What to Expect When You're Expecting a Patent: Managing Emotions

People apply for patents for all sorts of reasons:  fulfilling a bucket list item, burnishing a resume or for career advancement, wanting to solve a problem, and wanting to make a ton of money.  Often, inventors want to achieve all of the above. There are no good or bad reasons for wanting a patent - there are just reasons.  If the reason for wanting a patent is primarily financial, you need to beware of emotional decision making during the roller coaster ride of patent examination. 

When I first meet an inventor, s/he is really excited.  Who wouldn't be? This is  YOUR brainchild and who doesn't want to see that validated?  Filing the application is a happy, euphoric day.  But letting your emotions run the program can cause you to make bad decisions.  Most inventors are convinced that their inventions are unique and worthy of a patent.  However, during active examination of an application, the very first contact from the patent office is usually a non-final rejection letter stating all the claims are unpatentable.  I dread opening these letters, by the way, because while I know they will all say "rejected" I won't know whether those rejections are solid or squishy.  What I do know is that "rejected" has a huge emotional impact on the client.  All are unhappy, some verging on the irrational. How dare they!  The examiner is stupid - can't he recognize genius? And at some level all believe the rejection letter is a personal reflection on their creative abilities, an insult to them and their invention. The rug has been pulled out from under them.

Staying cool and collected is important here.  The rejection is not personal and it certainly doesn't mean your invention is bad or stupid. I tell my clients to read the letter for what it says, but not necessarily believe what is written because the patent office does get it wrong, and importantly, the rejections are based on the claims as written, meaning that if we amend the wording, cancel, or otherwise replace those claims, what was once rejected can become allowed.  This is how 99% of the first letters are rejections, but about 50% of all applications still become patents in the end. No need to stand on the ledge and threaten to jump over a non-final office action! What I need from an inventor is for him or her to stop hyperventilating and to focus on the rejection and how the rejection is or is not supported by the references cited, and how we can change the wording so it skirts the references and the rejections while still protecting the invention.

Clients are often angry with the examiners, especially when they cite what looks like crazy prior art.  I had once case where I had to deal with endless tv remote control references being held up as being the same as a clever remote controlled robot (we eventually won that one).  The examiner just didn't get it and it doesn't surprise me when you are dealing with cutting edge technology. In that case, the client was cool and rational.  He participated in our interviews with the examiner, and was able to use his verbal gift of explaining things help light the way forward.  But other clients I will absolutely not include in interviews because they are so hot headed they explode during the interview.  The examiner is always God - I do nothing to personally attack the examiner.  I criticize the reference and the reasoning instead, but an emotional client will usually go after the examiner personally, and examiners are human.  If your examiner hates you, it taints his or her judgment, I am positive of it.  Clients letting their emotions run amok have hardened examiners and in some cases sabotaged examinations. For one drawn out examination (over a year), I would call the examiner twice every time - once with the client, and once after to apologize to the examiner and try to "patch things up".  We eventually won that one too, but it was tough. And expensive.

One of the worst thing clients do is not understand the hard, rational facts about financially-motivated patent applications.  The invention has to be able to make you at least $50K in order for you to break even for the average mechanical object, like a new cup or a chair, and more if it's a software or computer based invention.  You have to know how much you are willing to spend, and walk away from a patent application that has little chance of succeeding, either in the patent office or in the marketplace.  That client with the tv remote problem let go one of his applications that ran into trouble, deciding to put his money towards one application he felt was more valuable.  It was a good decision. He knew how much the invention was worth and was not willing to put more money in it than it was worth.  I have known inventors who have pulled out all the stops and spent every last dime trying to obtain a patent that early on in the examination I suspected might be a lost cause based on the research cited by the examiner. 

A patent application is like an old house you're renovating:  it can be a money pit or a great experience.  Whether your invention has a patent or not does not necessarily mean your product will be an abysmal failure in the marketplace.  The patent gives you an early monopoly to help you establish your product in the marketplace. But not everything that has a patent is successful.  What I do know is that no good invention - patented or not - has done well without good marketing and good business plans.  These are basic skills often overlooked but these skills will often determine what ultimately happens to your invention - regardless of any patent or lack thereof.

Copyright 2016 Karen T.W. Sutton All Rights Reserved.

 Not intended as legal advice but as general legal information. For your specific situation, you should contact an attorney.