LegalZoom Patent Review Service Ends

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.

Eugene R. Quinn, Jr. Founder & President of IPWatchdog, Inc. US Patent Attorney (Reg. No. 44,294) B.S. in Electrical Engineering, Rutgers University J.D., Franklin Pierce Law Center L.L.M. in Intellectual Property, Franklin Pierce Law Center View Articles Authored by Gene Quinn View my Blog posts