Forgotten inventions, or a patent update

Way back in June (here) I wrote about my first patent and said that I would probably post an update on my current patent progress in a few weeks. Well, I didn’t lie, it’s been a few weeks… a lot of a few weeks! So why the post now? Well, because it’s official as of October 18th the USPTO issued my second patent. One that I’m actually in a semi-good spot to do something with myself, since as the post I wrote previously detailed the seemingly toxic previous patent. It’s been a long journey, so let’s talk about the patent and why I’m glad I didn’t just give up on it, like I was seriously debating about doing.

Patents are in a foreign language to me and to most people frankly. You can patent just about anything (from ideas to designs), but putting it on paper in legal speak is a challenge. Luckily for everyone who can’t afford a team of lawyers to do the writing for them, myself included, there are pro bono options out there available to anyone, specifically for my US readers, I’m sure other countries have mechanisms for this, but you’re on your own there, sorry! And if you’re not feeling like reading the first post, the one about my first patent, you can find lawyers who will help you file your patent pro bono here. It’s a great program and one I highly recommend if you want to patent something or even if you’re thinking about it.

My first patent was a whirlwind experience and I feel like it went super quickly, but also the experience was completely different from my second patent and that’s important to point out for two reasons, (1) the level of work the pro bono service will do depends on who takes your case and (2) the length of time from submission to patent approval (ideally) can vary wildly. That being said, still totally worth doing, even if you think it’s a dumb idea. But let’s just talk about the differences for a second.

For instance, my first patent I had to pay the filing fee (I believe at the time it was ~$400 USD) and the lawyers terminated the pro bono arrangement after filing, when the patent office came back rejecting certain claim(s) I had to go through the whole pro bono process a second time, but there was a small fee to use the service and the fee covered the second time. Additionally, the same group picked up the patent for the response, so it was more of an inconvenience than anything. That said, they were awesome, we filed quickly, the USPTO responded just as quick, and when the group picked up the patent the second time, they explained the two routes we could take to handle the response, take a little off the patent, or take a lot. The benefit of removing just a little bit of the claim(s) meant that the patent was broader if it was approved (which it was), the second option would have improved the chances of it being accepted, but I went the first option and it paid off. Metaphorically speaking since the patent might as well have been printed on uranium because no one wanted to touch it (still salty about that, fuck you very much).

The second patent, the one that was just issued couldn’t have been more different. The group that picked up the patent stayed with me the entire time, helped with the responses (as in multiple, because there was a few), and they paid all the fees, and I mean all of them, from filing to the response fees (after needing to respond more than twice or so you have to pay). I paid absolutely nothing outside of the small fee to use the program to find the patent lawyer which went to support the program. They worked with me for years and we had to submit numerous responses, I think it ended up being a dozen or more. Let me just say I was once accidentally sent a bill for part of the service (a VERY SMALL PART of the service to cover response to the USPTO for the 179348753875x time) and nearly had a heart attack before I was told it was in error. So when I say use the service if you’re not a millionaire, I mean it.

The length of time it took from first file to issue was months for my first patent and years (with an s) for my second. In fact, I’m on year five of my PhD and the patent was filed BEFORE I started my PhD. I almost had a whole ass PhD before this patent was issued to me. What’s more impressive is that the lawyers handling it never even hinted they didn’t want to continue helping me. I’m still in awe because they get nothing out of it (as far as I know), it’s not like they get their names on the patent or anything, it’s 110% mine, they are just doing it to help. Maybe there’s a tax write-off, but if there is it surely didn’t cover everything I got out of the deal. Digging through my email correspondence (since I save it ALL), we started working together June 29, 2016 or over seven years ago. Most relationships don’t last that long! I actually didn’t realize it had been quite that long, so wow, what a journey.

About five years into it or so (haha, that’s still so wild to say), I thought about giving up briefly. The USPTO kept rejecting the patent, or rather kept saying our patent “stepped on” other patents. If you imagine a map of the world, all the patents that are similar to yours would be chunks of land. Your job is to carve out the biggest chunk of unclaimed land as possible without stepping on someone else’s turf. The catch is, you don’t know if you’ve stepped on someone else’s claim and even if you think you hadn’t someone else (the examiner at the USPTO) may tell you differently. The difference between the first patent and the second was the field, the second patent is technically medical (ish, I guess…?) and so the field is very mature, full of other devices, and I’m still surprised it got issued, but here we are. I am glad I didn’t give up, it didn’t cost me anything to keep pursuing it, it was just getting depressing to get a letter every 3-6 months letting me know that they found something similar to my patent.

Persistence pays off I guess, assuming the patent gets picked up. If not, like I said, I’m practically in a position to just use the IP myself, so that may be the route to go in this case. Although licensing it out to another company would be my first option because of time time and money investment required for stuff like this. While I can technically freely talk about the patent now, I think I’ll make a seperate post on it specifically. Or maybe I won’t, who knows these days it’s been crazy. The patent hasn’t been published yet, but it should be soon, and when it does I’ll get another notification and I’ll hopefully post about it then.

In any case, it feels weird being on this side of things and not getting to hear from the patent lawyers every few months, while I deal with the nagging feeling about whether I made the right choice or not. Overall, it was worth it in my opinion, it just felt trying at times. So if it isn’t clear yet, if you’re thinking about applying, I say do it, you don’t know what can happen if you do.