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I Do Not Want a Patent I Do Not Deserve

I do not want an entrepreneur to bet the farm on a patent that has no value.

It is really tempting to think that you can get an enormously valuable patent.  Then you can dominate some big market and get paid handsomely.

Entrepreneurs are fond of saying that their patents are “broad,” and investors desperately want to believe it.

There is a temptation to try to ask for the moon and maybe you will get it.

On one side, inventors will crow about how they are going to be rich because they control some enormous market.  On the other side, bloggers and pundits will parade patents around as examples of “over-broad” patents.  They will endlessly cry about how “competition” is being stifled by these “broad” patents.  

I do not want a patent that I do not deserve.

As someone who collateralizes IP, I need that IP to be rock solid.  It must survive litigation.  It needs to withstand the harshest scrutiny and the most brutal stress tests.

I am making a big financial bet on a patent, and so are the inventors, company founders, angel investors, friends and family, and even your customers.  Everybody in the ecosystem (on the side of the inventor) is betting heavily on the value of the patent.

I do not want to invest in a company where it can be wiped out by a lousy patent.

If an entrepreneur is making big decisions for their business, would they make different decisions if the patents were bad, or if they did not exist at all? 

The patent examination process affects the quality of the patent

If I have a patent that was granted on the first office action, can I be sure the examiner took their time?  No.  (Worse yet is a first action allowance in September, the end of the fiscal year when examiners are trying for their production bonuses.)

I need the patent to be well examined.

One of the factors for calculating a patent’s value is the amount of back-and-forth between the attorney and examiner.  The more of this, the better, in the sense that it shows how much the inventor was willing to spend.  Another aspect of this back-and-forth is that the examiner has a chance to go on record about the prior art.

The downside of a lot of back-and-forth is that the patent attorney may say something devastating.  I do not mean that the attorney commits malpractice or makes a mistake. 

In general, the biggest problems arise when an attorney makes one argument or states something on the record that turns out to hurt them later.  For example, the attorney might characterize one aspect of the invention in one way to get around one rejection, but later might want to characterize it the opposite way to get around a different rejection.

Attorney’s arguments can paint the patent in a corner, which might come back to haunt you later.

Notwithstanding the problems, having some back and forth with the examiner gives the examiner the time to do a good examination.  It also helps the applicant to hone in on the key point of novelty. 

For this process to work well, the attorney needs to know what is the critical point that makes the product sell.  The only aspect of the patent that has value is the reason why people buy the product.  By keeping that point of novelty at the forefront of the patent prosecution, the attorney will extract the most value out of the patent application.