I understand your fear of the United States Patent and Trademark Office because I had it too– until I filed my first trademark with the help of an examiner and uncovered an important realization. The USPTO is not my enemy. And neither are they yours.
In an attempt to lessen that fear, I recently interviewed John Calvert, a Supervisory Patent Examiner. John began working for the USPTO in 1990 and in 1995, was promoted to Primary Examiner. He currently oversees twenty-one other patent examiners and works extensively to educate and assist independent inventors.
I began by describing a common, but irrational fear inventors have towards the USPTO to John. When I first began working as an independent inventor, I was sure that the office was going to deny me intellectual property. Even though I was working with an attorney at the time, I had the overwhelming sense that the USPTO was the “bad guy” – I was convinced.
But John explained that my feelings were ungrounded.
“We really try to help inventors. We do reject a lot of applications when they first come in,” he admitted, “but a specific reason why exists. Attorneys write claims that are broader than they actually should be. We have to try to bring down the scope of the invention so that it fits within an appropriate framework. Narrowing claims protects not only the inventor, but the public as well.”
An established push and pull, a give and take exists between the USPTO and attorneys seeking to establish intellectual property. Inventors shouldn’t be discouraged if their claims are denied initially.
“It’ all part of the process – and there IS a process. Attorneys intentionally write claims that are broader then they should be. They are trying to get the examiner to specifically point out where the line of patent-ability exists and all relevant prior art. Knowing and understanding this line allows an attorney to better define an invention.”
John also exposed a little known fact: USPTO examiners are more than willing to talk and aid you through what they know is a difficult process.
“Most examiners are willing to perform interviews with inventors, to help them through the process. We sometimes struggle truly understanding what an invention is. There is no better person to talk to than the inventor, who can help shed light on the next avenue to pursue. Pick up the phone and call an examiner and ask questions. As a former supervisor, I insisted that my examiners take the time to help individual inventors.”
However, understand that Patent Examiners cannot replace legal guidance or act as real mentors.
“Limit your calls. The examiners are at work, which some inventors forget. Take specific questions to your attorney.”
To be continued…
Click Here To Listen To The Interview.