Eric Giler

Navigating the patent process can often be challenging and filled with subtleties and nuances for the entrepreneur-inventor, especially for first-time filers. Having a trusted patent attorney who can not only help guide you through the process, but help inventors learn about it is truly invaluable to new entrepreneur-inventors. However, for many inventors, understanding what patent attorneys do and why they do it does not always come as second nature. Over the course of my career as both an inventor and entrepreneur, I’ve had the pleasure of working with many excellent patent attorneys on my companies’ patent filings. The best attorneys I’ve worked with have played an integral role in educating me and my colleagues on the patenting process, what makes a good specification and claim and how infringement lawsuits work should we ever pursue them. I’ve also learned that inventors and patent attorneys often have different visions for what the final patent will look like. As someone who’s been through the process a few times now, here are the four things patent attorneys taught me that I think would be useful to entrepreneur-inventor clients.

In the wake of fraudulent IP applications from foreign nations—namely China—the United States has recently enacted or called for policies that require foreign entities to complete more thorough IP applications. For instance, in August, we heard about the new USPTO rule requiring all foreign trademark applicants and registrants to be represented by a licensed U.S. attorney when filing. According to the USPTO website, this is intended to “increase USPTO customer compliance with U.S. trademark law and USPTO regulations, improve the accuracy of trademark submissions to the USPTO and safeguard the integrity of the U.S. trademark register.” And then just last week, news broke that the USPTO had issued new instructions requiring trademark examiners to ask applicants for proof of legal residence in the United States to enforce this new rule (note: these instructions have since been rolled back). The reasoning behind these legislations, or proposed legislations, seems to be that by making the IP application process more involved and more challenging, the USPTO will limit the number of foreign IP applications received—and therefore the number of fraudulent applications received. This will undoubtedly work, but is it the right approach?