Heyman IP LLC

The patent system is a pretty unique area of law. When I was Primary Patent Examiner for the United States Patent and Trademark Office, I likened my role to that of a street cop. In a sense, we were both “officers.” Except, instead of protecting the peace, I protected the “public domain.” The public domain consists of all knowledge that is freely and publicly available to anyone. A person wanting to obtain a patent had to limit their patent to only new things – it could not encroach on what was already known in the public domain. So, my job was to examine a patent application, figure out if the invention being claimed was already known, and if so, reject it as being unpatentable. If I failed to do my job properly, the government could inadvertently give a private party exclusive rights to something that should freely belong to everyone. If I failed in a different way, I could deprive a deserving member of the public of their rights in their own invention. This ex parte process (i.e., without an opposing party) need not be adversarial as in many other areas of law.

However, different members of the public will react differently to a street cop. Some will treat you as an authority figure and will accept everything you say as the last word on a subject, and some will treat you as an adversary, call you names, and try to bully you to see how much they can get away with. As an examiner, I worked with all types of patent attorneys and pro se inventors, and they likewise treated me differently depending on their approach.

When I went into private practice, I became one of those “members of the public.” Being a former patent examiner myself, I knew that examiners are human beings with limited amount of time to devote to inspecting each patent application and researching the whole of the prior art, and therefore, cannot be trusted to be correct all the time. What I learned also was that, just like with some cops who can get a little egotistical, and even leverage their authority to the point of overreach, so too can some examiners. In the face of this, it can be tough to keep your cool at times. In such cases, you don’t want to enable this behavior, but you also don’t want to antagonize the examiner. Constraining your response to just the facts and the law is important. But it can also be important to have a client willing to go to appeal, or at least credibly threaten appeal. Sometimes it seems that filing an appeal brief is the only way to get such an examiner to amicably back down.

At Barta Jones PLLC, we help all types of clients to get the best possible outcome given their business imperatives. If you’d like representation with the breadth of experience, client-focused outcomes, and principled strategy that we offer, contact me to see if we can be a good fit for you.