Inventing: Finding and Using Your Patent Attorney Effectively
There are two theories on obtaining patents on your invention.
The first, which I will discuss here, operates on the theory that you
chronicle your work and protect it vigilantly through the proper
channels.
An equally-popular theory is that having a patent means only that you
will spend a fortune defending that patent. To that end, this group
supports doing the bare minimum in terms of official patent work, but
getting out of the gate with the best marketing program. The idea on this is
that people de-engineer products, add a twist or change just enough,
then make their own product that is similar.
For the purposes of this article, we’ll focus on the traditional
thoughts on obtaining a patent. Even for the traditionalist, if you leaf
through any stack of inventing books and you’re bound to find a few
dedicated to the inventor who wishes to use the do-it-yourself method of
patenting an invention. While a professional inventor may know his way
around the patenting process, it would be wise for the amateur to remember
the adage, “The man who represents himself has a fool for a client.”
Once you know the ropes a bit, you can file for the copyright and
occasional trademark on your own. Generally speaking, however, you are
doing yourself a disservice if you don’t get advice from a professional.
Most patent attorneys find the do-it-yourself method as penny-pinching of
the worst kind.
You can save time and money by being an informed shopper. Shop for a
patent attorney much the same way as you would shop for a doctor.
First get recommendations from trusted friends and associates. If you
have a general attorney, he or she may be able to recommend someone to
you.
Once you have a few names, compare. Just because a patent attorney
comes highly recommended by a fellow inventor does not mean that attorney
is the right one for you. Check your needs against the qualifications of
the attorney to see if you are a match.
Make an initial appointment to ask questions and get a general feel for
the attorney to see if you like his or her style and manner of doing
business. Ask the attorney for references from clients, and then check
those recommendations. You should also ask the attorney if any complaints
have been filed by clients, and check those out.
Rapport is a prime consideration. No matter how good an attorney is, if
you can’t communicate with that person and if he or she doesn’t seem to
understand your needs, you’d do well to look elsewhere.
Finding a Perfect Match
Aside from your initial gut feelings about an attorney, there are a few
concrete matters to consider: specialization, fees and location, for
example.
Patent attorneys, like everyone else, have specialties. Since they are
required to have some sort of applied science or technological
background in addition to a law degree, it would be wise to see if your
invention matches the attorney’s background. At the patent office, patents are
divided into three areas: electrical, mechanical and chemical. While
patent attorneys generally follow those specialties, some adopt
subspecialties. There are chemical patent attorneys who do nothing but biology,
for example. There are also electrical patent attorney who do nothing
but computer chips.
If the attorney is not an expert in your particular field, but you
share a good rapport, you may still want to stick with him or her. After
all, if the attorney is part of a firm made up of patent attorneys from
several specialties, your attorney will be able to get the specialized
advice he or she needs to represent you.
Convenience plays a role in choosing a patent attorney, just as it
would in any other purchase, but it shouldn’t be the overriding concern.
Nowadays, many law firms set up lliaisons and correspondents in other
parts of the country. And with express mail and fax machines, immediate
attention is possible, regardless of location.
Plan of Attack
Before you set up that first meeting, clarify your goals. Don’t call a
patent attorney the morning you wake up with a good idea. That’s just
wasting the attorney’s time and your money. Analyze your product to
determine who is going to buy it and why. Where will you sell it? The more
questions you ask and more goals you determine, the more focused you
will be in preparing your final patent application.
When you have chosen your attorney and you are ready to discuss your
invention at length, take advantage of the attorney’s thorough knowledge
of the patent process. So much of this beginning process is about
education. Think of the basics: What is a patent? What are some of the
expenses? What are some of the pitfalls and frustrations?
One patent attorney asks that on the first working meeting the inventor
bring a rough sketch, as well as a written description no more than two
pages long, though the final written application may run up to 100
pages.
Again, you want to maximize your time and money. Few inventions take
more than two pages to put down roughly. More than that gets cumbersome.
Moreover, it shows that perhaps you haven’t narrowed your thoughts down
enough. It’s a matter of goal setting and honing your ideas to the
necessary pinpoint. From there, the patent attorney should conduct a patent search to see
if any aspect of your invention has been previous patented.
By now the attorney should be able to give you a strong opinion on your
invention. But wait: That opinion is qualified. The attorney should
only offer an opinion based on the PATENTABILITY of the invention. Do not
expect an attorney to give you a person opinion as to the marketability
of your project. In fact, it is not appropriate for a patent attorney
to offer these opinions. After all, this has nothing to do with getting
a patent, and that’s your patent attorney’s job.
Even if you cannot obtain a broad patent on your invention, you are
generally able to get a patent for a certain aspect of the invention-the
way a hook is configured, for example, or the way a hinge is used.
Testing the Waters
Now it may be time to enter the final phase: the patent application
process. Your patent attorney does all of the filing and paperwork it
takes to get your invention patented. The U.S. Patent Office requires
inventors to apply for a patent within one year of publication, appearances
or offer fro sale of their product, or they lose all rights to it. Use
this time period to test the waters and see if the invention has a
market before applying for a patent. It gives you a little more
information, and information is the best thing you can have.
But if you are concerned with protecting our work overseas, you should
apply for patent protection immediately-before non-confidential
disclosure or offer for sale-since the one-year rule is not recognized outside
of the United States. Note that filing a patent application with the
U.S. Patent Office protects your product only in the United States. For
international protection, you need to file a patent application with
each country in question.
The final application filing has special meaning for the inventor. In a
big way you’re are saying: “No trespassing allowed!”