Share on Facebook
Share on Twitter
Share on LinkedIn
By J.D. Houvener
Patent Attorney and Founder

But here today, we have an opportunity to go in-house at Bold because, hey, I’ve run this show, why not? Um, and I wanted to set it up so we have the chance to get to know you, Michael, usually behind the scenes working with inventors. Some, most of them, first-time inventors; some have been at it for a while. And you do the initial consults with them. Um, and, uh, you’ve been doing that now for us for quite a while. I’d love to kind of start with you, Michael, if you don’t mind. Um, and now you can jump in a bit, but we’ll kind of interview Michael. Um, why don’t you give us your background? Give us a story on how you got started with the law and, um, and how you found Bold.

Okay, so, uh, I started out my college career, uh, getting an electrical engineering degree, graduated with that in 1991. Um, one of my, well, my job, my last job right before law school was working at the Knoxville Tennessee Police Department. I was doing their computers, and I kind of got interested in the law through hanging out with cops all day long. Thought that I joined the reserve unit. I was a reserve police officer for about 18 months. We worked at the UT football team. I did not know that, Michael. That’s super cool, man. Yeah, I had my own corner where I directed traffic after all the University of Tennessee football games for everybody. Yeah, you did.

Um, that’s a law school. Well, so I thought I wanted to do criminal law. Um, it took doing one criminal clinic until I realized I did not ever want to do that. And then, uh, my dad had worked in the patent field. He’s a patent agent. He has a PhD in double E, and so he’s like, you should, you already have the technical degree, you should look into patents. So, uh, switched over to that, uh, actually took and passed the patent bar while I was still in law school. So I kind of had that out of the way then. I graduated in 2000, been doing patent prosecution kind of in one way or another ever since then.

So love it for some of those maybe out there attorneys don’t know what patent prosecution is. What’s the difference? Does that mean you’re in court, out of court? That actually means I’m not in court and never have to go to court, right? Yeah, it just means it’s just basically driving the process at the patent office, uh, for a patent application with the patent examiner. Cool, cool. You mind sharing, um, you know, whether what kind of firms you’ve been with over the years and how you ended up finding Bold? Yeah, so I started out at a medium-sized intellectual property, I guess you would say, boutique. I don’t know what size makes it not a boutique, but we, at the time, it was about 45 attorneys, and we had some, you know, pretty large clients, uh, large software companies that I did a lot of work for starting out as an associate. That’s what I kind of cut my teeth on. Uh, went through the whole law firm thing from associate to partner, was there for a total of 12 years, left there in 2012.

And I had my own firm, uh, just a solo firm, just me, from about 2012 to 2018. Uh, was in-house for a little bit of a stint with the startup that didn’t do it as inside time turning essentially, uh, a company had some financial issues, you know, unrelated to patents, went down, you know, essentially went away and it’s in the incarnation it was in. And then, uh, after that, that’s, you know, I was looking around, and that’s how I found Bold. And I’ve been with Bold for, yeah, it was two years in May, so two almost two and a half years. Yeah, awesome.

And, um, and you’ve kind of found a sweet spot, you know, um, where it’s like, hey, you don’t necessarily want to be grinding away, you know, in your 20 of doing this doing patent work necessarily. You’re doing consultations. So what does that entail maybe for someone who’s not familiar with that? What does that mean, and how is that, um, how are you able to speak with clients, right? Well, I think it’s one of the more unusual things about Bold. And actually, the reason that I was drawn to the position was I get on the phone or the video call with a prospective inventor, most of which have never been through the process before. Yeah, um, might be a little bit nervous. Uh, and, you know, we sit down. I have them tend to tell me about their invention. Uh, I’ll run them through the patent process, which usually is pretty detailed because most of them have not had any experience before. Uh, but we’ll go through the different types of patent applications, what’s the content of a patent application, how’s the patent application get created, up through filing. And then I think the more interesting thing for some of them is what happens at the patent office. Well, that’s that, you know, there’s some resources out there on how to draft your own patent application, I think, right? More than how do you deal with a patent examiner at the patent office. That’s really, you know, there’s a pretty big curtain across that. So I’ll try to pull that back for them as well and just talk them through that and what they’re looking at, you know, realistic, what are you looking at end to end time-wise, you know, what kind of financial resources are you gonna have to devote to this and just try to really educate them and make them feel comfortable. So when they make a decision, they feel like they’re informed. I love it.

What would you say, like, you know, the top reasons that they’re worried? Like, what, what are they coming in like scared about or wanting to know the most? A lot of people have, you know, the financial considerations are a big, a big deal for a lot of people. I think it’s just a huge unknown quantity, right? I mean, even if it goes smooth, you’re, you’re looking at, let’s say, two, two and a half years in most cases to work something through the patent office. And it’s a big investment. And then they want to know, I think, too, is whoever they’re talking to, which is me to start out or whoever at Bold, you know, is that person going to be there with them through the process? They’re like, is, are we going to write this patent application, I’m never going to hear from this person again. And I know that’s a concern for a lot of people because I often talk to people that have started out somewhere else and have gotten, you know, pricing information that’s actually pretty unrealistic to do patent applications. They’ve gotten, you know, felt like other attorneys have dropped the ball on them. And so we’ve got to kind of work through some of those things too sometimes. Right, right. What would you say to someone who’s, you know, who’s got an invention, maybe they’re kind of thinking about doing on their own or hiring a firm, and they’re kind of, you know, hesitating on whether to have a consultation, they’re worried about confidentiality? What would you say to someone like that? Uh, confidentiality, I try to tell everyone is not a concern. Uh, most state’s Bar associations have ethical rules that we have to comply with as attorneys, which apply to prospective clients as well. Um, and if we don’t uphold those ethical rules, I mean, they can file a bar complaint up to, you know, potentially getting disbarred. I think all of us like our jobs, and, you know, we don’t want that to happen. Uh, so there’s, there’s some concerns there. Was that, what was the other part of the question? Oh, just, you know, people that are out there that have inventions, and they’re wondering, you know, or not. I think I think if you’ve never done it before, a firm’s definitely the way to go. Um, because I and I’m going to say this from experience because doing these consults, and I do somewhere between, I don’t know, 12 to 20 of them a week, so I have a wide variety of people that I talk to, people that are just starting out, people that have not talked to any attorneys yet, to people that are trying out other firms, to people that try to draft their own provisional or their own non-provisional. Now they’re in a little bit of a jam. They’ve got, if they’ve done a non-provisional, they’re getting a rejection. They don’t know what to do. And so, you know, then we come in and have to try to figure that out. And one thing I will say, a lot of times it can be more expensive to fix what’s going wrong than if you had started out on a, you know, on a good path to start with. Yeah. Um, and so and then the other thing I will say there too, there is, there’s a variety of quality law firms, Bold being one of them, that I think are reasonably but realistically priced, um, to help out small and solo inventors. Uh, if a deal seems too good to be true with respect to the cost for patent drafting, it oftentimes is, and I’ve seen that in my experience with talking to so many people.

Last question here, um, if I want to invest my time and money, you know, speaking with you on a consultation, what am I going to come out of that with? What answers, well, I’m like, what am I going to take away? Uh, you’re gonna get an indication if you’re doing it with me. You’re going to get an indication if I, in my professional opinion, your invention is detailed enough to potentially move to the next stage, which often is going to be a patentability search. Um, and if it’s not, we can talk about that, how can you detail some of those things out. Um, and then you’re going to get a really, really good education on the end-to-end process from patent drafting, how’s the patent application get created, what are the different types of patent applications between design and utility, and then provisional and non-provisional within the utility space. What’s going to happen to you most likely at the patent office or the patent examiner? Uh, it even as detailed as what does a patent examiner doing, you know, what are what are the requirements they’re looking at in a set of claims to see if they meet all the requirements to turn into a patent. That’s really what people want to know. And I feel like if I get off when they’re educated, and it comes around, hey, do I want to do this or not? They’re making a decision based on the facts that are gonna, they’re gonna be looking at on how to go forward. Awesome. Thank you, Michael.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at https://boldip.com/contact/