Over the years I have written quite a bit about invention scams, and in fact one of my most popular pages is The Truth About Invention Promotion Companies, which typically comes up in the top few sites in Google and Yahoo when a search is done for invention promotion companies. It is sadly true that there are a lot of fraudulent operators in the invention and patent market, but one of the operators that I have had my eye on for some time is not a true invention promotion or scam company, but rather a patent attorney who gives all of the rest of us a bad name. Beware Michael Kroll and!

I recently came across US Patent No. 7,389,739, which was issued on June 24, 2008, and is entitled Tailgate position indication marker. This patent was obtained for the inventor by Michael Kroll, and is listed as one of his successful patents on his website, Many frequent readers of know that I have taught patent application and patent claim drafting courses now for over 10 years. As I read through the ‘739 patent I was appalled by the quality. Had a student of mine submitted this for a grade it would have received an F. I am not going to opine one way or another about whether this invention should have been patented, but this patent is surely evidence that not all patents are created equally. What is perhaps most sad is that some independent inventor spent a lot of money obtaining this poorly written patent. Maybe what is most sad of all is that the US Patent Office continues to allow Kroll to represent unsuspecting clients.

First, in the Background of the Invention the term “prior art” is used to describe prior inventions that relate to the subject matter of the invention. The term “prior art” should never be used in a patent applciation, and good patent attorneys simply don’t do this. You never want to admit that something is prior art in a patent application. This is just plain sloppy.

Also in the Background section, paragraph after paragraph lists various US Patents that are considered by the applicant to be prior art. Not only are these admitted to being prior art, but they are described in detail as to what each patent teaches. I know that the book Patent It Yourself suggests that you do this, but just because it is suggested in a book doesn’t make it right. In fact, no patent attorney that I know would ever draft like this because of the negative consequences that come along with such admissions.

Then at the end of the Background this is what is said:

While these tailgate indication marker devices may be suitable for the purposes for which they were designed, they would not be as suitable for the purposes of the present invention, as hereinafter described.

What should be explained at this section of the patent application is what is missing, lacking, inferior or undesirable about those inventions that make up the prior art. If you cannot explain what is wrong with the prior art in 1 to 3 sentences then you really ought to question whether you have an invention worth patenting.

Lest you think this is just one patent attorney (namely me) criticizing and second guessing another patent attorney (namely Michael Kroll), it is widely known that Attorney Kroll is ethically challenged and the Patent Office and disciplinary authorities have known about his shenanigans for some time. Specifically, here is a list of some of the more widely known issues Attorney Kroll has had:

  1. On February 25, 2004, the United States Patent & Trademark Office suspended Attorney Kroll for three years. The suspension was then stayed provided that Kroll refunded half of the attorneys fees paid by 75 inventors he represented and otherwise complied with the terms of a settlement agreement. See Notice of Suspension.
  2. The Final Order issued by the Patent Office in the above referenced suspension also stated that Kroll must obtain client signatures on documents that require the client’s signature, identify and fix all defective signatures in pending patent applications, charge and collect reasonable fees and clearly articulate the specific services covered by the specific fees charged.
  3. In approximately 1990, Elly Ildiko Elias conceived of the idea of making a “LOVE BED” for dogs and puppies. As described in a letter she later wrote to her Congressman, she contacted Kroll through the Yellow Pages, and after putting “faith and trust in [his] advertisement,” paid him $8425 to obtain a patent claiming her invention. On August 28, 1990, Kroll filed a patent application on her behalf, which, according to Elias, disclosed that the LOVE BED could be made of wood, with mattress, bed sheets, narrow pillow, with pillow cases, and that the LOVE BED could come in different sizes, and would be a great gift idea. Approximately one year later, Elias was looking through an L.L. Bean Inc. catalogue, and saw a dog bed for sale, allegedly very similar to the one described in her patent application. When Elias called Kroll to report this possible act of infringement, he was “not very nice,” and he allegedly rebuffed her subsequent calls inquiring about the progress of her patent application, stating only that “it will take a very long time.” It was not until the summer of 1992, when Elias contacted another attorney to investigate the matter, that Kroll disclosed to her that the PTO actually had rejected her application in July 1991. Upset over Kroll’s failure to inform her promptly of the rejection, Elias wrote a letter to her Congressman, who forwarded the complaint to the Grievance Committee. The Grievance Committee informed Kroll of the matter and dismissed the complaint, subject to Kroll’s future compliance with his professional responsibilities.
  4. In January 1993, Charles Strieber hired Kroll to file a patent application on his behalf. For approximately $21,000, Kroll prepared several dozen drawings, but never finalized the application. In April 1995, Strieber terminated Kroll’s representation, and requested by phone an accounting of his payments and the return of his files. On August 11, 1995, Strieber wrote Kroll a letter (signed, “Zombies for Ever, Charles Strieber”), repeating his request. On September 16, 1996, his request still unfulfilled, Strieber filed a complaint with the Grievance Committee.
  5. On March 2, 1996, Vincent Davi gave Kroll his credit card number and authorized a charge of $825.00 to initiate a patent application. Kroll charged $850.00 to the card on March 2, 1996, an additional $800.00 on March 8, 1996, and a further $1850.00 on March 10, 1996. After repeatedly calling Kroll, insisting that he credit his account for the overcharges, Davi closed his credit card account, initiated a fraud investigation, and filed a complaint with the Grievance Committee.

Several years ago, I also had the opportunity to get in touch with Attorney Kroll. I had been contacted by a TV series that wanted to profile inventions by independent inventors and asked if I could help them locate a few that were interesting and patented. I did some searching and found one that looked interesting. The attorney of record was Michael Kroll, so I contacted him to try and get in touch with his client. To make a long story short, after a number of telephone calls and e-mails I gave up. Why a patent attorney would not want to have a client’s invention profiled on TV is beyond me, but that just seems to fit in with all the other stories about


Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of

Join the Discussion

3 comments so far.

  • [Avatar for Ralph]
    May 8, 2009 10:08 pm

    Many years ago I subscribed to your advice about not describing anything as “prior art,” and depending on the invention, sometimes agree with this.

    However, I have to agree with Robert when you are dealing with a crowded field and there is art that is close. In these fields, narrow claims can often be very valuable. If you deal with the art in the background, by discussing it and specifically distinguishing it, you can preempt the examiner, and they may agree with your distinguishing points, and hence not even address that art.

    You must submit those references anyway in an IDS, so why not try and take them off the table right away?

    That being said, I totally agree with you regarding the invention scam companies. Has anyone done a survey to determine whether the clientele of certain patent attorneys and agents comes from these ISCs? I have been through several horror stories with inventors who first went to an invention scam company, and paid 15K or more for a design patent, when their idea could have, and likely should have, been filed as a utility patent.

  • [Avatar for Gene Quinn]
    Gene Quinn
    January 21, 2009 02:29 pm


    You are entitled to your opinion, but you are simply wrong on this one. Once you admit something is prior art then it is prior art, end of story. A good patent attorney or agent will never admit anything is prior art or make any representations about other patented inventions unless until it is absolutely necessary in order to distinguish the applicants invention to overcome a rejection by an examiner. You do not have to admit that any particular device or invention is “prior art” in order to distinguish what your client’s invention is. In my opinion, describing in detail what the prior art is and does presents signficant risks without any potential benefits. It has always struck me as the lazy way to draft patent applications.

    I am not advocating playing games with examiners, and I do not do that myself. Neverthless, no application should be a blind dissertation on the prior art because there is absolutely no way to know all of the prior art that will be capable of being used against an application. You have to know that applicatons remain secret and unpublished for 18 months, so you can never know what else is lurking that may present problems. The fear is that you will say that invention A is prior art to the invention but that the applicants invention is unique because of limitation K. If the examiner can find limitation K in the prior art, then you have created your own obviousness rejection and it is going to be enormously difficult to get around that type of rejection. So saying that A is prior art without knowing what the examiner has found is reckless.

    I know that the book Patent it Yourself says that you should list the prior art and describe what it says, and I know a lot of patent agents do just that and some inexperienced or bad patent attorneys do the same thing. The truth of the matter is that referring to anything as prior art will only create problems and will not at all help the patent applicant. So why do it, particularly when there are all kinds of ways to distinguish the prior art without using the term “prior art.” You see, the trouble is that the term “prior art” is a legal conclusion.

    Rather than describing what the prior art is the proper way to draft an application is to explain the problems and insufficiencies of the prior art. The invention subject to the applicaton should directly address these problems and insufficiencies. This leaves the attorney open to make whatever factual arguments are necessary to distinguish the invention over the prior art found by the examiner. There is simply no reason to lock yourself into factual positions before seeing the examiner’s rejections. If you do lock yourself in then you are creating needless problems for your client and potentially narrowing the scope of the patent claims for no reason.


  • [Avatar for robertplattbell]
    January 21, 2009 02:07 pm

    “First, in the Background of the Invention the term “prior art” is used to describe prior inventions that relate to the subject matter of the invention. The term “prior art” should never be used in a patent applciation, and good patent attorneys simply don’t do this. You never want to admit that something is prior art in a patent application. This is just plain sloppy.”

    I strongly disagree with this comment on Patent Drafting technique. There is nothing wrong with admitting that a Patent with an effective date a decade before yours is “Prior Art”. In fact, there is nothing wrong with admitting things you KNOW to be Prior Art as “Prior Art”. in fact, the Law and the Rules compell you to submit Prior Art to the Patent Office and also not to submit claims directed to Prior Art. So I fail to see the harm in admitting a reference is in fact “prior art” to an application, when in fact, it clearly IS PRIOR ART.

    Being cute with the Examiner by not admitting anything could possibly be “Prior Art” to your invention can backfire in a big way – particularly in crowded arts where the standard of novelty is thin. Better to admit up front there is a lot of art out there and THEN distinguish why your invention is better than all that, than to try to argue your invention is totally novel, when the Examiner can see six similar refernces in your own IDS.

    The point of the BACKGROUND OF THE INVENTION is to present a survey of the Prior Art to familiarize the Examiner (and later a jury) as to what had been tried before. If you set up this section right, by pointing out the DEFICIENCIES in the Prior Art, then in the SUMMARY section, you can bat it out of the ballpark by showing how your client’s invention overcomes all the deficiencies of the PRIOR ART and thus is NOVEL and NON-OBVIOUS. By telling the story of your client’s invention, you put the Examiner in a mood to allow it and a jury in a mood to uphold it.

    This is a FAR BETTER approach than pretending that NOTHING is relevant Prior Art to your invention and then trying to argue that your invention is totally novel. Not only is it disingenuous, it is likley to backfire with the Examiner. ALL inventions are based on improvements over Prior Art refernces – or are a combination of Prior Art devices. (The only exception I can think of is Einstein’s general theory of relativity, but few inventors are Einsteins).

    Frankly, your comment illustrates the major problem with the legal system today – lawyers are trained to argue every point, even ones they know to be false or very, very weak. This “scortched earth” approach to legal argument does not sit well with Examiners or Juries, however. If they can see you are lying about some trivial point, then they will not be inclined to agree with you over some more important point. And that more important point is the one that wins your case.

    You are better off admitting what is clearly Prior Art (a reference with an effective date more than one year prior to your filing date is “Prior Art” under 35 USC 102(b), whether you admit it or not.) and then arguing the point (or points) of novelty than trying to be coy and pretend your invention is totally novel.

    I have no comment on Mr. Kroll or the application in question. If you are shopping for an Attorney, get references. Picking one out of the yellow pages (or from a website) is probably the worst way to go about it.