by: Brantley Shumaker – middletonlaw.com/Brantley-shumaker
One of the first steps of starting a business is protecting your intellectual property. This is especially true when a cornerstone of your business is a technology you have created or improved, which may be protectable with a patent. While you can apply for a patent yourself as a pro se applicant, it is worth remembering the old saying (often attributed to Abraham Lincoln) that “He who represents himself has a fool for a client.” But you should be careful when selecting someone to help you with the patent application process, as not all patent service providers are created equal.
Kinds of patent services providers
Aside from pro se applicants, patent attorneys and agents are the only individuals permitted to practice in front of the United States Patent and Trademark Office. These are people with technical backgrounds—think science, engineering, physics, math—who have also passed the Patent Bar, and (presumably) have experience navigating the numerous regulatory hurdles involved with obtaining a patent.
The difference between patent attorneys and agents is that patent attorneys have also graduated from law school and are licensed to practice law in at least one state. Patent practitioners can be found in a variety of settings. Some law firms often referred to as “patent boutiques” may employ only patent practitioners. Other “general practice” law firms may employ patent practitioners alongside other types of lawyers.
Another option is a so-called “invention promotion firm.” These firms offer one-stop shopping for both obtaining patent protection and marketing and promoting the underlying inventions, which may appeal to budget-conscious startups or solo inventors. But before you sign on the dotted line, be sure to heed the Federal Trade Commission’s warning that some of these types of firms, not all of them, “promise to evaluate, develop, patent, and market inventions… and then do little or nothing for their fees.” For example, the FTC recently filed a complaint in Florida against an invention promotion firm called World Patent Marketing Inc., which the FTC alleges is “an invention-promotion scam that has bilked thousands of consumers out of millions of dollars” (World Patent Marketing’s answer to the complaint is due by May 10, 2017).
The problem is so widespread that Congress included provisions in the American Inventor’s Protection Act (1999) that require invention promotion firms to disclose, among other things, how many of its customers have licensed their inventions as a result of the promotor’s services, and how many of those customers received a net financial profit.
Before you choose a patent service provider
Before selecting a patent service provider, you should consider various factors. Perhaps most importantly, what type of patent should you pursue? A “utility” patent offers the broadest (and consequently, most difficult and expensive to obtain) protection over a new and useful process, machine, manufacture, or composition of matter. You can spot utility patents because they end with “claims” that verbally describe the invention.
By contrast, a design patent only protects the ornamental features of a product—these include mostly pictures. Plant patents, which protect new asexually reproduced plants, are less common.
Another important factor to consider is cost: It has been said that “It is unwise to pay too much, but it is worse to pay too little.” Utility patent applications typically cost several thousand dollars to prepare and file. If a patent service provider offers to prepare your “patent application” for a couple thousand dollars, you should make sure they actually will prepare and file a utility application, rather than pull a bait-and-switch by filing a less-expensive design patent application instead.
Additionally, while saving money is often important to new businesses, you generally get what you pay for. Low-budget patent applications, which often save money by forfeiting detail, are often more difficult to navigate through the Patent Office, and tend to be more vulnerable to attack if asserted against an infringer down the road.
Do your research
One last factor to consider are qualifications and reputation of the patent service provider. Obviously any patent service provider you work with should include at least one patent attorney/agent, preferably someone you interact with directly. You also should make sure this patent practitioner has sufficient experience and technical expertise to fully understand your invention. It is entirely reasonable to ask a patent practitioner how many applications they have filed, as well as to ask for samples of issued patents they drafted (which after all are public documents).
Many practitioners are perfectly capable of operating slightly outside of their technology comfort zones for relatively intuitive inventions, but you might not want to leave your complex chemical composition in the hands of someone with mechanical engineering background.
As far as reputation, the Better Business Bureau is a good place to start, as well as the consumer protection agency and the Attorney General in your state. Also, don’t hesitate to ask for references from previous clients. As mentioned above, invention promotion firms are required to disclose how many of their clients made money from licensing promoted inventions. While these requirements don’t apply to law firms and solo practitioners—which generally stick to helping clients obtain patents for inventions and leave the product promoting to marketing experts—you can still ask lawyers for client references.
There are numerous highly-qualified and reputable patent practitioners that can help you through the patent application process. So there is no reason not to be choosy.
Have questions about your organization’s intellectual property?
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