If you let the client drive the bus, they might drive it off a cliff, taking you along.
One problem that crops up in Patent Prosecution is dealing with an unreasonable client who wants to control prosecution, but at the same time, blame the Attorney when it goes horribly wrong.
Where I see this happening the most is with regard to Claims. Many clients are not aware that Claims are the heart and soul of a Patent, and that the only way to get a Patent allowed is to write Claims that, while broad enough to protect the invention, are narrow enough not to impinge on the Prior Art.
Many clients are under the mistaken impression that arguments are what gets Claims allowed. Many novice Attorneys fall for this as well. But it is the Claims, not the arguments, that carry the day.
Many Examiners don't even read applicant arguments, but rather go straight to the amended Claims and read those. If you don't amend your Claims, or amend them sufficiently to overcome the art, chances are, you aren't getting a Patent.
I went through this process with more than one client. We discuss the rejection and the client gets agitated because the references cited do not "read on" the invention. I try to point out to clients that it is the Claims that are rejected, not the invention, but often that falls on deaf ears.
Many clients (and pro se applicants) get so incensed that they want to argue with the Examiner, stating why their invention is different than the Prior Art, but not that the Claims are different.
But the problem doesn't stop there. When I try to amend the Claims to overcome the rejection, the client balks. They want broad Claims, period, and any amendment to try to get around the art of record is nixed. "If we amend the Claim, then someone could design-around my Patent!" they say.
Well, that might be true - the guy with the PRIOR ART Patent is entitled to practice his own invention, and we can't Claim what he has already Patented. He can "design around" your Claims merely by practicing his Prior Art invention. You can't claim the Prior Art, period.
But some clients will argue, again and again that a three-line Claim is sufficiently narrow to distinguish over the Prior Art, and that the arguments accompanying the amendment will carry the day. It is a strategy that rarely works.
And of course, the Examiner is never persuaded to allow such overly-broad Claims, no matter how good the accompanying arguments are. Because Examiners do not allow arguments, they allow Claims.
So, you end up with a FINAL rejection and a pissed-off client. "If only your arguments were better!" they cry, "Then the Examiner would have seen reason and allowed the case!"
But again, it is likely the Examiner never even read the arguments, or if they did, they just skimmed them. Because it is the CLAIMS that are of major importance, and the best arguments in the world are meaningless if the Claims still are not distinguishable over the Prior Art of record.
So you have to be assertive with such clients and not let them drive the bus. Because chances are, if you let him drive, he'll drive the bus right off a cliff, and then blame you for the wreck.
Perhaps some of the blame for this type of client attitude has to do with Television. On the TeeVee, Attorneys win cases by making really good arguments, which in turn reduce the Judge and Jury to tears and result in their client being acquitted. In reality, this happens in very, very few cases. Evidence drives most cases, and if your client is caught with a smoking gun, in front of 20 witnesses, on videotape, and confesses to the crime, well, all the flowery arguments in the world are not going to get him acquitted. The best you can hope for is to keep him off death row.
So maybe that is one reason clients have unreasonable expectations about their cases. The Examiner cites good Prior Art, and the best you can hope to do is keep your client's Patent off death row. But the client wants to go for full acquittal. It's risky, and if it backfires, you can be in a lot of trouble. Sometimes it is better to cop a plea.
Another reason I think clients have these unrealistic expectations is that they perceive "everyone else" to be getting unduly broad claims. After all, they read that somewhere on the Internet, so it must of course be true. The number of websites, blogsites, and discussion groups where self-appointed Patent experts hold court is beyond count. Most of these "experts" are not even Engineers, much less Patent Attorneys. Yet they will read the Abstract of a pending Application and declare it an example of an "unduly broad Patent".
Many people decry the issuance of unduly broad Patents, and it does happen occasionally, but not as often as you'd think - or as often as the self-anointed prognosticators say it does. The person reading those types of sites tends to believe that it is possible to get such a Patent allowed, and moreover, that they are entitled to such an overly broad Patent, because "everyone else is doing it". And of course, everyone else isn't. And such unduly broad claims, even if allowed, might actually jeopardize the validity of the Patent.
As I have noted before, the best Patents are not necessarily the ones with claims like Rorschach ink-blot tests - where you can read whatever you see into the claims. Overly broad claims are more easy to invalidate in court. The best Patents are the ones where there is some trick or technique which at first may appear to be somewhat narrow in scope (and thus harder to invalidate on Prior Art grounds) but ends up being essential to the economic implementation of the underlying product. Such Patents can be gold mines, as they are hard to design around and hard to invalidate. But in order to get one, you have to have a good invention. Facts trump arguments, every time.
So how do you deal with a client with unrealistic expectations about claim scope, who wants to run the show and push you to argue for unduly broad claims? Sometimes, all you can do is walk away from such clients. And by the way, irreconcilable differences such as these are likely grounds for withdrawal from a case. See 37 CFR 10.40(c)(i) and 37 CFR 10.40(c)(iv). If the client insists on presenting claims that are not Patentable, arguably this is a claim not warranted under the law, or such disagreements comprise "other conduct [that] renders it unreasonably difficult for the practitioner to carry out the employment effectively."
But you don't usually have to resort to such extremes to withdraw as Attorney of Record, as these sort of clients also are the ones that rarely pay or refuse to pay. Part of their game is "I get a Patent or I don't pay", which is, of course, not what you signed up for. They want to write the claims, make the arguments, and when it doesn't work out, they will refuse to pay for your services - even for Patent fees.
I have been fortunate in that this situation has not happened to me very often. However, in some arts, it seems that recently, the allowance rate has dropped dramatically. Method of doing business Patents and even software-related Patents are getting more scrutiny, and with more onerous Appeals processes, Examiners are getting bolder about asserting weak 103 rejections. Getting cases allowed is harder these days, and if the client is not willing to compromise on claim scope, getting a case allowed can be nearly impossible.
Don't get me wrong, client participation is a good thing, and it results in a better Patent product. Having a client that gets involved in the process, reads all the materials, and asks important questions is useful and makes the work enjoyable. It is only when the client takes it a step too far, and starts second-guessing your strategies that things can go horribly bad. If the client has no faith in your abilities, it is time for the client to find new counsel - for both your sakes.
There are multiple approaches to dealing with such clients. One approach is to write the Claims you believe are allowable as one Claim set, while submitting a second group of Claims along the lines the client wants to present. The problem with this approach is that you are conceding control right off the bat, and the unduly broad client Claims are not likely to be allowed. And, as often happens, an Examiner may, upon seeing the unduly broad Claim, reject everything. (Note also, that under the Rules, you are not supposed to be submitting unduly broad Claims in the first place, although this is something of a gray area, as Claim interpretation, as we know, is never black and white).
A better approach is to be proactive and explain to the client why their proposed Claim won't fly. And explain to them also the economic consequences of trying to get such Claims allowed. Once they add up the cost of filing Requests for Reconsideration and Amendment after Amendment, to no end, they may come to their senses and realize that compromise is more effective.
But if that doesn't work, consider suggesting to the client that they find new counsel. Because when they drive the bus off a cliff, you don't want to be aboard!
