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Category: Patent Law

Patent Office Delays Non-DOCX Penalty Fees

The Patent Office is delaying the non-DOCX penalty fees it had said would go into effect at the beginning of 2023.

Family skiing at Nordic Valley, Utah

Family skiing at Nordic Valley, Utah

As part of its “modernization” efforts, the Patent Office has been pushing patent attorneys, agents, and pro se filers to use Patent Center instead of EFS-Web and to file in DOCX format instead of PDF.  I have previously written about some of the problems that has created.  Others have done so in much more detail and volume than me.

The Patent Office is pushing filers to use DOCX format instead of PDF because the Office claims it saves us the time and hassle of converting to PDF and because the Patent Center’s filing software can check DOCX files for common filing problems.

The few times I have tested Patent Center and filed DOCX documents, I have been disappointed.  The system warned me of problems that did not exist.  It never gave helpful feedback.  The most feedback it really gave was to auto-detect that my application had 3 independent claim and 20 claims in total.  I need to know this because it determines what fees apply.  However, two issues:

  1. I already knew those numbers.  I usually write those numbers down before filing so that I can check that the Office’s filing system has properly calculated the fees; and
  2. When it came time for Patent Center to calculate the fees, it prompted me to input the number claims in my application, rendering the auto-detect from earlier in the submission process seemingly unnecessary.

The biggest problem with the DOCX adoption is that Patent Center creates a PDF from the DOCX file that then becomes the official copy of the application.  That PDF, however, often would be inconsistent with the DOCX file.  For instance, when creating the official PDF, Patent Center frequently changes numbers, variables, and even operators in equations submitted in the original DOCX document.  The burden is on the uploader to check the PDF for consistency with the DOCX.  This is process requiring hours, however, and is not a practical activity when uploading finalized patent documents in an online environment that times out after inactivity.

The Patent Office has continually pushed penalizing applicants who did not include a DOCX file.  The Office was going to begin charging applicants $400 in non-DOCX penalty fees on January 1, 2022.  That was then delayed until January 1, 2023.  Thanks in part to efforts by Ptaaarmigan and a last-minute protest letter signed by several hundred attorneys, the Office has now delayed implementation of the penalty until April 3, 2023.

I suspect we will see a major revision – or at least an announcement of a revision – before April 3 which either allows filers to continue using PDF or withdraws the penalty fees.



Rubik’s Cube Intellectual Property

In honor of the Rubik’s Cube craze that has recently hit the Galvani household, we decided to take a closer look at how this iconic toy was created and what type of intellectual property protection it has enjoyed over the years.

Rubik's Cube

Rubik’s Cube

Erno Rubik was a Hungarian design teacher who loved puzzles.  He set about creating a toy based upon geometry in hopes of helping his students learn about three-dimensional objects.  Rubik invented a toy with 26 tiny cubes in six different colors joined together into one big cube that he called the “Magic Cube” in 1974 and by 1980, it was being sold in toy stores world-wide under the name “Rubik’s Cube.”  This famous puzzle toy has been the subject of various infringement suits over the last forty years.

Rubik received patent protection for the Rubik’s Cube toy in Hungary in 1977.  He obtained little patent protection world-wide, however, only receiving patents in Belgium and the United States.  Rubik was granted a U.S patent on March 29, 1983 for a “Spatial Logical Toy.”  Rubik granted the toy company Ideal Toys a license to sell the Rubik’s Cube toy.  Larry D. Nichols had a 1972 patent for a “2x2x2 Puzzle with Pieces Rotatable in Groups,” which was for a 2×2 puzzle held together with magnets.  He sued Ideal Toys for patent infringement.  After losing this infringement case in 1984, Ideal Toys appealed and, in 1986, a court determined that the original Rubik’s Cube toy did not violate the Nichols patent, but a pocket-sized version of the Rubik’s Cube did.

The U.S. patent for the Rubik’s Cube expired in 2000, but Seven Towns, the exclusive licensee of Rubik’s Cube’s IP rights at the time, had a creative strategy for finding protection in another way.  Seven Towns attempted to register trademark – or trade dress – protection in the shape of a Rubik’s Cube toy to prevent knock-off versions.  It registered the cube shape with the European Union Intellectual Property Office in 1999.  Trade dress and trademark protection can be extremely valuable since they can potentially continue forever in spite of the expiration of related patents covering the underlying product.  The EUIPO granted the trademark, and Seven Towns enjoyed its protection until it was challenged in 2006 by another toy company called Simba Toys.  After a 10-year battle, Simba Toys won its argument that the cube’s shape contained a technical solution that should be protected by a patent, not a trademark.  The EU canceled the Rubik’s Cube trademark.

These days, you can find plenty of knock-off puzzles, but most major retailers continue to sell the original Rubik’s Cube and related puzzle products under the Rubik’s name which are marketed as the “World’s No. 1 Puzzle.”



Converting to a Provisional Application

Clients often file a provisional application

Collegiate Mountain Bike Nationals, Purgatory

Collegiate Mountain Bike Nationals, Purgatory

and then file a non-provisional patent application on the same or similar subject matter within a year.  Clients and attorneys sometimes loosely refer to this as converting a provisional application into a non-provisional patent application.  It isn’t really.

What they are really doing is filing a non-provisional patent application and making a domestic benefit claim to the provisional application.  Because the content of the provisional is often so similar to the non-provisional, “converting” is shorthand, but ultimately a misnomer.

Converting to a Non-Provisional Patent Application

There is actually a technical meaning for converting a provisional application into a non-provisional patent application.  It is when you make a specific request to the Patent Office and ask that it take the provisional you filed and treat it as if it were a non-provisional patent application.  If you request this, your provisional better be in good enough shape to actually work as a non-provisional patent application.

Converting in this way doesn’t happens a lot, but it can be a useful loophole in certain circumstances.  For instance, normally, a design patent application cannot claim priority to a provisional application.  This means that often one must file a provisional and a design patent application at the same time, rather than delaying the design patent application.  However, you could potentially file a provisional and then convert it into a non-provisional.  Later, if the drawings in the non-provisional support it, you could file a design application claiming priority to the non-provisional.  This would make it seem like your design application’s priority actually extends back to the provisional’s filing date, which it does, because the provisional became the non-provisional.

Converting to a Provisional Application

This article is actually about the opposite type of request: converting a non-provisional patent application into a provisional application.  This asks the Patent Office to turn a non-provisional into a provisional for any number of reasons (none of which you have to disclose).

I recently had to do this when a client, intending to file a provisional application on its own, navigated the filing system incorrectly and accidentally filed a non-provisional application.  This kind of mistake is surprisingly easy to make in the Patent Office’s new Patent Center / DOCX filing system.

Why Convert?

If the content of the application is limited, as a provisional often is, then filing a provisional application as a non-provisional can be disastrous.  If the mistake is not caught early and the application publishes, it will create a disclosure.  That disclosure will have prior art effects against competitors but also potentially against the patent applicant.  And, if the disclosure is limited, there may not be enough substance to support decent claims.  This can ruin the patentability of the idea and potentially destroy a whole family of patents.

So, if you inadvertently filed a non-provisional application and meant to file a provisional, you can make a special request.

The applicant must make a written request and submit it to the Petitions Office.  The request must clearly identify the patent application and request conversion, preferably by identifying the correct applicable regulation.  Additionally, the applicant must pay fees.  The fees are actually fairly affordable.  In addition to the provisional filing fees (which would have had to have been paid originally anyway), a processing fee ($50 at the small entity rate) and a surcharge ($30 at the small entity rate) are due.  Unfortunately, the Patent Office will not refund the fees associated with filing the non-provisional.

The Petitions Office will consider a request which is proper.  The Petitions Office is quite backed up as of the publish date of this article, and it may take several months for review.  Another petition and filing fee can expedite review of the petition if the applicant wants faster consideration.



Design Patent Application Priority Claims

Snowbasin in Clouds, Utah

Snowbasin in Clouds, Utah

Patent applications possess priority claims to couple them to other patent applications.  This often arises when a non-provisional utility patent application claims priority to a provisional application.  The provisional application is a “temporary” filing but can establish a filing date to which the later-filed non-provisional or “real” patent application claims priority.  If the priority claim is good and valid, then the later-filed non-provisional application is considered to have been effectively filed as of the provisional application’s filing date.

Priority also occurs when a later-filed non-provisional utility application is connected to an earlier-filed non-provisional utility application.  The later-filed app may claim the same subject matter or may present new subject matter.  Filing non-provisional applications in this way builds a “family” of patent applications with parent and child applications.  Provisional applications are often the first applications in such families.

While utility patent applications can be strung together to build these families, design applications are more difficult to incorporate.  A design patent application primarily presents a set of drawings as both the disclosure and the claimed coverage, but utility applications rely on both detailed written description and drawings.

By law, a design patent application cannot claim the benefit of a provisional.  That doesn’t mean, however, that an applicant cannot attempt to claim priority to a provisional application.  An applicant could certainly make a priority claim in the design application.  I have seen instances where the Office technically recognizes it by listing the provisional as a parent in the continuity information section of the Patent Office online portal.  But the priority claim is still wrong and invalid, the Patent Office online system just doesn’t realize it.

37 C.F.R. § 1.78 is clear: (a) An applicant in a nonprovisional application, other than for a design patent, … may claim the benefit of one or more prior-filed provisional applications under the conditions set forth in 35 U.S.C. 119(e) and this section.

MPEP 211 further plainly states: “Design applications may not claim the benefit of a provisional application under 35 U.S.C. 119(e). See 35 U.S.C. 172.  Thus, where a design patent application claims benefit under 35 U.S.C. 120 to an intermediate nonprovisional utility patent application that directly claims the benefit of a provisional application, the design application cannot claim the benefit of the filing date of the provisional application.”



Patent Application Size Fee

December Snow in Durango

December Snow in Durango

The Patent Office charges fees for receiving and processing patent applications.  It levies filing, search, and examination fees for all non-provisional design patent applications and utility patent applications.  These fees vary depending on whether the applicant is large, small, or micro entity.  The fees fluctuate depending on the structure of the claims.  The Patent Office also charges an application size fee.

Most applicants are aware that the Patent Office charges fees for excess claims.  Excess claims are defined in a few ways.  First, there can be a charge for “multiple dependent claims,” but such claims are written so infrequently that those fees can almost be ignored.  Second, the Patent Office charges for each independent claim in excess of three.  Third, the Patent Office charges for any and all claims in excess of twenty claims.

Patent attorneys are accustomed to drafting only 20 claims in 3 sets, and so applications often do not incur excess claim fees.  Most attorneys remember that when they run over the 3 independent / 20 total claim limit, the application incurs excess claim fees.  It is easy to write more than 20 claims.  If I write more than that for a patent application, then I present them to the client and we consider whether to remove or keep them.  But many applications include only 20 claims.

Patent applications can also incur an “application size fee.”  These are charged when an application has a lot of pages.  While it is relatively easy to present more than 20 claims, applications in excess of 100 pages are much less common.

100 pages is a lot of specification pages for a patent application.  However, it isn’t just the detailed description that counts toward the 100 page limit.  Instead, the Office considers the number of drawing pages (and the number of claim pages, if not included together with the specification).  Applications pushing toward 100 pages in length on the detailed description side often have a correspondingly-large number of drawings which can push them over the hundred-page limit.

Because most applications usually have 20-50 pages, the application size fee can be easy to forget.  If forgotten, the Office will issue a Notice of Missing Parts to correct the error, either by eliminating pages (not likely to happen) or by paying the forgotten application size fee together with any surcharges.



Late US National Stage Entry

Mountain Biking in Park City, Utah

Mountain Biking in Park City, Utah

A late US national stage entry, from a PCT international application, is one way a US or international applicant can obtain patent protection in the US.

Patent applicants can seek patent rights outside their home country through a few mechanisms.  For utility applications, applicants file either direct foreign applications in individual foreign patent offices or initiate a centralized international process.  With direct filing, applicants use local counsel to file and examine the applications according to the local law.  With the international process, a centralized PCT application is filed, searched and examined under internationally-accepted rules, and is then sent to foreign offices where it can be processed according to the foreign country’s laws.

Deadlines govern the decisions and timing to file either directly or internationally.  A PCT application must usually be filed within 12 months of a priority date, usually the date a first application was filed on the subject matter.  There are methods for restoring a right of priority within a limited amount of time if that deadline is missed.  However, those methods are limited and not always available.

PCT Applications

Once filed, the PCT application processes through an “international phase” in which it searched by an international searching authority, and a written opinion is developed.  The written opinion determines whether the claims presented in the PCT application have met internationally-accepted standards for patentability.  A report on patentability is eventually developed which is based either on that written opinion or on subsequent examination following the presentation of amendments or arguments in response to the written opinion.

The “international phase” of the PCT application ends 30 months from the priority date, and the “national phase” (also called the “national stage”) begins with the filing of national applications.  This deadline is no less than 30 months, but in many countries it is 31 months, and some countries provide even more time under certain circumstances.  An applicant looking for patent protection in foreign countries must file a foreign application in those countries before the expiration of each country’s respective deadline.

Missed National Stage Entry Deadline

In many countries, missing the national stage entry deadline is the end of the road, and you can no longer pursue a patent application in that particular country.  In some countries, there may be exceptions.  Canada, for instance, is unique in that provides an additional 12-month extension period when the delay is unintentional.

Late US National Stage Entry

The United States is perhaps one of the most gracious countries when it comes to missed deadlines.

In the US, if the deadline on a regular patent application is missed (say, the applicant failed to respond to a rejection), then the application will become abandoned.  It can, however, potentially be revived.  If the abandonment was unintentional, and the delay in filing a petition to revive accompanied the missed response was also unintentional, then the application can generally be revived (with payment of a hefty governmental fee).  In some cases, there are additional requirements, and in other cases, the Patent Office may request more information about long delays, such as those over two years.  However, there are means for reviving abandoned applications.

A wrinkle of PCT law enables a PCT application to enter the national stage late.  Filing a PCT application will automatically constitute the designation of all PCT contracting states on that filing date.  In other words, the effect of the international application is as if a national patent application were filed in each contracting state.

So, when a PCT application is filed, the application is also considered to have been effectively in each PCT member country.  For the US, that means that a US application is considered to have been filed on the same day the PCT application was filed, even though a US application was not actually filed.

This means that the “US application” can go abandoned, which means it can be revived.  If an applicant who has filed a PCT application misses its 30-month deadline for entering the national stage in the US, that deadline closes, and the application is considered abandoned as to the US.  However, the US will allow it to be revived (again – revival is not always possible, it is subject to certain restrictions).

The US even has a form – PCT/SB/64PCT as of the time of this writing – that can be used in a petition to revive an international application.  It is named the Petition For Revival Of An International (PCT) Application For Patent Designating The U.S. Abandoned Unintentionally Under 37 CFR 1.137(a) and includes a checklist of some of the minimum documents that need to be filed along with a such a request.

Any applicant reviving a PCT application for national stage entry into the US would be well advised to contact and hire an experienced patent attorney.  A national stage entry on its own is a complicated process that requires a great deal of accompanying paperwork.  Certain translations, priority copies, international records, and other documents must be submitted for a national stage entry.  In addition, the Petition For Revival has another set of documents that must be furnished to support the request.  And the government fees, which vary depending on the size of the applicant, the type of filing, and the results of the international application, are high and non-refundable.



Revival of a PCT Application

Gila Monster, Brown's Ranch, Scottsdale

Gila Monster, Brown’s Ranch, Scottsdale

The Patent Office is relatively generous when it comes to tolerating accidents in patent applications and patents. Revival of a PCT application is more difficult.  Patent applications can sometimes go abandoned when an applicant fails to submit a reply or response in time, or fails to pay the full amount of a fee that is due, or leaves out critical elements of an application. I recently inherited a client with a patent portfolio that had all of these problems, and fortunately, they can be solved in most circumstances. The Patent Office allows revival of an application with the filing of a petition explaining the lapse and delay, and payment of a hefty petition fee.

An owner can also “revive” a patent.  Utility patents have maintenance fees that must be paid periodically to keep the patent alive. If any of those payments are missed, the patent will expire. However, the Patent Office has a mechanism to accept the unintentionally delayed payment of a maintenance fee. Again, this requires a large surcharge.  I have had to do a few of these, all because an attorney passed away without a contingency plan for transferring or alerting his clients.

A PCT international application, however, is a different animal. PCT applications proceed along a strict and time-sensitive path. PCT applications must be filed within 12 months of a first priority date to initiate an “international phase” of the process, in which the PCT application is centrally searched, examined, and potentially amended. Then, the applicant must enter the “national phase” of the process within 30 or 31 months (depending on the country) of the priority date by filing national phase applications in foreign countries. If the applicant doesn’t file foreign-country applications by the 30/31 month deadline, the PCT application simply expires.

“PCT” stands for Patent Cooperation Treaty. More than 150 contracting states have signed the PCT. This treaty establishes a centralized process for searching and examining applications, internationally-accepted indications of patentability, and processes for filing local patent applications based off the PCT application. Another tenet of the PCT is that the international application has the effect of a national patent application in all contracting states when it is filed. In other words, filing a PCT application is considered to be effectively filing an application in each of the 150 contracting states’ patent offices.

This yields a helpful consequence in the US, with its generous abandonment and revival rules. The US revival rules are not limited to applications that are actually filed with the Patent Office; it applies to any application that is effectively filed. This means that, if an applicant files a PCT application and forgets to enter the US as a national phase application by the 30-monthe deadline, then you can actually revive the application as to the US.

This is not revival of a PCT application itself. There is no mechanism to do that. However, revival of a PCT application as to the US will allow you to file into the US and maintain the PCT’s priority date. Your ability to revive the application in other countries will be similarly determined by local law there. Reviving a PCT application in a national phase country is not simple. Check with foreign counsel or your local patent attorney and discuss the reasons the PCT application was abandoned to see if revival is even an option.



Oath Or Declaration in a Patent Application

Phoenix Mountain Preserve

Phoenix Mountain Preserve

When does a patent application require an inventor’s oath or declaration?  Well, almost always.

Only the inventor or inventors of an invention may file for a patent application claiming the inventive subject matter. “A person shall be entitled to a patent unless he did not himself invent the subject matter sought to be patented.” 35 U.S.C. § 102(f). This statute bars the issuance of a patent where the applicant, or identified inventor, did not invent the subject matter being claimed. See In re Verhoef, 888 F.3d 1362, 1365 (Fed. Cir. 2018) (citing Pannu v. Iolab Corp., 155 F.3d 1344, 1349 (Fed. Cir. 1998); City of Milwaukee v. Activated Sludge, 69 F.2d 577, 587 (7th Cir. 1934) (“When a number of persons make an invention jointly, a valid patent can not be taken out in the name of one of them.”)).

The Application Data Sheet sets forth the inventorship and is presumed to be correct on its face. An oath or declaration must therefore be submitted for each person identified as an inventor. An oath or declaration filed in a patent application must identify that the person making the oath believes the named inventor(s) to be the original and first inventor(s) of the claimed subject matter. This is to ensure that each inventor indicates what he or she believes to be the appropriate inventive entity.

The oath must also state that the signatory acknowledges the duty to disclose to the Patent Office all information known to be material to patentability. Inventorship is typically conception; reduction to practice – drafting someone else’s idea – is not sufficient to be considered an inventor.  See Fiers v. Revel, 984 F.2d 1164, 1168 (Fed. Cir. 1993).

So, when a person conceives of an idea, that person becomes an inventor, and that person must sign and file an oath or declaration making certain statements about the duties and facts surrounding invention and the examination of a patent application for the idea.

In some cases, multiple may be inventors. Joint inventorship can happen through close collaboration or because a project develops over time and is added to by inventors completely separate from each other. A joint inventor is a person who:

(1) contribute[s] in some significant manner to the conception or reduction to practice of the invention, (2) make[s] a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do[es] more than merely explain to the real inventors well-known concepts and/or the current state of the art.

Pannu, 155 F.3d at 1351. “When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.” 35 U.S.C. § 116. Joint inventors may not apply for a patent other than jointly; neither of them can alone file a patent application. 37 C.F.R. § 1.45(a).

It is prohibited for a joint inventor to receive a patent that doesn’t name the other joint inventor(s); doing so can be a basis for later invalidating the patent if the inventorship is not corrected. Thus, joint inventors must sign their own oath or declaration.

Unfortunately, an original oath or declaration cannot always be obtained. Sometimes, an inventor can’t be reached, or refuses to sign, or has died. That doesn’t a patent app can’t be filed or a patent issued.  Rather, the rules account for these situations and there are mechanisms and procedures to file an application without the required oath or declaration.

An oath or declaration is not required in all continuing applications. Under 35 U.S.C. § 115(g), the requirement for a signed declaration does not apply if the inventor was also named as the inventor in a parent application, to which the subject application is a continuation or division. A properly-signed declaration previously submitted in such a priority application renders the requirement for a dec moot. Nevertheless, it can sometimes be easier to file the declaration from the previous application in the new application, just so that it is of record and the file is clear. And, if the inventorship has changed at all from the prior application, new oaths or declarations must be filed.



Fee Changes at the Patent Office

Florida River, Colorado

Florida River, Colorado

The Patent Office has raised many of its fees.

The Office attempted to soften this fee increase by explaining that it is the first raise in almost three years, it nevertheless comes in the midst of a pandemic where many are struggling to meet their financial obligations. Larger companies may not be greatly affected, but smaller companies, start-ups (especially self-funded ones), and independent inventors are disproportionately impacted by these fee changes. It is somewhat disappointing to see Office continue with these changes despite the current economic situation of most Americans.

Nevertheless, the Patent Office is largely self-funded and budgeted, and it is not immune to rising operational costs. As a consequence of mandated internal reviews of fees, costs, and revenues, the Office determined that fee adjustments were necessary to adjust to increasing costs and to provide necessary resources for its internal operations. In setting fees, the Office attempts to not just cover its current costs but its projected costs for the next several years. Thus, the hike feels steep now because it is, in part, set to off-set future fees. Most fees increased by approximately 5 percent, though some increased by quite a bit more.

Below I cover the fees for some of the more-commonly used actions. There are a number of changes to fees that I have not included here (more info is available at this link).  I’ve quoted the below fees at the small entity rate.

Adjusted Fees

  • Provisional Application Filing Fees increased from $140 to $150
  • Utility Patent Application Filing Fees increased from $785 to $830
  • Track One Requests for Expedited Examination increased from $2,000 to $2,100
  • Rocket Docket requests increased from $450 to $800
  • Design Patent Application Filing Fees increased from $480 to $510
  • International Application Transmittal Fees increased from $120 to $130
  • International Application Search Fees increased from $1,040 to $1,090
  • International Preliminary Examination Fees increased from $300 to $320
  • Extensions for Responses increased $10 to $80, depending on the length of extension
  • Terminal Disclaimers increased from $160 to $170
  • RCE fees increased from $650 to $680
  • Notice of Appeals increased from $400 to $420
  • Petitions to Revive Abandoned Applications increased from $1000 to $1050
  • Utility Patent Issue fees increased from $500 to $600
  • Design Patent Issue fees increased from $350 to $370
  • 3.5 Year Maintenance Fees increased from $800 to $1,000
  • 7.5 Year Maintenance Fees increased from $1,800 to $1,880
  • 11.5 Year Maintenance Fees increased from $3,700 to $3,850
  • Maintenance Fee Surcharge (for late maintenance payments) increased from $80 to $250

New Fees

  • Non-DOCX Filing Surcharge is a new fee at $200. The Office is beginning to require patent application documents be filed in DOCX format. This surcharge will not go into effect into 2022, however.

Discontinued Fees

  • The Office dropped fees for a bunch of actions and reports that are very infrequently used.


Always Stay Humble And Kind

Sometimes a prospective client calls in need of help prosecuting his or her patent application. Sometimes, the caller informs me that they wrote the patent application themself (a “pro se applicant”), that it has been rejected, and that they now want to consult an attorney.  I get about ten of these calls a month.  The caller usually wants me to write a response to the Patent Office.

Overend Park, Durango, Colorado

Overend Park, Durango, Colorado

I do responsive work all the time; it is called patent application prosecution. I know pretty well what my average cost is for this kind of work, and I have found that, unfortunately, it often exceeds a pro se applicant’s budget. I usually try to explain the likely cost of such a response, and I try to explain why the costs can be so high.  In my experience, patent applications written by inventors require far more work than ones written by attorneys; one response is usually not sufficient – the first response is succeeded by one or more rejections.  Unfortunately, there usually aren’t ways to fix all the issues in a pro se application in one blow.

There are a lot of rules and pitfalls that an inventor doesn’t know about and will usually run afoul of when writing an application, and these then have to be fixed if the application has any hope of maturing into a patent. For that reason primarily, I don’t take on clients who have written their own applications anymore. I do caution them, however, that it will be difficult and expensive to get a patent, and so they should make sure that attorney they do hire discloses this to them.

I am fairly direct when I deal with clients. I always try to set expectations from the outset, because I don’t want them to be surprised with an outcome later on.  Sometimes, my directness is too blunt, and is interpreted as rudeness.  My wife likes to remind me of this.  I’m always trying to improve and better appreciate and understand each client and their unique position. While I will always tell clients only the truth, I am reconsidering my manner of delivering that truth.