Is it worth getting a patent?

Question: My business method patent application is taking forever to get through the patent office.  We have had repeated rejections and don’t seem to be making any progress.  I’m beginning to worry that my attorney/agent really doesn’t know what he/she is doing.  Any suggestions? 

Answer: This is a tough one.  Right now, business method patents, including those in the insurance field, are the most difficult patents to get through theUS patent office.  Only 5 – 10% of the applications are being allowed.  The ones that do manage to get through have taken an average of five years to get there.  It’s no wonder that there is a growing sense of frustration with how long, difficult and costly the process is. 

Here are a number of positive steps that inventors, their patent attorneys/agents, and the examiners in the patent office are taking to help improve the efficiency of the process.

Inventors are getting second opinions from other patent attorneys and agents.  A second opinion can provide a much-needed independent perspective on how a case is going and what additional steps can be taken to make it go better.

Second opinions, however, cost money.  An inventor needs to weigh the more immediate cost of the second opinion versus the value that second opinion can bring in helping their current patent attorney/agent overcome an examiner’s rejections.

Some inventors may be concerned that their attorney/agent will be offended if they get a second opinion.  They shouldn’t be.  Most attorneys/agents welcome it when a client suggests getting additional assistance in a particularly difficult case.  It’s always good to have a second pair of eyes. 

Patent attorneys and agents are having more in-person interviews with examiners right after an initial rejection of the claims.   In-person interviews are a very effective way for an attorney/agent to clear up fundamental misunderstandings an examiner might have about what exactly a given business method invention is all about.  They are also a very effective way for an examiner to provide guidance to an attorney/agent on how to present the claims so that said claims will be in a better condition for allowance.   Theoretically these misunderstandings can be cleared up over the phone, but experience is showing that in-person interviews work better.

As with a second opinion, however, in-person interviews cost money. Here again, the inventor must use his/her judgment as to the tradeoff  between the cost of sending their attorney/agent to the patent office versus the value of reaching agreement with an examiner more quickly.

Examiners are getting more training in business fundamentals.   The patent office is providing more business training to examiners.  They also encourage outside corporations, industry groups, and even individual industry experts to come in and provide a training session to examiners on their particular area of expertise.

Your editors have provided a “basics of insurance” seminar to the examiners.  All parties found it very rewarding and we would like to think that it has helped improve the examination of insurance patents.  Swiss Re and Fireman’s Fund have provided insurance training programs as well.  

An important caveat in providing training programs is that you can’t discuss any pending patent applications.  That would create a conflict of interest.

Despite all of the positive action being taken, however, the fact is that for the foreseeable future, examination of business method patents will continue to be a long, multiyear process.  A great deal of future frustration can be avoided if inventors and their attorneys/agents have a candid discussion up front as to what the realistic expectations should be in terms of overall costs and timing of getting a business method patent.  This will help an attorney/agent craft a patent strategy to best support an inventor’s business needs.