The URGENT Email from your Patent Attorney
You are not qualified to answer it. You cannot afford to ignore it. And your attorney cannot make the decision for you.
You are in the middle of a product launch, a board meeting, or a sales cycle. Your phone buzzes. Subject line:
URGENT — Response Required — Deadline March 15
It is from your patent attorney. The email is long. It contains phrases like “final office action,” “terminal disclaimer,” “continuation-in-part,” and “claims 1–7 rejected under 35 U.S.C. § 103.”
At the bottom, a question:
“Please advise how you would like to proceed.”
You stare at it. And you feel it — that low dread in your stomach. Not because the email is confusing, although it is. Not because the deadline is tight, although it is. But because you know you are about to make a decision you do not have a framework for making.
You do not have a rubric. You do not have a strategy document that tells you what the right answer is. You do not have a set of principles that makes this decision fall cleanly into place. You have three options described in language you half-understand, a deadline you cannot move, and a gut feeling that whatever you choose, you will not know whether it was right until it is too late to change it.
That dread is not ignorance. It is the correct emotional response to making a consequential decision without a decision-making framework.
You Want to Decide With Confidence
Every other domain of your business has a framework.
Pricing decisions have a model. Hiring decisions have criteria. Product decisions have a roadmap. When a hard decision lands on your desk in those areas, you may not love the trade-offs, but you know how to evaluate them. You have data. You have principles. You make the call, move on, and sleep at night.
Patent prosecution has none of that.
When the URGENT email arrives, you do not have a claim strategy that tells you whether narrowing claim 3 is acceptable or catastrophic. You do not have a competitive analysis that tells you whether this patent still matters. You do not have a portfolio budget that tells you whether spending $20,000 on a continuation is a good investment or a sunk cost spiral.
You have an attorney presenting options and a deadline.
So you do what any intelligent person does without a framework: you guess. Or you default to the cheapest option. Or you approve whatever the attorney seems to be hinting at. Or you delay until the follow-up email arrives with “SECOND NOTICE” in the subject line, and then you guess faster.
None of those are decisions. They are reactions. And every CEO who has managed a patent portfolio knows the difference — because confident decisions feel clean, and reactive decisions leave a residue. That lingering feeling: did I just make an expensive mistake?
You want to decide with confidence. Quickly. Decisively. And move on. The current system makes that impossible.
Why the Attorney Is Emailing You
Your patent attorney is not emailing you because they want your strategic input. They are emailing you because they need to transfer the decision — and the liability — off their desk and onto yours.
This is not cynicism. It is the structural reality of outside counsel.
The attorney works for you. You are the client. Every material decision in patent prosecution — how to respond to an examiner’s rejection, whether to continue prosecuting, whether to file a continuation, whether to pay a maintenance fee — belongs to the client. The attorney provides options. The client decides.
That is the ethical framework. And it produces a very specific behavior pattern:
The attorney receives an office action. They analyze it. They identify two or three possible responses — amend the claims, argue the rejection, file a continuation, abandon the application. Each option has trade-offs. The attorney writes them up, attaches the deadline, and sends the email.
Then they wait. For you.
Not because they do not have an opinion. They almost certainly do. But offering that opinion — especially if it involves recommending abandonment or a significant strategic shift — creates liability. If the attorney recommends abandoning an application and it later turns out to have been valuable, the attorney is exposed. If the attorney recommends an expensive continuation strategy and it produces nothing, the attorney is exposed.
So the attorney presents options. Neutrally. With a deadline. And the decision lands on the desk of a CEO who does not have a framework for evaluating the trade-offs — who feels the dread, makes the call, and hopes it was right.
The Decisions You Are Being Asked to Make
These are not administrative questions. They are strategic decisions with long-term consequences — and they arrive disguised as routine correspondence.
Office action responses. The examiner rejected your claims. Your attorney offers three options: amend the claims to narrow them, argue that the examiner’s interpretation is wrong, or request a continuation to try different claim language. Each option affects the scope, cost, and timeline of the patent. Narrowing the claims may get the patent allowed but destroy its commercial value. Arguing the rejection may work or may burn a response cycle. Filing a continuation adds $15,000–$25,000 to the total cost. Which do you choose?1
If you had a claim strategy — a document that defined what the claims are supposed to accomplish and which competitors they should target — the answer would be obvious. Narrow if the amendment preserves the competitive target. Argue if the examiner’s reading is wrong and the stakes justify the cycle. Continue if the original claims cannot reach the target but a reformulation can. Without that strategy, you are choosing blind.
Continuation strategy. Your patent is about to issue. Do you file a continuation to preserve the right to pursue additional claims? What claims? Against which competitors? With what budget? A continuation is a strategic investment — it keeps the prosecution alive so you can adapt the claims as the market evolves. But without a plan, it is just another open file generating attorney invoices.
Maintenance fees. Your patent has been issued for four years. A maintenance fee is due. The fee itself is modest. But the question behind it is not: is this patent still worth maintaining? Does it still align with your business strategy? Has the competitive landscape changed? Is the technology still relevant? Your attorney is not going to answer those questions. They are going to send you an invoice and a deadline.2
Terminal disclaimers. The examiner says your new application is too similar to your existing patent. You can file a terminal disclaimer — giving up some term on the new patent — to overcome the rejection. Should you? That depends on the relative value of the two patents, the remaining term, and the commercial purpose of each. Your attorney will explain the mechanism. They will not tell you which patent matters more to your business.
But here is what your attorney will definitely not tell you: a terminal disclaimer is usually evidence that the claims were not well-differentiated in the first place. If two applications in the same family are so similar that the examiner rejects one over the other, it often means the attorney wrote overlapping claims instead of focused claims on distinct inventions. They may have mailed it in — drafting the continuation as a minor variation of the parent instead of targeting a different competitive angle. Or they may have taken the easy allowance, writing claims they knew would get through quickly to satisfy your demand for a patent. Either way, the terminal disclaimer is not just a procedural decision. It is a signal that the upstream claim strategy was absent or ignored.
Abandonment. Sometimes the right answer is to stop. The claims have been narrowed to the point of uselessness. The technology has moved on. The competitive landscape has shifted. Continued prosecution is throwing money at a dead end. But your attorney will almost never recommend abandonment — because every abandoned application is lost revenue and potential liability. So they send you another email with another set of options and another deadline. And you keep paying.
Every one of these decisions would be straightforward with a framework. Without one, every one of them produces the same dread.
The Provisional Deadline: The Ultimate Manufactured Emergency
And then there is the big one.
You filed a provisional patent application twelve months ago. Maybe your attorney recommended it. Maybe you filed it yourself. Either way, the provisional expires in thirty days, and your attorney just sent the most urgent URGENT email of them all:
“The provisional application expires on [date]. If we do not file a non-provisional application by that date, all priority rights will be permanently lost.”
This is technically true. And it is the most artificially manufactured emergency in all of patent law.
Here is what actually happened. Twelve months ago, someone decided to file a provisional — a placeholder application that costs a few hundred dollars and buys one year of “patent pending” status. Provisionals are easy to file. They require no claims. They require no formal structure. They are the lowest-commitment entry point into the patent system.
And that is exactly the problem. Because the provisional was cheap and easy, it was filed without the strategic analysis that should precede any patent investment. Nobody asked whether the invention justified a patent. Nobody evaluated whether the claims would be enforceable. Nobody assessed the competitive landscape. The provisional was filed because it felt safe, because the attorney recommended it, and because saying “we have a patent pending” sounds good in a pitch deck.
Now the year is up. And the real investment decision — $15,000–$30,000 for a non-provisional application, plus $30,000–$50,000 in lifecycle costs over the next twenty years — arrives as an emergency. File now or lose everything.
But “everything” is a priority date on an invention that was never strategically evaluated. The dread you feel is not about the deadline. It is about the fact that you still do not know whether this patent is worth filing — and now you have thirty days to make a $50,000+ decision with no framework, no competitive analysis, and no claim strategy.
So you file. Because the alternative — letting the provisional lapse — feels like losing something. The sunk cost of the provisional. The “patent pending” status. The priority date. It feels irresponsible to walk away.
And that feeling is exactly what produces bad patents. Not malice. Not incompetence. The absence of a decision-making framework that would have told you — twelve months ago or now — whether this invention justifies the investment.3
A governed process would have evaluated the invention before the provisional was filed. Or, at minimum, would have used the twelve-month window to build the business case — competitive analysis, claim strategy, detectability assessment — so that when the deadline arrived, the decision was already made. Confidently. Decisively. Months ago.
Instead, the CEO gets an URGENT email and thirty days of dread.
The Fee Game
There is a particularly corrosive variant of the URGENT email that has nothing to do with strategy and everything to do with cash flow.
Some attorneys will not pay filing fees, maintenance fees, or government charges until the client pays them first. The deadline is real — miss a filing deadline and the application may go abandoned. Miss a maintenance fee and the patent lapses. But instead of advancing the fee and billing the client, the attorney sends an urgent invoice demanding payment before they will act.
Now you are not making a strategic decision. You are in a collections cycle disguised as a legal deadline. The urgency is real, but the source of the urgency is the attorney’s billing practice, not the substance of the patent.
The CEO drops everything, approves the invoice, and the fee gets paid — usually at the last minute. This happens every few months. Each time it feels like a crisis. Each time it is entirely predictable. And each time, nobody questions whether the system itself is the problem.
What the CEO Actually Experiences
Strip away the legal terminology and here is what the CEO experiences:
Unpredictable interruptions. Patent prosecution emails arrive on their own schedule — driven by examiner timelines, fee deadlines, and government correspondence. The CEO cannot plan for them. They cannot batch them. They cannot delegate them, because the attorney is asking for the client’s decision.
Decisions without context. Each email arrives as an isolated event. Should you amend claim 3? That depends on the overall claim strategy, the competitive landscape, the continuation plan, and the commercial purpose of the patent. None of that context is in the email. The attorney provides the legal options. The strategic context — if it ever existed — is in someone’s head or nowhere at all.
The dread. The CEO knows the email is important. They also know they do not have a framework for evaluating it. So the email sits in the inbox and the dread sits in the stomach. The deadline approaches. The attorney sends a follow-up. The CEO makes a quick decision based on incomplete understanding, and the dread does not go away — it just gets quieter until the next email arrives.
This is what decision-making feels like without a framework. Not confident. Not decisive. Not clean. Every decision leaves a residue of uncertainty that accumulates over months and years of prosecution. The CEO does not know whether their portfolio is an asset or a liability — because they never had the tools to evaluate it.
Accumulating cost with no visible return. Each decision generates a bill. Each office action response costs $3,000–$8,000. Each continuation costs $15,000–$25,000. Each maintenance fee is another line item. The costs accumulate. The CEO has no framework for evaluating whether any of it is producing value. They only know that stopping feels risky and continuing feels expensive.
This is not a failure of the CEO. It is a failure of the system. The CEO is being asked to perform a function that requires specialized knowledge they do not have, using information that arrives without strategic context, on a timeline they do not control.
What the Attorney Actually Wants
Here is the part that surprises most CEOs: your attorney hates this model too.
Patent attorneys do not enjoy sending URGENT emails and waiting for responses from clients who do not understand prosecution. They do not enjoy explaining the difference between a final office action and a non-final office action for the fourth time. They do not enjoy drafting three response options when they know which one is correct but cannot say so without creating liability.
What patent attorneys want is what any skilled professional wants: clear instructions and the authority to execute.
A prosecuting attorney with a playbook — one that defines the claim strategy, the competitive targets, the continuation plan, and the budget parameters — can execute office action responses without escalating every decision to the CEO. They know what the claims are supposed to accomplish. They know which competitors the claims should read on. They know whether a continuation is part of the strategy or an unnecessary expense.
They do not need to ask permission. They need a framework.
And when they have that framework, the work is better. Responses are faster. Claim amendments preserve commercial value instead of narrowing toward whatever the examiner will allow. Continuations are filed with purpose, not habit. Maintenance fee decisions are made against business criteria, not inertia.
The attorney becomes what they should be: a skilled executor with clear direction.4 Not a decision-laundering service that converts strategic questions into client emails.
The Missing Layer
The CEO cannot provide the playbook. They do not have the prosecution expertise to define claim strategy, anticipate examiner rejections, or evaluate continuation trade-offs.
The attorney cannot create the playbook. They do not have the business context to define competitive targets, evaluate commercial relevance, or make portfolio-level budget decisions. And their structural incentives point toward more prosecution, not less.
The gap between them is where the URGENT emails come from. And the dread.
A Chief IP Officer fills that gap. The CIPO translates the board’s business strategy into prosecution instructions the attorney can execute — a playbook that defines:
- Claim strategy for each patent family — what the claims should target, how broad they should be, what design-arounds to anticipate
- Response protocols for office actions — standard approaches for common rejections, pre-authorized within defined parameters, so the attorney can act without waiting for CEO approval
- Continuation criteria — when to file, what to pursue, and when to stop — tied to competitive positioning, not attorney habit
- Provisional conversion decisions — evaluated against business criteria months before the deadline, so the one-year mark is a checkpoint, not an emergency
- Maintenance fee decisions — evaluated against business relevance, not paid on autopilot
- Budget guardrails — total prosecution spend per family, escalation thresholds, and abandonment criteria
The attorney executes within the playbook. The CEO stops getting URGENT emails. The patents are prosecuted with strategic intent instead of reactive decision-making.
The CIPO handles the translation that nobody else can handle — because they understand both sides of the conversation. They speak prosecution with the attorney and business with the board. They give the CEO what every executive wants: a decision-making framework that turns hard decisions into confident ones.
When the framework exists, the dread disappears. Not because the decisions are easier — but because the criteria are clear. File or pass. Continue or abandon. Maintain or prune. The answer falls out of the strategy. The CEO reviews a recommendation with a written rationale, approves it in five minutes, and moves on. No guilt. No lingering uncertainty. No URGENT emails.
The Test
Look at your inbox. Count the patent-related emails from the last twelve months that required your personal decision. For each one, ask two questions:
Did I have a framework that made the decision clear?
Did I make the decision with confidence — or with dread?
If the honest answer is dread — if you were guessing, deferring, or approving the cheapest option because you did not know what else to do — then the problem is not the decisions. The problem is that no one has built the framework that makes those decisions simple.
Every URGENT email that lands on your desk is evidence of a missing layer. The attorney needs direction they are not getting. You are providing decisions you are not equipped to make. And your patents are being prosecuted by default — driven by deadlines and dread instead of strategy and confidence.
That is the gap a CIPO fills. Not by replacing the attorney. Not by replacing the CEO. By building the framework that connects them — so the attorney can execute, the CEO can lead, and every patent decision is made with the confidence it deserves.5
1 Office action response strategy — including how claim amendments during prosecution can permanently narrow commercial value — is covered in Chapter 6 of Investing in Patents.
2 Maintenance fee economics and portfolio pruning decisions are covered in Chapter 2 of Investing in Patents, including frameworks for evaluating whether a patent justifies continued investment.
3 The decision to file — including when a provisional application is strategically justified and when it is premature — is covered in Chapter 3 of Investing in Patents. The key question is whether the business case exists before the commitment is made, not whether the deadline can be met after the fact.
4 The structural dynamics between outside counsel and executive leadership — and why attorneys default to presenting options instead of making recommendations — are explored in Chapter 4 of Investing in Patents. See also Your Patent Attorney Is NOT Giving Business Advice.
5 The prosecution playbook concept — pre-defined claim strategy, continuation criteria, and response protocols that eliminate reactive decision-making — is introduced in The Invention Disclosure Meeting Is Where Patent Value Is Decided.