Intellectual Property – Part IV – Finding Help

by Thomas Frasher on July 21, 2009

Intellectual Property – Part IV – Finding Help

As I’ve mentioned in every article on this subject (Article I, Article II, & Article III) you need help. And you need the best help you can get.  This article is about finding and engaging the best help you can get.

From Help; verb: to give or provide what is necessary to accomplish a task or satisfy a need; contribute strength or means to; render assistance to; cooperate effectively with; aid; assist

There are other distinctions to be sure, and for the purposes of this article I’ll be using the one above.

Here are some guidelines for gathering the help you need when creating and protecting intellectual property:

1. Be clear about you goal. If you intend to prosecute a patent, keep that in mind as you go forward.

2. Listen to your counsel and ask as many questions as you need to to make sure that you understand. Something to remember is that the help you find will by necessity be schooled in a discourse that is dissimilar to yours, anything you don’t understand will be filled in by your background and can lead to faulty assumptions.  If you have any doubt, ask.

3. Prepare as much ahead of time as possible and with as much detail as possible, before going out to find your help.

In the intellectual property realm there are basically 3 ways to prosecute the patent:

1. Engage a patent attorney:

a. tell them your invention,

b. they write it up,

c. you review it,

d. repeat b & c as many times as needed (better to get it right once) ,

e. you give them cash and they file the patent and 2 or 3 years later the USPTO issues or declines the patent.

2. Engage a patent service:

Usually patent clerks and non-licensed people help you navigate the paperwork and get the patent prepared, follow the same process as above with the exception that you file the patent yourself.

Upside: less expensive than option 1 above, and they can review your invention thoroughly; They are also not governed by the same rules and ethics as a patent attorney.

Downside: They can’t help you in a dispute; you’ll still need the patent attorney for that.

3. Do it yourself – AKA – the hard way.

a. You need to determine what forms to fill-in needed to file the patent,

b. you write up the design,

c. you review the invention write up,

d. you write a check to the USPTO and file you patent. 2-4 years later the USPTO will either grant or decline your application.

4. A combination of any of the above:

Depending on your relationship with the attorney, this option can save you thousands of dollars in attorney’s fees. That said there is a point to be made here: you will save the out of pocket cash that you don’t send to the attorney by spending your time doing the things the attorney would have done, either your time or the attorney’s time will get spent.

For all the patents I’ve filed in the past, it has been option 4 with the inventors doing some work and the patent attorney’s doing the rest. In my opinion it pays very large dividends to invest in a relationship with your patent attorney, they can and will help you.

Selecting an Attorney:

  1. I can’t stress this enough, find someone that has been doing this for a while.  The rules have recently changed and you need someone that has context on how the rules changed and how it will affect you.
  2. Find someone that you can work well with, you don’t have to be best friends, but you have to be able to trust them.
  3. Make sure they have a successful practice (partners, clerks, other staff, etc)
  4. Make sure the office is organized (it may not be neat and tidy, but it does need to be organized).
  5. If they are dismissive of your concerns, walk away. You are new to this, so when you don’t understand something have them explain it, the best attorney’s will take the time to make sure you understand what they are doing for you, and why.
  6. Make sure they are cognizant of the field you are inventing within. They or someone on their staff will need relevant exposure to the field, or you will spend a lot of time and therefore cash, explaining your invention to them (don’t take an oil drilling patent to a computer software patent attorney).
  7. You must be willing to walk away from the meeting without signing anything if you don’t feel right. You should feel no high pressure from the attorney.

With all these things taken into account, get to know your patent counsel; they are usually great folks, who want to help you. I have had patent attorneys point out derivative inventions that I had missed; if I’d had a poor relationship with them they may not have done that. What started as one patent became three.  On the other hand, sometime they will recommend combining patents (if you submit several related patents at once, I’ve had four patents become one), this will save you cash during your filing and probably give you better protections.

Another point to remember is that patents are not mysterious, magical things. They are practical, and denote a professional demeanor for your business. They can enhance the desirability for acquisition if that is your exit strategy, they can protect your marketplace and allow others to create markets with you.

Get started! … find a patent attorney that you can work well with, brainstorm with people you like to work with, invent something new, and bring it to the marketplace.

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