment your attorney makes to narrow a broad claim to be acceptable to the Patent Examiner destroys the crucial "Doctrine of Equivalents" protection. For example, if your original broad claim recited a "fastener," and you narrowed the claim to recite a "nail" then your competitor could safely design around your claim by using a bolt, screw, glue, Velcro, latch, duct tape, etc... any fastener other than a nail. With all the narrowing amendments that are necessary to get an overly broad claim allowed, this alone could bleed all the value out of an otherwise very valuable patent.
In my view, this Broad Claims Path seems to be rigged to ensure the lawyer gets paid more than necessary relative to the value of the service rendered to the client, and the value of the client's patent assets on the balance sheet is permanently, substantially and unnecessarily damaged in the process.
The Broad Claims Path benefits the lawyer too much, and the client too little. Yuck.
Option #2: The “Claim Path” that is Informed by a Well-Defined Point of Novelty
The second path, and the path that I believe is the vastly superior approach for the benefit of the CLIENT, starts before the patent is even drafted by making an information-based analysis of the prior art landscape, and does what very few patent lawyers seem to do – it articulates a clear point of novelty. This sets up the entire patent process for success.
The process necessary to articulate a well-crafted Point of Novelty takes training, experience, logic, technical and legal skill sets, as well as a dedication to serve the client because it takes a lot more effort and skill up front.
But that effort pays for itself again and again in many ways throughout the life of the patent.
Here, the most profound difference from the Broad Claim path lies in minimizing the arguments and amendments. This path yields far more valuable claim scope for you, preserves your rights to use the powerful Doctrine of Equivalents, and takes away design-around opportunities from your competitors!
Following this alternative path, we see clients consistently and predictably realize litigation quality claim scope, while receiving more patents in much less time. This alternative path leverages up-front thinking to avoid excessive and unnecessary back end costs during patent prosecution.
Bottom Line for Businesses
What is at stake for you is what you consider to be the crown jewels of your business. Good ideas for commercially valuable inventions don't come along every day.
You certainly don't want the potential value squandered by random stabs at getting the idea protected while you pay for legal bills for services that aren't materially moving your business opportunity forward.
Yes, there are circumstances when it is necessary to fight through the Patent Office with an RCE or even an appeal to negotiate with a difficult Examiner.
But the negative effects of the Broad Claims path can be substantially avoided or even eliminated. And this can be done in a way that is routine and systematic.
The seeds of difficult, expensive and time-consuming battles in the Patent Office are sown before the patent is drafted.
It begins with the failure to identify a point of novelty. If the person drafting the patent application is unable to articulate a clear point of novelty, then the die is already cast. In that case, there is very little chance that you will find a smooth and direct path through the Patent Office or that you will get optimal value from claims that will stand up in litigation.
There is a better way. If you would like to discuss how to position your crown jewel ideas to take the "Claim Path Informed by a Well-Articulated Point of Novelty," you can reach me at (512) 649-1046, or [email protected]
To your success!
Craige Thompson, JD, EE, PE
Author of Amazon's #1 Best Seller, Patent Offense
Craige devised a patent strategy like we were going to war
Craige Thompson and the staff at Thompson Law office have done an outstanding job for Flyback Energy Inc. Intellectual property underpins every aspect of FEI technology. Craige has a high level of engineering knowledge and an in-depth understanding of physics as well as great legal expertise. Flyback Energy Inc. lost thousands of dollars to other patent law firms because they could not grasp onto or understand the complex electromagnetic physics that FEI technology is based on. Not only did Craige create great patents for us, he devised a legal defense strategy like we were going to war. The patent work Craige has done for FEI has also been very expedient and cost effective. Bar none the best.