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Archived updates for Thursday, December 15, 2005

Why "Just Get Me a Patent" Doesn't Work

Any good patent attorney knows that they can get a patent on almost any invention. Unless every feature of the invention is disclosed in a single "prior art" reference, then the Patent Examiner will be forced to come up with a reason as to why one of ordinary skill in the art would have had a reason to combine features from different references in order arrive at the invention. Since the Examiner is very unlikely to have gone to law school, much less tried to keep up with the latest court decisions on so-called "inventive step," then any lawyer worth their salt can almost always come up with a plausible argument as why the Examiner's combination of references is improper and the patent application should be granted.

Mind you, this is not the fault of the Patent Examiner. They are paid to simply follow the Office's Manual of Patent Examining Procedure and fulfill their examination production quotas. Besides, it's not always that easy for the attorneys who represent inventors either. In fact, beleive it or not, I once heard a partner at a large patent boutique say that they rarely challenge a rejection for lack of inventive step because they are rarely ever successful.

If it is really that easy to get a patent (and for a good attorney it is), then the real question for clients to ask themselves is whether the scope of protection that a patent might provide is worth the cost. But isn't that true for all business assets? Aren't managers are always asking themselves whether the money they spend will increase the value of their business by a larger amount. And if successful businesses don't spend money on non-performing assets, then why should they spend money on securing a patent that will never present a real threat being enforced?

Of course, the other way to look at patents is as just another legal expense under the "cost of doing business." Under this approach, some clients will decide that they need a certain numbers of patents. And most patent attorneys will gladly oblige. It doesn't matter what the patents cover, or whether the client would ever want to enforce them. After all, just getting a patent is a lot easier to bill for than trying to learn your client's industry well enough to teach your client what they need to know about the patent system in order to determine the value of a patent to their business.

Sure, the client can always come up with some justification for their magic number theory. "Those patents will showcase the value of our engineering," they say. "If we get enough patents, one of them is bound to be a grand slam," or "No one would dare sue us if we have enough patents of our own." Besides, "aren't patents way too difficult to enforce anyway?" And, of course, they're right, at least until somebody actually bothers to read their patent claims. (I have found that it usually takes about three minutes for me to review a patent with a client in order to confirm that my client does not have any products that infringe).

This may all be good for patent attorneys and inventors. But is this approach really good for the patent system? Is it good for society?

If I call a doctor with a headache and say that I want a CAT scan just to make that nothing is wrong, I'm not going to get it. The doctor is going to tell me to first come in for an examination, and prior art examinations are to patent applications what physical examinations are to medical diagnosis. Without one, there is no way to tell what, if anything, may be appropriate for the invention or the patient.

Nonetheless, some clients will insist that their inventors know so much about the prior art that prior art examinations are simply a waste of money. (I tried a similar line on my doctor once, and guess what it got me.) Besides, who's a patent attorney to argue. The attorney will almost certainly make more money re-writing the application after all of the claims are rejected, than they would have made from the prior art search. And the inventor will get at least one more shot at getting another patent notch on their belt.

Of course, no one ever dies from a poor prior art examinination. But I have seen a few small fortunes pissed away on useless patents. Besides, medical/prior art examinations are also serve other important functions. They put the doctor/attorney in a much better position to explain the prognosis for a particular treatment/prosecution regime. Of course, some patients/clients don't want that level of detail, and some doctors/attorneys may think that's not what they are being paid for. But aren't both professions obligated to explain the risks, benefits, and likely outcomes of their work? Aren't we obligated to use our skills in only the best interest of the patient/client?

So don't call me and say "just get me a patent." I'm likely to tell you that you need an examination, talk to you about cost, benefits and likely outcomes, and I might even tell you that there is nothing more that the patent system can do for you.
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