Interviewed by Bert Schiettecatte, Expert Computer Scientist.
If I understand correctly you initially studied Biological Engineering, back in 2003. How did you decide to study law and focus your career on intellectual property?
As a child, I would ask my parents a series of questions when they gave me a black and white answer. I saw the world as more of a place where almost everything was somewhere in a gray area. They would tell me I would make a good lawyer, which looking back was probably not a compliment.
Once I got to high school I was interested in science, so I took as many science classes as possible. I think I took every science class our school offered. Math always came easy to me, so I took all the advanced math classes. My mom was a reading teacher, and I was somewhat of a contrarian, so I think that also pushed me away from being interested in reading and writing toward math and science. My ACT scores were heavily weighted towards math and science, and because I did not have any passionate career aspirations, engineering was the obvious choice for undergrad. Biological engineering had more life sciences classes than other engineering majors, so I chose that path (which worked out well for a career in patent law, as I was exposed to more diverse areas of technology than other engineering majors).
As graduation neared, I knew that I did not want to be an engineer. While I was interested in science and engineering conceptually, I knew that I did not want to be an engineer on a day-to-day basis, especially because most biological engineers pursued advanced degrees. If I was going to attend more school, I wanted to pursue a different area of study. I started thinking about law, business or medical school, but was not really driven in any direction until I was out playing frisbee golf with a friend. He mentioned that he did well on the LSATs and was going to law school for patent law. This was not even on my radar at the time, and I was immediately drawn to the idea of working on other peoples’ inventions, which would allow me to combine my interest in science and engineering with my lawyerly instincts. I thus went to law school knowing that I wanted to be a patent attorney.
Your profile on the Davidson, Davidson & Kappel (DDK) website mentions that you take into consideration “patent analytics” for “efficient prosecution”. Can you elaborate on what you mean exactly with “patent analytics”? What are some of the tools you use to assist you in your work?
I use PatentAdvisor from LexisNexis to look at examiner analytics, and to counsel my clients on patent prosecution. Most relevant to me are the Examiner’s allowance rate in comparison to other examiners in the same art unit, average Office Actions per patent, the Examiner’s appeal statistics and the Examiner’s allowance rate with and without an examiner interview. In my experience, interviews are the most useful tool in patent prosecution, and appeals are probably the second most useful tool.
USPTO examiners are human, and most of patent law is somewhat subjective. Obviousness for example is undoubtedly subjective, and most of the time patentability determinations come down to obviousness. I look at everything on a scale between two extremes. On one end are examiners who think that essentially no inventions are obvious, and on the other end are examiners who think that everything is obvious. Most examiners are somewhere in between, and examiner analytics can help to determine where the Examiner is on the spectrum to help guide strategic suggestions to clients.
For example, some examiners have a much higher allowance rate with an examiner interview. The Examiner’s position might seem unreasonable on paper, but once you get the Examiner on the phone, you understand that there are subtleties to the Examiner’s position that were not apparent in the written rejection. If you keep solely responding to the Examiner in writing, you are going to drag out prosecution for your client, and cause the client to spend more money than necessary. Getting the Examiner on the phone will help you understand the Examiner’s position more quickly, and you can give your client clear options. If the Examiner is not willing to grant a patent with a claim scope desired by the client, you know this more quickly. Then the client has two options – to abandon the application or file an appeal.
Appeals are extremely useful for examiners who are closer to the end of the spectrum where everything is obvious. Allowance rate and Office Actions per patent help to identify these examiners, along with interviewing. Appeal analytics will tell you if the Examiner will grant a patent once an appeal brief is filed, or whether most of the appeals go all the way to a decision by the PTAB – the USPTO’s Board of Appeals. Appeal analytics also tell you how often the Examiner is reversed on appeal. Along with the merits of the case, I find that these analytics are useful for providing suggestions to clients. I have filed over a 100 appeals throughout my career, and they have rarely resulted in a losing appeal decision.
I noticed on your linkedin profile you recently launched a blog titled “Person Having Ordinary Skill In The Blogosphere” – can you tell us more about your blog and what it focuses on?
My blog is in the early stages so far, but all of my posts to date are based on numerical correlations between language used to argue (or negotiate) with the USPTO and their success rates. I have looked at 2 main aspects so far. One, I have looked at common arguments used on appeal and their success rates in winning appeal decisions. Two, I have looked at language used to frame arguments and their allowance rates.
I pull the data using PatentAdvisor. Performing such analyses has genuinely caused me to take a more conscientious approach in prosecuting patent applications, and I believe it has made me a more effective advocate for my clients. My aim is that others find it equally helpful, as I have learned a ton throughout my career by reading other patent blogs over the years and look at it as a way to give back.
What are your thoughts on the current patent legislation? Do you think there is room for improvement, and if you could, what would you change, and why?
I think that it is a good starting point, and the intent of the bill is aligned with my views. From my understanding, the intent of the bill is to return subject matter eligibility analysis to a less restrictive filter.
The bill excludes from patent protection “NON-TECHNOLOGICAL economic, financial, business, social, cultural or artistic process” that is not “embodied in a machine or manufacture, unless that machine or manufacture is recited in a patent claim without integrating, beyond merely storing and executing, the steps of the process that the machine or manufacture perform.”
In my view, the term “non-technological” is problematic because it is difficult to understand the dividing line between “non-technological” and “technological.” It has been explained that the intent of the bill is to have a low bar for what is considered “technological,” but I think this needs to be further fleshed out or removed. I would probably remove the term “non-technological” and replace it with something along the lines of “wholly results-oriented.” I am sure that can be picked apart as well, but in my view this language sets a broader filter, and can be overcome by generally adding sub-steps for achieving a claimed result.
With the America Invents Act (AIA) signed into law in 2011, the first inventor to file a patent application receives priority. Do you feel this act has helped small inventors or not, and why?
It is a pretty rare issue that does not impact most patent applications, but I am not sure that it cuts one way or another. Under first to invent, an inventor would have to provide evidence, usually via contemporaneous documentation, that established conception and reduction to practice of the invention to prove the inventor was the first to invent. In my view, a large company probably has better procedures in place for documenting inventions than small inventors, so large companies probably have an advantage under first-to-invent rules. On the flip side, large companies have more resources to file applications more quickly, so they also have an advantage under first-to-file rules. It really depends, and I do not think that the answer is as straightforward as some contingents make it out to be.
For law students who want to enter your area of specialty down the line in their careers, which skills do you think are the most important ones to focus on?
Understanding the basics of patent law as early as possible is helpful in jump-starting your career. If I went back, I would have taken the patent bar exam before I even started law school. Being registered to practice in law school is a huge advantage for gaining experience as it opens up more job options earlier.
Writing is the most important skill for being a patent attorney. I would suggest law students, especially those with undergraduate degrees like engineering that do not involve much writing, to write as much as possible. Seek out to volunteer creating content for journals, or even create your own content via platforms such as LinkedIn.
Legal research is also underrated for patent prosecution attorneys. I have always read a ton of PTAB ex parte appeal decisions. In my opinion it is the best way to understand how to argue prior art rejections, and know which arguments are and are not effective. Knowing that you do or do not have effective legal arguments against a prior art rejection is invaluable for advising clients. Reading patent law decisions as early as possible speeds up the learning curve.
What did no-one tell you about working in intellectual property, that you wish you knew, as a law school student?
That everything is somewhere along a spectrum and nothing is black and white. Whether it is easy to get a patent might depend on the Examiner, and the ability of the patent attorney. There is also essentially no such thing as a 100% valid patent or a 100% invalid patent. It depends on the lawyers, the expert witnesses, the judge and the jury. Almost everything is dependent on a number of factors that are not cut and dry. Your job is to move the needle in the favor of your clients as much as possible, but perfection is not achievable.
Where can we learn more about your work and how can readers contact you?
Follow me on LinkedIn (https://www.linkedin.com/in/clint-mehall-patents/) and read my blog (https://phositb.com). I always welcome questions and comments on my posts and try to post on issues that can help people learn. I have learned a ton by interacting with people who have commented on my posts.