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Slippery Slope or NOT?: IP Complexity, Competence, and Execution

common misconceptions Sep 17, 2020

The rules for getting utility patents are complex and the execution of patent preparation,  filing, prosecution, and use rights is a daunting task-akin to walking a slippery slope. Why? When you get into this game, can you act as a "player-coach" and both lead and show by example what and how to do it? It all begins with  “changing the IP conversation “ by “knowing how the legal systems rules" (Manual for Patent Application Procedures-MPEP) work.

At the outset it is a slippery slope with this part of the execution plan...i.e. you have something you want to protect and there is an execution sequence to achieve it, within the legal framework, along with patent lawyers who run the rule book in real time. 

We believe strongly that every IP-Champion, be it the CEO or one of the senior executives in product development, can and should be  a “referee/player coach” in the game . . .  knowing not only the rules but also the  "stories" about how they play out, so s/he can both lead and show.

Most of the time you really do get what you pay for. And when you hear about "bad" lawyers or a legal system that's a "mess", you can be sure that one of two things is most probably true: (1) you chose poorly grasshopper-i.e. you picked the wrong lawyer or (2) you didn't know the execution framework and the fundamentals of the legal rules governing your claims.

So, if it's a bad/mess it's nearly-actually mostly- on you.  As it relates to getting airtight utility patents, our purpose here is to help you  learn enough about the rules governing your IP hunt "to be dangerous" , so you can  change the conversation about how you secure and pay for a great utility patent. This is a slippery slope and our purpose is to help you navigate across the range of choices you have as you navigate down the IP corridor of uncertainty, "walking the talk" to your desired destination.

Sometimes it's easy to complain ... to take the bad apple angle and thrash away at the perpetrators of your missed opportunities... and maybe you have a good use case where you did everything right but were still treated unfairly. Even here it's helpful to have an example of abuse to make “bad/mess” relevant.

In the case for utility patents, is the bad/mess the result of poor communication from the innovator or because of an incompetent patent attorney. Is an incompetent attorney a "bad" lawyer? In fairness to the process, if your attorney tried to twist the MPEP rules say for example by trying to expand scope of your claims after filing, without antecedent reference, then maybe he is bad because he actually knew what he was trying to do. If he didn't know you can't do this then actually, he's not bad, s/he's incompetent. In either case, by doing something like that, you will end up with  a Fatal Office Action Rejection.  Bad on you because you can learn enough about the rules to prevent this from happening (i.e. by being a referee, coach, and as needed a player).

Here's another simpler example of how things can be both bad and a mess. When I was a first time home owner, I didn't know the ins and outs of operating my home. I was CEO of my home, but a newbie to the whole world of it. So, when I was approached by my oil company guy joe HVAC...this guy had a horizontally integrated company, he installed the burners, sold the fuel for them, and serviced a new house buyer that sounded good...until later I found out he pulled parts of my original heating configuration, put in the most highly marked up boiler, charged me more per gallon of oil, and made sure he raced the system in one remote room along with "tuning" the burner below peak efficiency. He was bad, and made things an unaffordable mess for me... what he did was unethical, but he did nothing illegal...

Even though I handled it in a strong way...and eventually he failed, I should have known better. My long term solution was simply using 3 separate vendors. You have situations like this at the company operations level, where there are potential or inherent conflicts of interest. Knowing them in advance may help you  to point them out and avoid them so you don't have to bash away. I'm of this frame of mind with 

In IP, our "take" is making sure you realize that your IP costs can triple if you don't see the big picture from the get-go.  Why the can the filing cost of a patent be doubled by a messy prosecution. How can your house burn down, i.e. how can you lose your  patent rights in downstream litigation?

When you come to terms with the idea that your patent attorney/law firm might be the ones that are (1) paid to prepare your patent and file it (for better or worse),  then (2) paid for all the Office Actions (prosecution costs), and later if necessary for all the wrong reasons, (3) paid for defending your patent claims downstream against infringers or worse yet, (4) paid while your patent is invalidated by Interpartes Review or other have to see it for what it is. It is a slippery slope indeed. It's your call if you want to get a great utility patent that can help you move into your "castle in the sky", you need to know how to economically keep it safe and warm in the winter.

Use IP-BC to ensure that you get your valued monopoly rights, i.e. airtight claims to your innovation that cover your true preferred-embodiment... in a patent application that was prepared avoiding FOARs before filing... and prosecuted efficiently as well as effectively yielding a clean file wrapper... and publishes with true SCA (Sustainable Competitive Advantage). Use IP-BC to do this all at  <70% of the cost you would otherwise spend if you didn't know the IP rules and how to make them work for you, first and foremost. 


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