Category: Online Patent Attorney

You can prepare and file your own patent application for your invention (just like you can represent yourself in court). But remember, there is an old saying that goes . . . “he who represents himself, has a fool for his attorney.” There are some things that are best left to the professional.

Protecting your invention is no simple task. First, you need to understand how to write a patent application that fully describes your invention and alternatives (to prevent “knock-offs”). You also need to show your invention in drawings.

Most important, you must claim your invention. The claims define the legal boundaries of your invention. If your claims are too broad, the examiner at the Patent Office will reject your patent application. If your claims are too narrow, your competitors will be able to easily design around your invention and your patent application won’t be worth the paper its written on.

Drafting claims takes experience. Patent attorneys work for years learning how to draft claims that are broad enough to protect inventions, without being so broad that the Patent Office won’t issue a patent for the invention.

Think twice before deciding to go it alone. Do you really have the expertise to write a quality patent application yourself? Who will you turn to when your patent application gets rejected by the Patent Office? Will you really save that much money compared with using a qualified patent attorney?

I am often asked “Should I use a nondisclosure agreement (NDA) to disclose my invention?”

A nondisclosure agreement (NDA), or confidentiality agreement (CA) as NDAs are sometimes called, is exactly what it sounds like. An agreement between two or more parties not to disclose information that one or more of the other parties provides to them. Inventors commonly use nondisclosure agreements so that the inventor can show his or her invention to somebody else without fear that the other person will take the idea and claim it as their own.

It is important to understand that a nondisclosure agreement is only as good as the parties who agree to it. That is, simply having a nondisclosure agreement in place before sharing your invention will not guarantee that the person you show your invention to will abide by the terms of the nondisclosure agreement. And if someone violates the terms of your nondisclosure agreement, for example, by showing your invention to others, your only recourse may be to sue the person who violated the nondisclosure agreement.

Keep in mind, that you can only enforce a nondisclosure agreement against the person who signed the agreement. So if you sign a nondisclosure agreement with Joe, and then show your invention to Joe, but Joe turns around and discloses your invention to Mary, you can only sue Joe for violating your nondisclosure agreement – not Mary – because you did not have any agreement in place with Mary.

This is not to say that you should not use a nondisclosure agreement. But you should be careful who you show your invention to, regardless of whether you have a nondisclosure agreement.

A nondisclosure agreement (NDA), or confidentiality agreement, is exactly what it sounds like. An agreement between two or more parties not to disclose information that one or more of the other parties provides to them. Inventors commonly use nondisclosure agreements so that the inventor can show his or her invention to somebody else without fear that the other person will take the idea and claim it as their own.

You can get a nondisclosure agreement (NDA) for free or for a small fee on various websites. But be careful. Nondisclosure agreements are based on state law and are not particular to the U.S. Patent Law. Therefore, the requirements may vary from state to state.

Use a nondisclosure agreement you find on the Internet at your own peril. That is, recognize that if you ever go to enforce your nondisclosure agreement, a court may find one or more provisions or terms of the agreement to be invalid, and the court may even declare the entire agreement to be invalid and unenforceable.

It is best to use a nondisclosure agreement that your attorney has provided to you. Many patent attorneys offer nondisclosure agreements to their clients for free or for a nominal fee when a client hires the attorney do other work, such as filing a patent application for their invention.

Read “Should I use a nondisclosure agreement (NDA)?” for more warnings before using a nondisclosure agreement to disclose your invention.

The U.S. Patent Office lists all currently registered patent attorneys and patent agents throughout the United States. But what is the difference between a patent attorney and a patent agent?

The simple answer is that both patent attorneys and patent agents can practice before the U.S. Patent Office. This means that both patent attorneys and patent agents can prepare and file patent applications and  responses with the U.S. Patent Office (commonly called “patent prosecution”).

Patent agents cannot handle any legal matters or offer legal advice. While this may not seem like a big deal at first (who needs legal advice – I just need a patent application), it might be a bigger deal than you think.

Let’s start with a basic situation many inventors find themselves in. For example, you may decide to form a business for your invention. Or you may decide to sell your invention to a company. Patent agents are not allowed to prepare assignment documents if doing so is considered the providing of legal services. Most (if not all) of the time, this would be considered providing legal services. Therefore, a patent agent would not be able to help you transfer ownership of your patent. Instead, you would need to  hire an attorney to help you with the assignment of ownership rights in your invention.

What if you want to license your invention? A patent attorney can help you with a licensing agreement.

What if you want to trademark a name or logo for your invention? A patent attorney can help you file a trademark application.

What if your invention can be protected by a copyright in addition to a patent? A patent attorney can help you file a copyright application.

These are just some examples of how a patent attorney might be able to help you when a patent agent would have to send you elsewhere for assistance.

You might be asking “Are patent agents less expensive than patent attorneys?” While some patent agents offer lower fees than some patent attorneys, this cannot be said of all patent agents and all patent attorneys. Look around and you might find some patent attorneys who charge less than patent agents. But remember, it isn’t always about the cost.

Finding an attorney is easier than hiring a patent attorney. By that, I mean there are numerous directories online, including the U.S. Patent Office listing of all currently registered patent attorneys and patent agents throughout the United States. But just like the phone book or yellow pages, these directories tell you little about the patent attorney, his or her experience, and what they charge.

Obviously, hiring a patent attorney is not like buying milk at your local grocer. You could probably care less about the background of people working at the grocery store, as long as the shelves are stocked, there is someone who can help you find something if you can’t find it yourself, and there is someone ready to take your payment at the checkout. Now days you typically don’t even need a person at the checkout if there is an automated checkout available.

Hiring a patent attorney is more like trying to find a doctor. Perhaps not quite the same. A patent attorney isn’t going to be poking and prodding you while you sit on the examination table wearing that ridiculous cover-up. But the patent attorney you hire to help protect your invention will be (or should be) working closely with you to learn about your invention, and to understand your needs and goals for your invention.

For example, the patent attorney needs to understand who you are. Are you an entrepreneur who wants to make, market, and sell your invention? Or are you a serial inventor who just wants to come up with new ideas and then sell those to established companies to make, market, and sell, while you move onto your next big idea?

Helping an entrepreneur is completely different than helping a serial inventor. And if the patent attorney doesn’t understand this, you likely will have difficulty getting along with the patent attorney you hire.

In the article “Questions to ask before hiring a patent attorney” we gave you an idea of some questions you might want to ask. Here are five more questions you should ask patent attorneys you are considering hiring in order to find out if he or she will be a good fit for you.

1. Has the patent attorney worked with individuals, entrepreneurs, and small businesses? If the patent attorney works primarily with large corporate clients, he or she may have difficulty relating to your particular situation, both in terms of your budget, and your level of knowledge about the patenting process

2. What is the patent attorney’s role after the patent application is filed with the U.S. Patent Office? A patent attorney who simply enters your case in their docket and sends you reminders when things come due, isn’t going to help you identify other areas you might need help with until its too late.

3. Will the patent attorney explain all of your options in a clear and understandable manner? Or will the patent attorney simply tell you what he or she would do? The patenting process can be complicated and you typically have more than one option at each step. It is important that the patent attorney you work with is willing to explain your options so you can make an informed decision.

4. Is the patent attorney always available to answer your questions, even after the patent application is filed? Just because your patent application has been filed, doesn’t mean that you won’t still have questions. Will the patent attorney charge you to answer questions after the patent application has been filed?

5. Does the patent attorney simply prepare and file your patent application, or strategize with you to fully protect your intellectual property? Preparing and filing a patent application may be an important first step to protecting your invention. But your invention, or later developments related to your invention, may need to be protected using copyrights, trademarks, and various agreements. This is also why it is important to work with a patent attorney.

You may also be interested in . . .

“Hiring a patent attorney”

“How not to hire an attorney”

“The numbers game – hiring a patent attorney“

Do your homework before you hire an attorney. Failing to do your homework can be frustrating . . . not to mention costly.

If you don’t like the attorney you’re working with, this will be a bad experience.

If you don’t think through all the issues associated with your invention, brand, or copyright, then you may end up losing important legal rights.

And if you don’t know what’s out there already, you may pay thousands of dollars protecting your invention, brand, or business, that you later have to abandon because somebody else already had your idea – you just didn’t know it.

So who do you go to for help?

Sure, you can do it yourself . . . just like you can self-medicate when you feel ill. Hopefully it’s nothing serious!

Alright, no more kidding. You probably need to hire an experienced patent attorney.

How it works. The patent attorney you want to hire should ask you for a non-proprietary description of your matter, along with all relevant parties. The patent attorney then checks to make sure there are no conflicts with existing or past clients or their technologies. Then you will be asked to sign a Fee Agreement to retain the services of the patent attorney. The Fee Agreement includes all the important terms and conditions, along with pricing for hiring the patent attorney.

Many patent attorneys request payment of a retainer fee upon hiring the patent attorney. The retainer should be held in a trust account on your behalf until the work is completed.

After hiring the patent attorney, you will be asked to provide a full description of your matter. Turn-around times vary. Trenner Law Firm can typically prepare and file your patent, trademark, or copyright application with the U.S. Patent and Trademark Office or Copyright Office within 2-6 weeks after establishing you as a client.

What is a good measure of a patent attorney?

Before you hire a patent attorney, you should ask what their background is. Not only their educational background, but the types of patent applications that they have written. If your invention is for a toy, has the patent attorney written patent applications for toys before? If your invention is for a mobile “app”, has the patent attorney written patent applications for software? If your invention is for an environmentally friendly product, has the patent attorney written these types of patent applications before? In other words, does the patent attorney understand your invention and how it fits into the world around it? Will the patent attorney be able to write a patent application for your invention that is broad enough to include “spin-offs” and that is sufficiently detailed to enable every feature of your invention?

You should also ask if the patent attorney will advise you up-front whether they see any issues with your invention being allowed to issue as a patent. While most patent attorneys cannot give a definitive answer, a good patent attorney should advise you if they foresee any difficulty in prosecuting your patent in view of the prior art (i.e., what is already out there).

On that same token, you should also ask if the patent attorney will advise you after receiving an Office Action rejecting the claims in your patent application, whether they believe you have a fairly decent chance of successfully arguing the rejections, or if you will just be wasting your money.

You should also ask whether the patent attorney calls the Patent Office Examiner after they receive an Office Action rejecting the claims, or if they just file written responses. Patent attorneys who view patent prosecution as more of a collaboration with the Examiner (rather than as a confrontation with the Examiner) are generally more successful in finding a resolution to the Examiner’s rejections. This doesn’t mean that a phone call is always necessary. But in some cases it does help.

These are just a few questions you might want to ask before hiring a patent attorney. But the answers to these types of questions will generally give you a much better idea of the patent attorney’s experience.

I am often asked “How many patent applications have you written?”

It’s a fair question. So that you don’t think I am avoiding the question, I will tell you that I have worked on hundreds of patent applications in the more than a decade I’ve been working as a patent attorney.

Unfortunately, the answer has little (if anything at all) to do with the success of your invention – both in getting a patent to issue and marketing your invention to the world.

You might ask, “But don’t you want to work with a patent attorney that has a lot of experience?” Of course you do. But numbers of patent applications written, number of patent applications prosecuted, even number of patents issued, means very little to your specific invention.

For example, a patent attorney may have written hundreds of patent applications, but only a few of those may have issued. Does that mean the patent attorney isn’t very good? Maybe. Maybe not. Perhaps the inventions were not very good. Or for example, a patent attorney may have written very few patent applications, but nearly all of those have issued. Does that mean the patent attorney is good? Maybe, Maybe not. Perhaps the patents that issued were so narrow in scope that competitors can easily design around the patent – thereby never infringing the patent, and thus not needing to license the patent from the inventor.

So if numbers don’t mean anything, what is a good measure of a patent attorney? Read more about how to hire a patent attorney in my article “Questions you need to ask before hiring a patent attorney.”

Here are some popular myths about hiring a patent attorney . . . I like to call it “How Not To Hire An Attorney.”

MYTH 1: High-priced attorneys guarantee results. If you pay a lot, the attorney must be good, right? Attorney fees vary based on a number of factors, usually having nothing to do with results. For example, it costs more to live on the East Coast or the West Coast . . . so they’re going to charge you more. Busy attorneys charge more – why? – they don’t need more work, but they’ll do it if you’re willing to pay for it . . . and on and on. But none of these reasons guarantee results. There simply is no guarantee that the U.S. Patent Office will issue any patent, much less issue a patent just because you spent a lot of money on your patent attorney.

MYTH 2: Firm size equates with quality. Larger firms have a reputation to uphold . . . they’re going to produce better quality work product, right? Just like any business, the size of the business does not necessarily translate to higher-quality work. Regardless of law firm size, reputable attorneys strive to provide high-quality work product.

MYTH 3: They must be good – just look at their office space! Office space is a function of how much the firm is willing to pay for rent. If we’ve learned anything from this recent economic downturn, we should recognize that just because someone drives a fancy car or lives in a big house . . . or has a fancy office . . . isn’t necessarily an indication of any underlying factors such as quality.