Innovation Cafe with Gary Shuster, patent litigator and prolific inventor.
Transcript
Hi, this is Gary Schuster, your friendly neighborhood inventor. And you’re with us at Innovation Cafe. Today, I want to talk about turning your ideas into something that you can monetize. I’ve had quite a few videos on this, but obviously, if you want to make a living with the power of your brain, you’re going to have to find a way to, I don’t know, make a living with the power of your brain. Right? So part of the process for monetizing inventions is turning them into a patent. Now, I know as a fellow inventor that we love to talk about our inventions.
I mean, if you haven’t bored your spouse or your kids or your parents with a description of an invention or ten, you probably not doing it right. I mean, we love to talk about this stuff. So this is a beautiful synergy where the inventors natural love of discussing their invention meets the need to explain the invention to somebody. And I’m talking about a patent examiner. Now, you can pursue a patent without ever talking to another human being. You can email your patent lawyer. The patent lawyer can file stuff electronically with the patent office.
The examiner can give back, you know, a rejection, and they can go back and forth and negotiate all via officially file documents. That’s not the way I would do it. In fact, I found that to be very ineffective. What you need to do is you need to talk to the patent examiner. Luckily, there’s a provision for that. It’s called an examiner interview. So what does it look like? Well, it looks like this. Your patent lawyer says either the patent examiner called and wants to discuss. This doesn’t happen very often. Or we should do an interview with the patent examiner.
Now, if you’re patently or will not do patent examiner interviews, probably time to get a different patent lawyer. Okay. Because these are very effective. Now when you get on the phone with the examiner and I guess it’s possible they could do it by zoom, you can also do it in person. And if it’s a very valuable invention, do it in person. But I have had the experience of being on numerous examiner interviews, and they always kind of start out the same way with some introductions and, you know, formal. Hi. I’m examiner so-and-so. Oh hi examiner.
My name is, you know, I mean, you introduce yourselves. You generally talk on a high level. Well, today we want to talk about this. And this is whatever problem you’re running into in getting your patent issued. Now, it can happen only between the patent lawyer and the examiner if you let it. But again, don’t do that. Get in on the interview yourself and let me explain why that’s important. I once did a patent examiner interview, and we were talking about some legal issues related to getting the patent issued, obviously. Okay. So as we’re going back and forth, my patent lawyer, who’s fantastic, Sherry Flynn of Common Law would shout out to you.
She’s on the patent examiner interview with me, and we’re talking to the examiner. And the examiner asked about one legal issue and that she answers something that I said, oh, yeah, but, you know, this other case said this, and, you know, we’re going back and forth and then we move into more of a, you know, what are the nuts and bolts of the invention and how does it work and why should it be patentable despite the cases in prior art that the examiner was citing at that point? I said, well, examiners, let me tell you, when I came up with this, I and he cut me up like right there mid saying, I got very few words out.
He said, whoa wait a minute. I’m like, okay, what did I screw up now. Right. You don’t like to be interrupted after two words. This is a yes examiner. He was. Wait a minute. You’re the inventor on this? I said yeah. Yes, examiner. I’m the inventor. Because. Oh, I didn’t realize you were a person. I thought you were one of the lawyers. Now, as someone who is a lawyer, I’m not surprised. Lawyers are sort of part of the system and are viewed in terms of their function much more than in terms of their humanity.
But he obviously viewed inventors differently. And all of a sudden his attitude changed. He was interested. How did you come up with this? How did you deal with this problem? How do you come up with that solution to it? And all of a sudden we were engaged. And of course, I, you know, found my personality turned up to 11 at that point. You know, because when you’re talking about the legal stuff, it’s pretty dry. It’s pretty boring. And, you know, they’re not going to fall asleep during the examiner interview, but, you know, no one’s on fire.
But when you get an inventor talking about how it happened, why it happened, how you solved this or that, man, that is something. And the examiner picks up on your excitement. And so now we’re just having an exchange of exciting thoughts on it. And that’s how you make the connection with the examiner. You get them engaged enough with you. And they’ll really work hard to understand what the invention is. How you came up with it, why it works, how it works, and perhaps more importantly, they’ll give you a really fair shot at getting a patent.
If they’re just dealing with lawyers, they might be at the end of a busy week and think, I can just get a non final rejection. It shouldn’t take too much time, but once they know you as a person, all of a sudden they have an investment in a human being. And I don’t mean some unfair advantage. I mean that they recognize that you’re a person instead of just a bunch of papers across their desk. Now, I’ve had a few other examiners interviews. Perhaps the best examiner interview story, and I can’t I can’t go into details on it because someone I was helping in my capacity as a lawyer, but this person had a couple of phone calls with the examiner, and on the second call, they realized that they shared a love of a certain hobby, which I don’t even want to say because I don’t want to potentially identify the client, but they bonded over that.
And now I’ve never heard of an examiner interview. Going over half an hour just doesn’t happen. They talked for hours and they talked about the invention and they talked about other things. And back to the invention. And wow, they bonded. And the examiner actually guided everyone through the process and said, oh, well, you know, these are the problems I see. Here’s where I think that you can get the patent issued. You should focus on this. And that was really helpful. Like this is actually how all patent examiners should be, which is someone comes to you with an invention.
If it’s patentable, they should be totally on board with helping you get the patent issued. But they’re overworked and it doesn’t always happen. So I want to really encourage you as much as you love talking about your patents, love even more, talking about your patents with a patent examiner because it’ll help you and it’ll help your lawyers and everyone will understand each other much better. So briefly, put, I not everyone likes to hear about our inventions all the time, but we love to talk about them all the time. Don’t shy away from talking about them the one time that it’s most important.
So I’ll just wrap this up. We are live from Innovation Cafe in beautiful downtown Vancouver. This has been Gary Schuster, your friendly neighborhood inventor, reminding you that innovation is a gift that comes with your brain. Use it. You can do it. See you next time. Oh, that would good.