LegalZoom Patent Review Service Ends
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Written by Gene Quinn President & Founder of IPWatchdog, Inc. Patent Attorney, Reg. No. 44,294 Zies, Widerman & Malek E-mail | Blog | Twitter | LinkedIn Posted: Sep 10, 2008 @ 3:37 pm 
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As I have previously discussed in several posts (see PTO Kills Invention Promotion and Patent Self-Help Now More Difficult), on August 14, 2008, the United States Patent & Trademark Office profoundly changed the rules that govern what 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/assistance 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 merely 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.
The new rules require, in addition, that all patent application related work be done by or under the direct supervision of a patent attorney. If the patent attorney or agent decides a third party (for drawings or searching) 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. But, a service model that provides an assisted self-help system can, in our judgment, no longer be used going forward without full hands-on administration of such a system by a USPTO registered practitioner.
Over the past several weeks, since the announcement of the rules that will go into effect on September 15, 2008, we have been in talks with LegalZoom to attempt to create a workable self-help process that would be in compliance with the new rules and allow us to continue with some type of collaborative arrangement. Unfortunately, we have been unable to reach agreement on a workable process under the new rules. As a result, we have been obliged to end our cooperative arrangement with LegalZoom effective immediately. This is a shame in view of the many happy customers that were able to take advantage of the service in the past,. Nevertheless, we do understand and support the rationale behind the new Patent Office rules because they should finally put an end to unscrupulous invention companies. The down side, however, is that legitimate inventor assistance services will find it extremely difficult to operate under the new rules. A new efficient, cost-effective, limited assistance, self-help model may be able to exist but, for now at least, the scope and substance of such a self-help service remains unclear.
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Eugene R. Quinn, Jr. B.S. in Electrical Engineering, Rutgers University View Articles Authored by Gene Quinn |
About the Author
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Eugene R. Quinn, Jr.
President & Founder of IPWatchdog, Inc. US Patent Attorney (Reg. No. 44,294) Zies, Widerman & Malek B.S. in Electrical Engineering, Rutgers University J.D., Franklin Pierce Law Center L.L.M. in Intellectual Property, Franklin Pierce Law Center Send me an e-mail |
Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Known by many as “The IPWatchdog,” Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.
Here’s an interesting scenario – An inventor hires a patent attorney and provides the patent attorney with a draft application that has been written. Thereafter, the patent attorney makes revisions to the draft application and gives it back to the inventor to review. The inventor then fires the patent attorney and files the application himself/herself. Has the patent attorney somehow violated the new rules? I certainly hope not!
Mark-
I can’t imagine in this scenario that the attorney has violated the new rules. As far as I can tell the new rules do not actually require the attorney to file the application on behalf of an inventor they give assistance to, but that is the way OED is reading the rules, and for us that is all that really matters because no one wants the ethics police knocking!
I am troubled by the fact that it is harder now to offer advice and assistance without full blown representation. I understand why, because so many inventors don’t understand the pitfalls. Nevertheless, I would say that if you work with an inventor to help them prepare an application and then they ultimately fire you or decide not to proceed then I can’t see how the PTO could force you to proceed. The client is the master, and we cannot ethically do things to force clients to stay with us.
I think the problem is when you give advice and assistance without ever having an intention to file. I have done this in the past, but won’t be doing it moving forward. In fact, the United Inventors Association has for years advised do-it-yourself type folks to seek just this service, so there is a clear advantage to having this service as long as it is appropriate and not misleading. But until the PTO can get the invention scams in line I think giving assistance will be more difficult.
What I would suggest is entering into an agreement to assist in the drafting and filing of an application. If the inventor ultimately doesn’t go through with filing or fires you then you should be in the clear.
-Gene
Thanks Gene – I figured that attorneys would be in the clear in this situation, but it just points out that the PTO fails to look at many scenarios when they pass down their rules and interpretations of those rules. I think many patent attorneys will agree that this is not the first time that certain rules have not been thought all the way through. As you said, the positive note is that the invention scams have taken a hit.
I have spoken with a patent attorney in the past for an invention of mine that I was looking to get patented. After finding out that my idea was patentable, I was told that the typical patent can cost 15 to 20 thousand dollars in attorney fees. Not having that kind of money is the reason I believed that a company like “Legal Zoom” might offer a lower cost for filing my idea. If Legal Zoom isn’t the way to go due to these new laws, what can I do to accomplish the patent process? Are there less expensive ways available that are safe? Of course I do not want to be scammed so that Is why I am doing my due diligence regarding companies like Legal Zoom.