Patent Self Help Now More Difficult

Written by Gene Quinn
Posted: September 5, 2008 @ 5:01 pm

On August 14, 2008, the United States Patent & Trademark Office decided to profoundly changed the rules that govern patent attorneys and patent agents may do when working with independent inventors who are seeking advice but not full representation. In a nutshell, the Patent Office has decided that patent attorneys and agents can no longer provide limited consulting to inventors, but rather if an attorney or agent provides specific advice with respect to a patent application the attorney or agent giving the advice must also file the application on behalf of the inventor. The importance of this is that inventors will no longer be able to seek the advice of patent attorneys or agents to review what they have done on their own. These new rules will go into effect on September 15, 2008. For more on the rules see PTO Kills Invention Submission Business.

The reason the Patent Office decided to make this change was to attempt to once and for all put an end to the notorious invention submission and promotion scams that have plagued inventors for years. In fact, unscrupulous invention scams have cost inventors $10 billion per year, so it is hard to argue with the intent of what the Patent Office is doing, but unfortunately in order to really put an end to the invention submission scams the Patent Office has made it impossible for legitimate professionals to offer assistance to inventors who simply cannot afford the expense of hiring a patent attorney to do the work for them.

These new rules will put an end to invention scams because almost universally invention scams are characterized by an invention promoter or invention submission company working directly with an inventor to assist in obtaining patent protection. They also promise to work to help the inventor commercialize the invention and identfy and exploit licensing opportunities, but the first step is almost always to conduct a patent search and then file a patent application. Many patent attorneys have worked in concert with invention scams, allowing the invention companies to draft the applications which were reviewed and filed by attorneys. Inventors would routinely pay $8,000 to $12,000 to get an application filed and would anticipate that the money would go to legal fees. Typically the patent attorney would receive a few hundred dollars for a quick glance and then for filing the application, which meant inventors were not getting professional legal assistance although that is what they thought they were paying for.

The new rules require all patent application work to be done by or under the direct supervision of a patent attorney. If the patent attorney or agent decides a third party should be brought in then that is fine, but it cannot operate the other way around. So patent attorneys and agents can still outsource drawings and patent searches, which is fairly typical in the industry.

What is less clear on the face of the rules is how the Patent Office plans on interpreting them. We have been in direct contact with the Patent Office and have been told by a high ranking Patent Office Official that if a patent attorney or agent provides any assistance in drafting an application then the patent attorney or agent must be the one who files the application. This will allow the Patent Office to monitor quality and make patent attorneys and agents take responsibility for the advice they are giving, but it will also make it impossible to review a draft application and provide feedback and guidance that an inventor can act on themselves.

Through my law firm – White + Quinn – we can, however, work directly with inventors who are interested in filing patent applications, whether they be provisional patent applications or nonprovisional utlity patent applications. We can also provide consulting services of a general nature. So if you are still interested in doing the work yourself to save money we can answer questions and give you generalized information about what you need to do and how it should be done.

If you are interested in my assistance, or if you would like to learn more, please contact me and I will get back to you as soon as possible.