The process of getting a patent can feel shrouded in mystery. I feel that way, and I've been awarded nearly 20 patents. When I started to file patents, I thought, "The patent office is against me!" They always rejected my claims. I think differently now. The USPTO really does want to issue inventors patents. What it's trying to do is issue good patents. And that takes time. It's also expensive. But it's not what you think it is.
For all of these reasons, I was delighted to meet Jordan Golomb, a patent agent at Fredrikson & Byron, at an inventors' meeting outside of Minneapolis. Golomb is a former patent examiner for the United States Patent and Trademark Office. She's also an inventor. She agreed to be interviewed to give us a glimpse into how the examination process really works.
At the USPTO, Golomb told me she was initially assigned to biomedical diagnostics, but later on, due to her expertise in automobile airbags, was moved to land and motor vehicles. That's unusual. The USPTO tries to match examiners with their area of expertise, she explained, but it comes down to what units have openings. "A patent examiner typically spends his or her entire career looking at the same types of patents," she said. "If you're a quick learner, you'll adapt."
Moving away from D.C. spurred her departure from the USPTO after a year and a half. She transitioned into becoming a patent agent after. Today, she represents applicants and argues against the very rejections she used to issue. Like patent attorneys, patent agents help inventors acquire patents, but they differ from attorneys in that they don't represent clients in patent lawsuits. I was thrilled to get her insight into the process as a whole. She's experienced it from so many sides, after all.
Why did you become a patent examiner?
"The reason I'm in intellectual property today is because I've been interested in inventing all my life. When I became a patent examiner, I was surprised to find out that's unique. I studied engineering in college and then worked for Chrysler as a design engineer. I thought the best way to learn about inventing was from the inside out. Being a patent examiner is a really tough job. I know they get a lot of crap. Now that I've worked on the outside, some of them, frankly, deserve it."
What was the process of becoming an examiner like?
"I went to the patent training academy, essentially college for patent examiners, for about six months. There were lectures and classroom assignments. You start examining applications very quickly, but you're watched very closely. I did have a deep expertise [in automotive airbags] but generally examiners learn the technology on the job. At the same time, you're also learning the ins and outs of patent law."
What's required of patent examiners?
"In addition to having to know a lot about patent law, you have to know how to search. A lot of my training time was spent on searching for prior art, on learning how to look all over the world. There are a lot of places to look. You also have to be really quick at understanding new technologies. You aren't given much time. And to round all of that out, you should be at least a decent writer."
What's the process of examining a patent like?
"First, let me say that the patent office is not run like the rest of the government in that it isn't funded by taxpayer dollars. It operates more like a company. Examiners have a limited amount of time to review patents. There are a couple factors that determine how long. How difficult is the technology? Also, the longer you've worked at the office the less time you get per application. I might spend 10 hours trying to understand an application, searching for prior art, and writing the first office action. It might take me another 10 hours to respond the second time around. It pays to stay on friendly terms, because if you file a continuation or divisional application, it'll probably be the same examiner.
There are three levels of examiners: assistant, primary, and supervisory. Assistant examiners cannot sign off on their own work, because they're less experienced. But primary examiners have a bit more freedom. Their work isn't being as closely watched. I probably picked up a new application about every day and a half. A primary examiner might look at one in a day."
Is there any way for an inventor to influence who examines his or her patent?
"No, you have absolutely no influence over who reviews an application. I don't know anyone who has been successful at getting a new examiner assigned to a case."
What advice do you have for applicants?
"When examiners have only maybe an hour to understand what your invention is, clarity is appreciated. There's definitely a balance to be struck. Drawings are helpful, especially in the United States, where you can sometimes rely on drawings to express claim language. From the outside, it's tempting to include as much as you can. Make sure you convey the idea to them reasonably quickly, though."
Are all claims rejected the first time around? If so, why?
"Yes, I almost always rejected claims the first time. There are a couple of reasons why. I was a younger examiner. We were almost never permitted to allow anything the first time around. The way that it was explained to me was, it's up to the patent office to establish the best case for why it's not patentable. The applicant then needs to put forth his or her best case as to why the office is wrong. It's a dialogue. Examiners assess the contrary evidence put forth in the applicant's response to the office action to make a decision.
As a patent agent, let me assure you, I get rejections and think, "This is crazy!" I feel like the examiner is bluffing and didn't have anything better. Sometimes this is true, but sometimes the examiner is just crazy.
The law is always a little in flux, especially recently. The pendulum swings back and forth as new laws are established and new patent court cases are decided. That is why it is important to have a knowledgeable patent attorney or agent."
What can you do about it?
"I say stick to the facts. This is not a place for emotion. When your client is upset, it's important to stay as emotionally neutral as possible. Sometimes I have to make hard phone calls. You have to stay in control. Also, it helps to be realistic about what patent law permits and doesn't. Educate yourself about why things get rejected. Even though it doesn't seem obvious to you, not everything is patentable! Even if it's supposedly new, if it's a modification, it might not make the cut. Also, not all good ideas are patentable."
Is it more difficult to receive a patent today or in the past, do you think?
"I wasn't an examiner a long time ago; my experience is recent. But I've heard older examiners say yes, it's pretty difficult to get a patent these days. I mean, in the past, patents were organized in a room full of categorized shoeboxes. Being able to use the Internet to search for prior art means the box is really wide open. That's just my opinion."
What are common mistakes inventors make when providing information to their patent attorney?
"I made the same mistake when I was an inventor, which was that I relied on my attorney to educate me. That's a very expensive way to learn. Patent law is not easy to learn. By no means will you become an expert without working in field. But do your best to educate yourself before asking your attorney questions. Books are a great way to learn. You can learn a lot by searching on the Internet, though you have to take what you read with a grain of salt. YouTube is good too. Discern between who's out there to make a buck and who's sharing. Join an inventors' group.
Also, be really careful you don't withhold important details. When I was an examiner, I received responses from inventors stating, "But mine does this!" and then revealed something not included in their application. You don't want to overwhelm your attorney or agent with extraneous information though. That will cost you. You can offer comprehensive, quality details using only two pages."
What's the weirdest invention you've ever seen?
"Most of the stuff I worked on is pretty useful, but I do remember granting a patent on a dog seatbelt for airplanes. I've written an unusual application for an invention related to brushing and hair spraying a cow. You can buy that latter product -- it's patent-pending."
"Patent law is really challenging. If you want to keep costs low, you will have to get serious about inventing, and not just entrust your patent attorney. If at all possible, get a referral from someone who had a good experience with his or her representative. Otherwise I would ask other inventors in your area for referrals."
Golomb has been a patent agent for about five years now. Notably, she is also a patent owner. Two of her other applications are patent-pending. She is actively looking for a licensee to help her bring product ideas to market.