Early in my career, a managing partner brought me a USPTO office action from an examiner for an application drafted for an individual client and asked me if I, as a former patent examiner, could respond to the office action and get something allowed. The invention was a two-part plant protector that connected around the stalk of a tomato plant to surround the plant and cover the earth below the plant. The protector prevented weeds from growing around the plant over a growing season and collected rainwater which drained into the ground close to the plant. There were similar devices that had been patented over the years and the partner wanted to find a way to obtain a patent for the client to distinguish the client’s device from others that already may be available.
I did my best to claim the details of the invention in a way that distinguished it from the prior art. The examiner ultimately accepted my arguments and allowed the application, and the patent issued. The client was thrilled.
A year or two later, the client forwarded to me a letter from the online catalog he used to sell his protector stating that it had received an enclosed letter from a patent attorney in North Carolina who represented another inventor who had obtained a design patent on an ornamental design for a similar device. The attorney wanted to discuss possible licensing of the design patent. The catalog informed my client that they would pull his protector from their catalog if the client could not resolve this issue.
The client was in a tough spot. He had invested funds to manufacture protectors that he would drop ship to customers when the catalog received orders. He had not sold enough of the product to recover his initial investment. He wanted my help to save his business.
After I obtained a copy of the other patent and reviewed its details, comparing it to my clients patent, I wrote two letters – one to the client and one to the patent attorney in North Carolina. I sent a copy of my client’s patent and a letter explaining my plans. In my letter to the N.C. attorney, I briefly stated that my client’s product is described in the attached patent with little to no modification. I also pointed out to the attorney that my client’s patent was filed almost a year before his client’s design patent. As such, my client’s patent appears to be prior art with respect to the design patent. I added that I had not analyzed his client’s design with regards to possible infringement of our claimed protector. Upon receipt, I requested that the attorney contact me to discuss removing any assertion of possible infringement that he sent to the catalog and any needed discussion regarding his client’s activity which might need a license from our patent.
This entire effort generated billing for my time of less than one hour.
The attorney from North Carolina responded with a copy of his letter to the catalog saying that his client is withdrawing any complaint. He also said that he thought a license of our patent would be premature at this time. As a result, my client’s sales of his plant protector continued uninterrupted. He did not want to spend any money to determine whether the other design might infringe his patent since a royalty on sales would likely take some time to recover enough to pay for my time to perform the necessary analysis. He was more than satisfied being able just to continue to sell his product.
Had the client not filed his patent application, the cost to determine whether his design infringed the N.C. inventor’s design patent, and possibly whether it was it was valid, would have been significantly more than he had spent to prepare, file, and prosecute his patent to issuance. He never received a royalty on his patent, but his investment in obtaining one more than paid for itself by allowing his business plan to continue as contemplated.
I do not know whether the client fully appreciated how much he saved by his simple decision to pay to file a short patent application. . I have repeated these events many times when explaining to potential clients why they might benefit from filing a patent application. Filing a patent application early is usually cheaper than reacting to events that occur much later.