Professional Milestones
Jan. 30th, 2009 01:50 pm![[personal profile]](https://www.dreamwidth.org/img/silk/identity/user.png){kind=small}
lawnrrdI just won my first patent appeal.
I should explain. Getting a patent is not a straight up-or-down decision. We draw up and submit a patent application, which includes a description of the invention and claims, which describe the protection that we think our client is (or at least might be) entitled to. A patent examiner then reviews the application and searches for evidence that our claimed invention is or isn't new.
The process is usually a formalized kind of negotiation, in which we try to reach agreement with the examiner regarding which claims are allowable. Sometimes it works. Other times—and these days it feels like most of the time—we wind up at an impasse: we think our client is entitled to something, but the examiner insists that all claims must be denied.
At this point, you can abandon the application, or you can take an administrative appeal to the Board of Patent Appeals and Interferences. The appeal involves briefing and possibly oral argument before a panel of three administrative law judges.
This application could be particularly important to a major client. We felt that it would be hard to win, mostly because it was the kind of application that the Patent Office has been largely hostile to. But it was important enough to the client that we decided to take a shot. I wrote the briefs in 2007, and I had oral argument (my first ever) in October 2008. Coming out of the argument, I felt that we weren't going to get everything—the panel had pounded me too hard on some points for that to be likely—but we were going to get something.
I was right. Out of the twenty rejected claims that we had appealed, the Board reversed the examiner as to eight, including most of the subject matter we had really wanted.
I'm kind of over the moon about this, not least because my relationship with this client is the closest thing to job security that I have.
(BTW, some of you who know me well probably have a good idea whom this client is. I'd prefer that the name of this client stay out of the comments, if you don't mind.)
I should explain. Getting a patent is not a straight up-or-down decision. We draw up and submit a patent application, which includes a description of the invention and claims, which describe the protection that we think our client is (or at least might be) entitled to. A patent examiner then reviews the application and searches for evidence that our claimed invention is or isn't new.
The process is usually a formalized kind of negotiation, in which we try to reach agreement with the examiner regarding which claims are allowable. Sometimes it works. Other times—and these days it feels like most of the time—we wind up at an impasse: we think our client is entitled to something, but the examiner insists that all claims must be denied.
At this point, you can abandon the application, or you can take an administrative appeal to the Board of Patent Appeals and Interferences. The appeal involves briefing and possibly oral argument before a panel of three administrative law judges.
This application could be particularly important to a major client. We felt that it would be hard to win, mostly because it was the kind of application that the Patent Office has been largely hostile to. But it was important enough to the client that we decided to take a shot. I wrote the briefs in 2007, and I had oral argument (my first ever) in October 2008. Coming out of the argument, I felt that we weren't going to get everything—the panel had pounded me too hard on some points for that to be likely—but we were going to get something.
I was right. Out of the twenty rejected claims that we had appealed, the Board reversed the examiner as to eight, including most of the subject matter we had really wanted.
I'm kind of over the moon about this, not least because my relationship with this client is the closest thing to job security that I have.
(BTW, some of you who know me well probably have a good idea whom this client is. I'd prefer that the name of this client stay out of the comments, if you don't mind.)
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no subject
Date: 2009-01-30 07:40 pm (UTC)no subject
Date: 2009-01-30 08:41 pm (UTC)no subject
Date: 2009-01-30 11:51 pm (UTC)no subject
Date: 2009-01-31 03:22 am (UTC)no subject
Date: 2009-01-31 03:25 am (UTC)no subject
Date: 2009-04-18 07:47 am (UTC)I cringe at these fly by nighters offering patent service at cut rates prices just send the the idea...
How ya been?
Long time.
mikr
no subject
Date: 2009-04-18 02:51 pm (UTC)As for your other question, a decent patent application will probably cost at least $5k, and likely a good deal more. I could probably do a really simple one for about $10k, and an average one for $15k-20k, but I'm expensive.
Now, I think I'm worth it, but the fact remains.
no subject
Date: 2009-04-18 04:47 pm (UTC)My dad has many patents including the first GFI.
Hope doing well and glafd your getting recognixtion for it.
mike