Fighting to Own My Patent

A long battle to own the patent to my dissertation

Generally, when a person works at a company, anything that gets patented is owned by the company. Unless you work for yourself or file patents on the side, rarely will you ever own your own patent. Luckily, I stumbled across an occasion where I could own the patent for my dissertation work.

Provisional Patent

In 2008, Notre Dame filed for a provisional patent a few months after my first publication on my dissertation work. They said they would then decide on whether to pursue a full patent or not, and I didn’t hear anything about it for a year. There was nothing much to do but wait and see. This approach didn’t quite work because at the time, the patent office at school wasn’t too aggressive.

A throwback to scanning myself with the 3rd prototype…

Filing for the Patent

As the deadline to file for the full patent was getting close to expiring as the provisional patent was about to expire, I started pushing a bit more. My advisor and I had some meetings with the patent people, but the result was very nebulous. They wouldn’t confirm whether or not they were going to file. So I asked if I could have the rights because my brother was a patent clerk (now a patent lawyer) so filing myself would be relatively cheap. The conversation went like this in a general way:

Me: Are you going to file a patent?

Notre Dame: Are you planning on using this Intellectual Property (IP)?

Me: Not immediately after school because I already have a job setup.

Notre Dame: Okay, we’re not going to file.

Me: Oh, cool, since you’re not going to file, could I have the rights to the patent?

Notre Dame: Oh, you’re interested in having it yourself, then we will file. You’re going to use it right?

Me: No immediately because it would be competing with my new company, but I’d like to see what I can do with it.

Notre Dame: Then we won’t file.

Me: Then I can have it?

… after more of this …

Notre Dame: We will file it two days before the deadline.

They didn’t want me to have anything free, and so they finally did file in November of 2009. But they also waited until the last day or two so they could have not filed if they changed their minds without giving me time to file myself.

The Patent Application

After two years of not hearing anything, I was informed the patent had gotten a final rejection. I was surprised I didn’t have any other communication or questions in all that time. For some reason though, I found out I could still file an office action. I requested ownership of the Patent, and this started another fun adventure.

First, I had to get Notre Dame to sign off on it, and that required the NSF to sign off as well. My original work was funded by the NSF, they had to release the rights as well as Notre Dame. It sounded simple: register with this website, transfer rights. This simple process took three months, and a few hundred dollars in penalty fees.

The release happened right before the deadline, and my brother and I worked feverishly to fix the patent in our first office action. One thing became clear: the original authors of the patent didn’t understand the technology. The claims were very unclear and were not what the original technology was about. At the time we were doing this, I was also traveling by car from DC back to Pittsburgh, so I stopped multiple times on the side of the road to revise drafts and check wordings. It was very stressful.

The Patent Examiner

My brother got into the good habit of getting patent examiners on the phone. So we did, and we cleared up how much of the claim language was messed up. Below is the markup on the two most egregious claims where the original patent lawyers completely misunderstood the technology.

Then we had to go through two more office actions over the next six months. The second office action was concerning someone else’s work seeming like it was the same as ours, but I was able to explain why it was different. To a non-expert, it was easy to confuse them. The third office action had to do with someone else’s work, and while their work was actually very similar to ours, we bet them by 1 month in priority.

The Grant

We knew it was only a matter of time before it would officially be granted. It was finally granted on my second day at Apple. At that point, I wasn’t sure what I was going to do. The possibility of using that for my own start-up was much stronger months before, and it was the cheapest patent you could get because I didn’t have to pay the initial $8,000 when Notre Dame filed. It also turned out to be my advisor’s first patent as well!

Sadly, I didn’t pay the utility on the patent, and it expired. I was a little sad, but at the same time, it seemed like an investment I could back off of. I’m still not sure where my career is headed, but I don’t think that patent would have been helpful in the next few years. Paying the $400 utility could be better spend on other things.

I’m grateful for the experience because it gave me great insight into the patent process, what a patent means, and how to get things done.

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I’m in love with my Wife, my Kids, Espresso, Data Science, tomatoes, cooking, engineering, talking, family, Paris, and Italy, not necessarily in that order.

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Robert McKeon Aloe

Robert McKeon Aloe

I’m in love with my Wife, my Kids, Espresso, Data Science, tomatoes, cooking, engineering, talking, family, Paris, and Italy, not necessarily in that order.

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