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September 26, 2004
Understanding The Invention: A Difficult But Fundamental Part of Patent Law. Part 1
My experience with searchers is that using one in Washington to search at the PTO is like playing telephone, where the patent professional thinks he understands the invention after a short interview, translates that into a few words, and sends it off to be searched. The searcher has no knowledge other than those few words, so he does his best and returns some prior art.
My first experience was as an independent inventor (I had several patents through my employers at this point), where I went to the only patent attorney I knew and I explained my invention, which was a bracket for a sawhorse. The bracket clamped on a 2x4 and had sockets for 2x4 legs. The sockets were able to pivot to allow the legs to fold. The key concept was that the sets of legs at either end of the sawhorse were slightly angled so that the legs did not hit the other set of legs when they folded. The entire invention was the slightly angled part, done in a very specific way with a very specific result.
The patent attorney did not bother to take the time to understand the slightly angled feature. He wanted me to draft a description to send to the searcher in Washington. At the time, my patent drafting skills were, shall we say, not honed. Even now, after drafting over 100 patent applications, describing the specific angled feature is difficult. The attorney wanted no part in helping me in the difficult part of finding words to specifically describe the invention. He wanted me to assume all liability for understanding the invention.
I received a stack of patents plus some ‘analysis’ done by yet another attorney whom I didn’t meet until years later. The analysis completely missed the boat because no one took the time to understand my invention. The attorney washed his hands of it because he used my words. I was the only one I could blame.
I was also horrified when I received the bill. Even more so when I read the analysis, which completely missed the boat. Out of 20 or so prior art references, only one was on point. All the others could have been discarded, but instead were given detailed analysis in bill-by-the-hour fashion.
To make matters even worse, the attorney implied that I really needed a favorable search report if I was going to be able to license the idea. Based on that and without him offering to help, I tried to rewrite the description and the whole process was repeated by the same people with the same results.
I paid over $5000 for two searches on the same subject matter by the same people with the same results. By every standard, the search was incompetent and incomplete because the attorney, who I thought was my representative and advocate, did not bother to completely understand the nuance of the invention.
A couple years later, when I was relating this story to the same attorney, he actually laughed at me and mocked me for paying the bill because it was so over the top. By the way, that horrible experience with that particular attorney caused me to begin studying for the patent bar exam so that I could do this type of work for myself and not be subject to outrageous fees for incompetent service.
The next installment will be more lessons learned.
Posted by krajec at September 26, 2004 12:49 PM
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