I got a phone call the other day from a prospective client who wanted some assistance with preparing and filing a response to an office action. She told me that she’s been spending a lot of time and money on her application and she was really getting tired of getting nowhere. “Do you think you can get my application to register?” she asked. “I’d have to take a quick look at your application first,” I responded. I went on to tell her how I generally handle office actions and gave her an idea of how much I’d charge her for it. Then I told her that I’d take a brief look at her office action and figure out what exactly I would need to do and give her an exact quote. We agreed to speak again the next day.
That afternoon, I found the application in question and I quickly found out that this lady drafted the entire application herself. Now, I’ll be honest and tell you that there are many instances where hiring a lawyer isn’t necessary. But if you’re thinking about filing a nonprovisional patent application, please, I beg you… do not skimp on hiring a patent attorney. It’s like trying to perform a surgery on yourself.
Needless to say, this application was pretty rough. The description was inadequate. There were too many drawings. The claim construction was poor. It was just really bad. The next day, I spoke with the lady again. I told her that her application would probably not register, and her best option at this point was to file a continuation-in-part application, which would allow her to add to what she already had in her current application while keeping the priority date for what she already disclosed. “Why would I need to add new information? I already included everything that I needed to,” she said.
I tried to explain to her that anything that she did not disclose before in the specification would be considered new, even if she didn’t think so. For example, say you have a remote control, and the buttons on the remote control can glow in the dark, but you only said that the remote control had buttons. So if you tried to argue later on that your buttons could glow in the dark, it would be considered new information.
I also tried to explain that she needed more information in the specification to construct stronger claims that can be supported by the specification. This is a harder point to sell to inventors sometimes. Usually, inventors are more focused on the specification as a whole. But the claims are very important because the claims define the perimeter of your patent rights. It tells the public what you are claiming rights to. This is why patent examiners mostly focus on the claims during patent prosecution. And if your patent is ever challenged before the PTAB (patent trial and appeal board) or involved in an infringement suit, your claims will take center stage.
Anyways, this lady was not very convinced that she needed to file a continuation-in-part application. Apparently, she talked to the examiner and the examiner told her that she could just file a response. Well, of course the examiner would tell her that. Examiners are not concerned with getting her application registered. In fact, they don’t have the same interest that I have as a patent attorney. My goal is to broaden your rights as much as possible, whereas their goal is to narrow your rights as much as possible.
What is the whole point of me telling you all this? I’m telling you this story for a couple of reasons. First, I can’t save everyone. Some clients just won’t take your advice no matter how sound your advice is. It’s nothing personal. It’s just the odds. Second, you sometimes have to rely on professionals to do their jobs. Patent procurement is an art you have to master, and not everyone can do it. If you try to file an application yourself and you can’t get your application to register for one reason or another, there’s no second chance. It’s pretty much a one shot deal.
I ended up not working with the lady, but if she ends up hiring an attorney, I hope she takes his or her advice.
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