Posts Tagged: "Patent Attorneys"

With all of this in mind, like many others I tell inventors that if they are going to do it themselves they should consider getting a patent attorney to review their application before they file. Having said that, it is unrealistic to believe that a patent attorney can review what you have done in 1 hour or less. Furthermore, it is foolish to believe that an application reviewed for 1 hour or less will result in a work product that will be as good as if it were drafted by the patent attorney in the first place. If you want to do it yourself and have a qualified, experienced patent attorney review your work you should budget at least 6 to 10 hours of their time to review everything, critique what you have done and provide feedback and guidance for you to continue to build upon.

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.

In Patent Strategy I explained that a reasonable quote for an office action response is $2,000. Certainly it can be more depending upon the technology, but if you were going to poll patent practitioners from patent attorneys to patent agents I suspect you would come out with something close to a $2,000 average. This prompted one patent examiner to comment: “You said in this article that practitioners make $2,000 per response on average. How much do examiners make per response? Probably a fourth or a third of that. I mean I try to do the best job I can but do you really expect all examiners who get paid a fourth or a third of what you make to perform at the level that you do?”

With the economy still unsettled, extravagant gifts aren’t likely in many budgets. That means creativity will reign supreme. With a little extra thought you can give a really cool gift to that special someone, whether they are a patent attorney, inventor, law student or computer geek. With that in mind, below are some suggestions in order to help you find some fun, thoughtful and appropriately cool gifts for the geek in your life. The best part is the price means that one or more of these items should fit almost any budget.

As an aside, and somewhat related to the boring concept, is the idea that intellectual property practitioners are all basement-dwelling nerds. OK, maybe we’re a little nerdy in some ways, but I swear I do not live in a basement, my summer reading did not include the cheat guide to World of Warcraft, and I have NEVER been to Comicon. So what if I have the blueprints to the Millennium Falcon on my office wall and my favorite TV show is “How it’s Made”? You gotta admit some of the stuff we get to do and see in our professional lives is pretty freaking cool. The seediest infringement cases. The bleedingest edge of technology. The next rival to the power of McDonald’s logo or Coca-Cola trade secret. I wear my nerd moniker proudly.

The United States Patent Office is now offering the patent bar examination in electronic format, and that means that the way you study for the exam needs to change. In the past test takers were permitted to bring in with them any materials they wanted except for old exam questions. The ability to bring practically anything into the examination lead to people tabbing the Manual of Patent Examining Procedures, creating detailed and easy to use outlines, and bringing easy to follow flow charts and tables. Gone are these days, but when you do take the examination you will be provided with an electronic copy of the Manual of Patent Examining Procedures, so at least a part of your study needs to be centered around familiarizing yourself with search techniques and strategies that have a chance of success come exam day.

The Patent Bar Examination is a daunting exam, and one that has gotten a bit more difficult recently as a result of newly testable material coming online. The exam has never been easy, and likely never will be easy, but promises to get even harder in the likely event that patent reform (i.e., the America Invents Act) passes. The America Invents Act will dramatically change the fundamental underpinnings of patentability, as well as add a variety of new processes and procedures. The amount you will need to know once the America Invents Act gets tested will go up dramatically, so if you have been thinking about taking the exam it is probably a good idea to take it sooner rather than later.

Louis Foreman, the producer of the Emmy Award winning PBS television show Everyday Edisons and the publisher of Inventors Digest, announced in April 2011 that he was launching of a $25 million Innovation Fund. Phase 1 of the search for inventions for the Fund to invest in was completed in mid-June 2011. Phase 2 of the search for inventions and ideas has just begun and will run through Monday, September 12th, 2011. He tells me that the Fund is off to a great start and has received some very innovative technologies as part of the first wave.

Wherever we go we always get a number of individuals who are currently in law school, have recently graduated law school or are engineers or scientists looking to change careers. During one of the breaks between sessions on day 1 here in San Francisco one of the students taking the course asked me a question that we receive quite a lot, which is this: once I pass the exam how do I learn to actually do this? Like so many things in life experience is the best teacher, but increasingly finding a job without some experience can be extremely difficult.

A representation relationship is just that, a relationship. Who you work with is an important decision and patent attorneys operate differently. At the end of the day what you should be looking for is someone who is competent and who you connect with on some level. In my opinion, when representation is most successful there is a good working relationship between the attorney and inventor, and that requires a certain comfort level and familiarity. Try and work with someone in a symbiotic way. No matter how good the inventor, the invention or the patent attorney, an “oil and water” characteristic to the relationship cannot result in the best work product or the most beneficial ultimate outcome.

What I can report is that the USPTO did, in fact, meet the April 12, 2011, deadline and the newly testable material is being tested as advertised. The USPTO is also continuing to update the exam through a rigorous process of writing, vetting, and testing new questions. In addition to covering long-standing areas of patent practice, questions are being added to the database that are directed to new and emerging trends in the law and evolving rules of procedure. The subject matter covered by the exam as a whole will continue to test rules, laws and regulations that have been in existence for years, but will also increasingly include questions testing the changes.

Despite the gathering storm, some businesses would prefer to pretend that patent infringement is not a problem for them and they won’t be sued. The graph below shows that since 1980 the number of patent lawsuits filed has only gone up, with a record number (3,301) being filed in 2010. Add the frequency of the “dime a dozen” threatening letters sent by those seeking to extract licensing payments to the number of lawsuits filed and you can readily see that patent infringement litigation, and the associated threats thereof, are a growth industry. Here is what you need to know when you get sued or get that threatening letter.

To help what might be the best ideas and inventions percolate to the top Foreman has created what he refers to as a “Patent Attorney Referral Program.” This program is designed to benefit patent attorneys and patent agents whose clients submit innovative ideas and concepts. This isn’t one of those unethical referral programs though, so no worries there. If a client of a patent attorney or patent agent is selected and accepts the offer of assistance from the Innovation Fund then the patent attorney or patent agent representing that inventor will be retained by the Innovation Fund to provide the legal services required to pursue patent rights.

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.

It takes time to prepare a detailed written disclosure that will support any number of claims, and there is just no way to rush it. Inventors and entrepreneurs intuitively know this, but they get lured into believing that what they get for $1,400 is just as good as what they would get if they paid $8,000, which is unrealistic of course. You cannot fall for what you want to hear when you deep down know it makes no sense. If you aren’t convinced ask yourself this: when you were in school and you had to write a paper for a grade, was the resulting paper better if you spent more time or less time working on the project? The reality is the more time you have to spend the better the work product.