As you might be able to imagine, I get quite a bit of e-mail. Much of the e-mail I get is from inventors and small businesses who are looking for representation, or from those who are seeking to ask some questions to help point them in the right direction. Over the years the one thing that has probably amazed me most is that those who contact me for assistance or advice frequently ask the same questions and present with the same stories, although not the same inventions or technologies. So I thought it might be worthwhile to write about the most common misconceptions in the inventor community.
First, I don’t want this article to come off as suggesting that I don’t get good business from the Internet. At this point nearly all of the legal work I do comes as a result, in one shape or form, from my activities by and through IPWatchdog.com. But in addition to writing about the inside baseball of the patent world I also write various informational articles and tutorials aimed at an audience with a variety of levels of understanding. So some of those who present for assistance of one kind or another are best described as “newbies.”
Let me start by saying there is absolutely nothing wrong with newbies. At one time or another we have all been new to something and let’s face it, this patent and innovation stuff isn’t exactly the most intuitive undertaking you could ever get involved with. In fact, there is little intuitive about patents and patent law despite the sometimes misleading names for concepts, such as “first to invent.” Oh if it were only that simple!One of the problems created by true newbies, particularly those who have not done any reading or tried to at least bring themselves up to speed to some extent, is that they present in a way that makes established patent attorneys and law firms want to run and hide. Whether it is unrealistic expectations, wanting a confidentiality agreement signed because they want to be able to sue you if things go bad, or wanting representation on a contingency basis, these things scream PROBLEM to most patent attorneys, thereby foreclosing a possible representation relationship in many cases.
I think I have nearly heard it all, and I try whenever possible to educate inventors, even those who are being unrealistic in one way or another. So the goal here is to educate, not to make fun of. In any event, here are the top X things that I hear from newbie inventors that would make most patent attorneys run.
1. I need you to sign a Confidentiality Agreement
Probably the most frequent thing I get asked that demonstrates I am dealing with a newbie is relating to the signing of a confidentiality agreement. Don’t get me wrong, I don’t mind being asked the question. It shows that the inventor understands the need to keep the invention confidential, with is a great start.
Patent attorneys patent agents are required to maintain information they obtain confidential. This requirement applied not only to those who are clients (i.e., have signed up as a client with a representation agreement), but it also applies to prospective clients. A prospective client is anyone who comes to a patent attorney or patent agent seeking help, assistance, advice or direction on a legal matter. This legal requirement, embodied in 37 C.F.R. 10.57, is stronger than any confidentiality agreement.
The quickest way to get me to run away from you is to say something like, “but I know of attorneys that steal their clients ideas and I need to protect myself,” or “but if you really like my idea you could take it and I wouldn’t be able to sue you.” Failure to understand the sanctity of the attorney-client confidential relationship and worry about suing me if things go badly is no way to start a relationship.
2. I need your help but I don’t have any money
I hear all kinds of variations on this, but lately I have been hearing this outright more and more frequently. I suspect it has to do with the Great Recession and money being tight. That is certainly understandable and I wish our leaders would get a clue and pursue economic policies aimed at getting the economy moving. That being said, if you don’t have any money there is little or nothing that anyone can do to help you get a patent. Even if you are going to represent yourself the filing fees and other fees due to the Patent Office during the time between filing and a patent being issued will add up to over $1,500 at a minimum.
Attorneys don’t sell products, they sell services. That means time is money. It also means that we just don’t have time to work for those who cannot pay us, otherwise we would be in the same situation; namely not being able to pay for what we want and need. Additionally, if funding is so tight that you have little or no money you really should ask yourself whether pursuing a patent is at all wise.
I’m not saying that it isn’t wise, but inventing in general can be expensive, and getting a patent can also be expensive. But there are many more expenses that lie in front of you regardless of which path you choose, even if you decide to license your invention. You will need to put together sell sheets, cool 3D graphics to entice a licensee and a lot of time and energy. So I’m not saying you shouldn’t be in the game, but if you are broke you need to seriously ask yourself the question about whether this is right for you currently.
3. I want to let you in on my great idea
This one is not exactly what I hear most of the time, but I do actually hear it presented just like that more frequently than you might expect. I am going to bundle these all together and refer to this as the person seeking contingency representation. A contingency representation scenario is when an attorney works for a percentage of what monies are obtained. This NEVER happens with patent procurement.
We have all seen the TV commercials from the “have you been injured? would you like to be injured” crowd. They explain the attorney doesn’t get paid unless you get paid, so many believe that all attorneys work on a contingency basis. That is not at all true. Having spent time as a litigator I know exactly what goes into taking a case on a contingency basis and you only take cases on a contingency when you know beyond a shadow of a doubt that there WILL be money ACTUALLY recovered. That is why it is perfect for personal injury attorneys. They can tell with great certainty, if they are being honest, if money will be recovered. So you need to be 100% sure when you take the case that money will be obtained because as it turns out cases can and do take on a life of their own and even when you are 100% certain at the outset you make mistakes. If you are not 100% certain at the beginning you pretty much never recover anything.
Inventors hate hearing this, but the invention part is the easiest part of the process. The next easiest part of the process is the patent portion. Invention is “easy” because it is the only step you can completely control yourself. The patent process cannot be controlled because ultimately you have a patent examiner you need to please, but you have complete ability to define the invention and guide the process to a positive outcome, which can be achieved in a high percentage of cases if the attorney is familiar with the technology and the client is willing to pay enough to do the work actually required. After the invention and patent process there are all kinds of hurdles to money showing up and being available. You need to find a licensee and get the licensee to part with money, or you need to build the invention or implement the invention and wait for consumers to start buying. There are costs all along the way, and even if there is an extremely high likelihood the invention will be successful the time horizon to money (i.e., the time it takes for the first dollar of profit) is too far in the future and too speculative for any contingency representation agreement to make sense at all for what is a lot of work required to obtain a patent.
Additionally, in my experience, inventors who have no skin in the game typically fold like a pop-tent the first time there is a glitch. Yes, I do have experience with these in the patent space, foolishly having tried them. I think a lot of attorneys have foolishly tried them, whether it was for a friend or family member or what have you. I have never made a dime and I know of no patent attorney or patent agent who has ever made a dime on a contingency deal. So you simply cannot realistically expect a patent attorney or patent agent to represent you with respect to your patent work on a contingency basis.
Returning more directly to the “I want to let you in on it” more directly, after I explain the above (and yes, I almost always do explain the above to give people some information that is useful) I hear, “but my invention is fabulous and you won’t have it without me, you need me.” This generally provokes they “you need to get real” response. Inventions and ideas are all over the place. Over my career I have been amazed at how many people are creative in one manner or another. There are truly wonderful entrepreneurs and highly creative inventors out there, more so than most people would imagine. This provokes the “get real” response because it shows a heightened and unrealistic sense of self importance, not a good trait in a client.
4. No one would ever have come up with my invention
Picking up on the overblown self importance theme, over the years I have had many discussions with inventors who truly believe that they are unique in the true sense of that word — their invention is one of a kind. There is no need to do a patent search because the only way that anyone would have come up with it is if they had been spying on them and copied what they were doing. Okay, I exaggerate a little here, but if I hear any kind of story about how people are following the inventor or something like that I just politely go my own way. But the inventor who presents thinking that there is no way that anyone else could have ever come up with their invention is nearly as quirky.
The reality is that the laws of physics and chemistry, and more broadly speaking the laws of nature, are not constant. We learn more and more about the world year after year, but at any given time our understanding of the world around us and what we believe are immutable laws funnel any solution to a particular problem into a certain window. Only the most pioneering inventions (think Einstein) break that mold. Given that Einstein’s are few and far between, that means that for any particular problem there are any number of people who have observed the problem and are working to solve it, and those solutions will all be within a certain degree of one another, sometimes identical.
It is great to show pride in your invention, but what makes a true inventor is knowledge that others are creative themselves and likely to be working in the same space. Innovators seek to identify what others have done and move the envelope forward. Those who re-invent are not innovators, they are re-inventors, and you cannot get a patent if you are re-inventor. Worse yet, you may have an invention there but because you don’t look at what others have done you articulate the invention in a way that leaves out sufficient discussion of that part of the invention that could have been patented.
5. I have decided to hire Attorney X and I need your advice on how to proceed
You might find this one hard to believe, but I can’t tell you how many times over the last 3 months I have heard this. What I want to say is “you have to be kidding me, right?” Here I am, a patent attorney, and they are asking me to provide free guidance and information about what to expect when entering into a representation agreement with a different attorney? Whether they need a confidentiality agreement, or what information they should bring with them to the meeting. Yikes! I want to be helpful, and while I don’t just dispense free legal advice I do try and at least point everyone in the right direction with some useful information, but this really confuses me.
If you are going to hire a different attorney I think it is borderline ridiculous to expect another attorney, who you have just told won’t get your business, to help you for free.