Don’t Lose Patent Rights
It is common for some individuals or small companies to attempt to navigate the patent system on their own in an effort to save money. With the prices charged by some competitors for patent work, their actions are understandable. However, this is not recommended. There are multiple deadlines and other various dates which can creep up unexpectedly resulting in missed opportunities and lost protection if you are not fully aware of the processes and law.
Currently, under U.S. patent law, an inventor can publicly disclose his invention without losing patent rights, provided that he files a patent application within one year of that disclosure. How does that affect your ability to file in foreign countries? Each country has some different patent rules. The America Invents Act that changed our patent system from a first-to-invent system to a first-to-file system is a step toward harmonization of our law with the rest of the world. However, differences still exist and the danger remains when traversing the process alone.
- Can you advertise the invention for sale?
- Can you share it to potential investors?
- When do you need to file the application in view of your disclosure?
Posting information on a website is a public disclosure. Many foreign countries prohibit the patenting of an invention after disclosure has been made anywhere in the world. Disclosure to an investor may be OK provided that the investors are required to sign a non-disclosure agreement. Even with proper agreements in place, there is risk in disclosing to investors prior to a patent filing. Additionally, many investors won’t sign these agreements. In this case, the inventors should disclose as little as possible regarding the invention. If too much is disclosed, this could have a significant negative effect on patent rights. Even if the complete invention is not disclosed, the amount of the disclosure may cause the invention to be adjudged obvious in light of other prior art.
The bottom line is that patent deadlines that can result in loss of patent rights are another reason that inventors should work with a patent attorney who can guide them through the various deadlines and provide advice regarding US and foreign patent filings. Saving a bit of money up front often results in the loss of patent rights in the end.
How to Choose the Right Patent Attorney
- Are you comfortable talking with your attorney? An attorney is a counselor with regards to legal rights and obligations. They can be very important and useful. However, if you find it difficult to talk to your attorney or just don’t feel that connection then maybe look elsewhere. Additionally, if your attorney lacks the ability to communicate effectively or timely (return calls/emails) then look elsewhere. Trust is built up by effective and useful communication between two parties. If you can’t trust your attorney, then why are they your attorney?
- Focus on the competency of the attorney more than firm size. The firm size is not as important as the skill of the attorney working your file. Don’t be fooled by the stigma that attorneys at large firms are better than attorneys at small firms. The correlation between attorney competency and firm size is very small, if non-existent. The correlation between the size of your fee and firm size is more significant than you think. You rightfully should pay the attorney his/her reasonable value…you shouldn’t have to pay extra just because the firm is large.
- Don’t be fooled by the sales pitch. Become knowledgeable about the legal process as much as you can. Intellectual property law can be complex. Understanding when something sounds fishy or too good to be true can be difficult. Learn all you can and be prepared with some information when you see your patent attorney. Most are honest and give good advice…some just tell you what you want to hear.
- Ask about fees. Fees are done in three ways: Flat Fees, Hourly Fees, Contingency Fees. There is a reason and time for each type. Flat fees work great for transactional work – work that is maybe considered repetitive or easy to gauge in time. Hourly fees are used when the amount of work required is not so easy to predict. Contingency fees are used typically with litigation when the value of the work is based on some sort of settlement or award of money. In particular, ask the attorney how they compute their time and fees, and what sort of things they bill you for (i.e. short phone calls or emails).
- Location. Some areas of law require frequent consultations and interactions with an attorney. Think of family law for example. Intellectual property law for the most part does not require as much one-on-one time with your attorney. Keep in mind the attorney should be accessible for you, but the face-to-face meetings are not as necessary in this type of law. Much can be accomplished electronically or via email. Location may be useful but not an absolute necessity. The closest patent attorney is not always the best fit for you and your legal issue. Be open to the idea of looking a little farther out if it means finding a better intellectual property attorney to suit your personality and needs.